Patent Law

First to Flunk

By Gary Odom and Jordan Kuhn

A first-to-file patent priority regime is rationally done using absolute novelty, that is, no grace period. That is not what Sen. Leahy has for Senate Bill 515, the currently proposed abomination posing as patent reform. Hal Wegner reports on the convolutions involved in Leahy's fantasy version of first-to-file.

Mr. Wegner:

Faux First-to-File: The first-to-file system envisioned by Leahy S.515 has a gaping loophole for the inventor who first discloses his invention to be free from prior art even though a second party publishes before the filing date if there is some "indirect[ ]" link from the second party to the first disclosure.

Furthermore, if the second party even with such an "indirect[ ]" link publishes a slightly different invention in the interval, this is prior art for purposes of determining obviousness of the first inventor's later filed application: This effectively nullifies the "indirect[ ]" link provision. Even more troubling is the obviousness effect of a prior-filed but later-published application as of the priority date, which is completely antithetical to the international norm as practiced in Europe, Japan and elsewhere.

Interference Proceedings Cloaked as "Derivation Proceedings": The good news is that patent interferences are eliminated. The bad news is that interferences have been renamed as derivation proceedings. To be sure, priority may not be established in a derivation proceeding by proving an earlier independent date of invention. But, priority may still be contested based upon priority keyed to one or more parent applications as part of the uniquely American continuing application practice. There is nothing in the current legislation to curb continuing application abuse.

If there are, say, five parent applications with varying disclosures, this presents the same opportunity to prove priority of invention as today, except that the priority must be keyed to a parent application. A derivation proceeding may be declared between different inventions that are to obvious modifications.

Full post as published by The Patent Prospector on May 18, 2009 (boomark / email).