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No Legal Advice

The information on Groklaw is not intended to constitute legal advice. While Mark is a lawyer and he has asked other lawyers and law students to contribute articles, all of these articles are offered to help educate, not to provide specific legal advice. They are not your lawyers.

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Hey. This First-to-File Thing Is Scary
Monday, August 15 2005 @ 04:57 AM EDT

Let's connect some dots. I'm sure you've heard about Apple being unable to get a patent on an element of its iPods because Microsoft beat them to the Patent Office and filed a patent on similar technology five months before Apple filed, but after iPods were already on the market. Microsoft is sticking the knife in and giving it a twist, by hinting that Apple can always just license their patent:
David Kaefer, Microsoft's director of intellectual property licensing and business development, said: "In general, our policy is to allow others to license our patents so they can use our innovative methods in their products."

"Our innovative methods?" That's got to hurt. Microsoft wouldn't mind $10 per iPod sold. You know that feels wrong. I know it. Microsoft must know it deep down, too, even if visions of sugarplums currently are lighting up their neurons in endorphin-flooded daydreams of a money stream to the end of time without having to do a lick of work for it. The very idea of paying Microsoft for each iPod sold must make Apple see red, and they put out this terse statement:

"Apple invented and publicly released the iPod interface before the Microsoft patent application cited by the (patent) examiner was filed."

I'm reading this sad tale, and all of a sudden, it hits me. What would happen to Apple in identical circumstances if Congress had already passed the Patent Reform Act of 2005? That proposed legislation, now working its way through Congress, proposes to change the US system to a first-to-file patent system, instead of first-to-invent. Zounds, I said to myself. Here's Exhibit A of how such a system would work, a real-life example of just how such a system could play out and what injustices it could enable. I'm not so sure this is such a great idea, fellas.

The article in The Independent explains the order of events:

Although Apple introduced the iPod in November 2001, it did not file a provisional patent application until July 2002, and a full application was filed only in October that year.

In the meantime, Microsoft submitted an application in May 2002 to patent some key elements of music players, including song menu software.

If we were already under a first-to-file system, Apple would be up a creek without a paddle. As it is, Appleinsider suggests Apple has a few options left:

It's unclear how Robbin and Apple will proceed in their attempts to secure rights to the iPod's software design interface. The United States Patent and Trademark Office allows a three-month window period for reply to the final rejection, in which Robbin and Apple can appeal the decision, request reconsideration, or file a continuation of their original application.

Now, I don't know all the ins and outs of this particular case, but let's assume that the reports are 100% accurate, although that would be a media first, and things happened just that way, and let's think about the situation under the first-to-file rule. Microsoft wins hands down, then, despite Apple being the earlier inventor. Are you sure you like that result? Not you, Microsoft. We know you are chortling. The rest of you.

The Patent Office may look deeper and realize what they've done, and hopefully justice will be done there, or in court later, but the only reason that can happen is because so far the US is a country with a law whereby a patent can be invalidated by prior art or proof of prior invention. While nothing is right about a system where Apple will have to spend maybe millions to straighten this out, at least they have the hope of being able to do so under the current system.

My question is, how could something like this happen under the current system? The Patent Office examiner never saw an iPod? And more pertinently, Microsoft didn't know about iPods, when it filed its patent? Puh-lease. And yet, do you feel 100% sure that Apple will win? The US patent system is an unholy mess, and the law in practice has become so bizarre and arbitrary and out of sync with the way the system was set up to work that you can't even predictably rely on a just outcome. Laws are supposed to at least be *trying* to bring about a just result.

Here's my next question... did Microsoft list the iPod, like they are supposed to, when they filed for their patent? You're not allowed to hide prior art. When you are applying for a patent, you have a duty of candor, as they put it, to list all prior art you know about. iPods. We're talking iPods. Is there anyone left on the planet who hasn't heard of iPods?

It's an affirmative defense in any patent infringement lawsuit, if the patent was gained by knowingly concealing prior art. It's called inequitable conduct, and it can result in a patent that isn't enforceable. What? Microsoft? Inequitable conduct?

And to those who claim that you can measure the success of the Patent Office by the surge in numbers of patents granted, may I say.... beep. Wrong. If you think I'm kidding that some say that, there is a press release on the home page of the USPTO right now that makes that assertion:

The U.S. continues to be the driver of ingenuity around the world, evidenced by the surge in patent, trademark and copyright applications from inventors and the resulting patents issued by USPTO. In 2004, the USPTO received more than 376,000 applications for patents, and patent applications have more than doubled since 1992. In fact, the USPTO issued more patents in 2004 than it did during its first 40 years.

So we have observed. You are proud of that? Did the US suddenly become a nation of innovative geniuses? It must be so, because patents are supposed to be granted only for innovations not obvious to those skilled in the art. So, 376,000 of such amazing works of genius in one year alone? See, guys, that's the problem. You're measuring by weight, not by quality, or, judging by the Apple mess, even by accuracy, even by the standards in the law. And you are causing pain and a true waste of resources as companies are forced to clean up the patent mess you are making by your profligate patent issuance policy. That's not good for the economy. You are also putting a wet blanket on innovation by compelling everyone to divert and spend huge sums to protect themselves from the conscienceless, which is a detour from innovation and an economic drag.

I gather the USPTO is beginning to get a glimmer that small and medium sized players are being left out of the patent orgy, because in the same press release, they call on all such to join in and patent everything they can, to protect America's economy, no less:

U. S. Under Secretary of Commerce for Intellectual Property Jon Dudas on Friday asked independent inventors to protect American ingenuity by safeguarding their inventions from intellectual property theft. Small businesses -- such as independent inventors -- are often at particular risk for IP theft, a growing problem around the world. Dudas urged attendees at the 10th annual Independent Inventor’s Conference to make patent, trademark and copyright protection a core part of their business strategy. This year's conference was held as part of the USPTO's observance of National Inventors Month.

“The strength of our nation’s economy rests on the ingenuity of American inventors,” Dudas said. “In the 21st century, securing protection for your inventions is almost as important as the invention itself.”

Right. Who's paying for all this? [Please note: if you are a FOSS developer, Red Hat will pay for you to file for patents that can be freely used by Open Source developers.] Microsoft says they spend $100 million a *year* to defend themselves against 35-40 patent infringement lawsuits. Every year. Have the rest of us got hundreds of millions for that? The more patents they issue, the more lawsuits there will be, you know. It's a package deal. The USPTO seems to think it's just a lack of information, not a lack of cash holding inventors back:
The USPTO is also currently conducting a nationwide awareness campaign that is providing information to small businesses about when to file for intellectual property protection, what type of protection to file for, where to file and how to go about it. The effort features outreach targeting industry sectors especially at risk of intellectual property theft, a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at

Maybe they'll find out at the seminars what the real problems are for smaller players. It starts with an "M". If you set up a system no one but rich people can take advantage of, it isn't just the small players who suffer. It's everyone, the public at large, and ultimately the economy they care about. These guys really, seriously, need to think about where innovation really comes from. It isn't from Microsoft. They generally acquire theirs, as far as I can make out, as competitive roadkill.

I hope all those who piously told us how wonderful it would be to alter patent law so that the first to file wins the gold ring (they phrase it that it would be desirable to harmonize with the 'rest of the world', as per the BSA, who supports the change, as does Microsoft) will now think again. Remember the iPod! It would mean that what has just happened to Apple will happen to you and you and you. Do you really believe that Microsoft and big entities with deep pockets like them can't beat you little guys to the Patent Office over and over? If I wanted to patent something, I'd have to sell all my worldly goods first to afford to pay for it. Most FOSS developers are in the same boat. That doesn't mean we have no innovative ideas that could benefit the world. Do you really believe only rich folks can innovate? Only megacorporations? Do we really want a world where no one may innovate unless they are rich? Think it through, everyone. Look at the track record. It's a concept that doesn't work for anyone but the Microsofts of this world, and as nice as Microsoft is, I think they have more than their fair share of money already.

Just so you are clear on what I'm talking about, here's the relevant part of Section 3 of the Patent Reform Act of 2005, as introduced in the House, and cunningly if not accurately titled, "Section 3: Right of the First Inventor to File":

(h) The `effective filing date' of a claimed invention is--
`(1) the filing date of the patent or the application for patent containing the claim to the invention; or

`(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112 of this title.

Here's a breakdown of what the legalese means. One snip:

This Bill changes the U.S. patent system from the “first to invent” type to the “first to file” type, and brings it in conformity with the rest of the world.

Under the existing U.S. patent law, the right to patent the invention belongs to the person who was the first to invent, not the one who was first to file for the patent. The rationale is that such provision protects the small individual inventor who cannot rush to the patent office to get a patent. A common criticism of the U.S. system is that in practice this provision gives rise to expensive litigation over who was first to invent, and therefore, favors corporations with big money. Besides it is out of tune with the rest of the world.

The supporters of the existing “first to invent” system argue that, the rush to file will negatively impact the quality of invention disclosures in the patent, and increase patent malpractice suits, since any delay on the part of the patent attorney could result in not getting the patent at all.

Here are some arguments from someone for the change:

Why there's a move to change: The U.S.'s first to invent rule is enormously complex, generates substantial litigation and complexity, and is out of step with the rest of the world. Determining who is the first to invent a particular matter is extraordinarily difficult, and the applicable rules are Byzantine even by the standards of patent law. A first-to-file rule -- based on what application gets to the Patent Office first -- is simpler, cleaner, and much more efficient. Moreover, a first-to-file rule will be accompanied by a change in the definition of "prior art," in order to protect an inventor who is beaten to the Patent Office. [UPDATE: On reflection, that last sentence is a misleading oversimplification. A change to the "first to file" rule will indeed require a change in the definition of "prior art," but the safe harbor that I describe also requires a change in the concept of "intervening rights" (whether or not expressed in such term).]

• Who are the winners? The system, the Courts, the Patent Office -- a first-to-file is much cheaper, easier, and simpler. The fast (read: the folks who have the money to patent early and often). Multinationals: No more bizarre US-only rules.

• Who are the losers? The little guy, who doesn't have the resources to file a lot of patent applications.

Well, that tells it like it is. He adds: "Oh, and the first-to-file rule might be unConstitutional." You think?

If this topic interests you, here's the best collection of resources I can find. Now, I'm not saying that there aren't some good ideas in the bill. There seem to be. In fact, Groklaw takes no position on specific legislation anyway. I just try my best to explain things. And so I've connected some dots I see between the very sad Apple story and the proposed bill, so you will understand clearly what is involved and how a first-to-file system works.

If you want innovation, the laws, whatever you write, need to work for individuals who may not have a dime but have a creative idea and need a climate where their ideas are allowed to flourish and breathe free. That's where innovation comes from, from people, from individuals.

Here's a good question to ask ourselves: could something like Linux happen again if you make the law say XYZ? Or, another question: if the law says XYZ, will it kill off Free Software/Open Source software? Those are good questions, precisely because GNU/Linux came from nowhere. A bunch of volunteers with no funding, no corporate or VC support, just ideas. And talent. And skill. And a willingness to work hard and to try something new. Microsoft didn't do it. They have set up a Linux Lab to try to figure it out, but they can't do it. No corporation did it or ever would. They still don't know how to do it themselves. Or even how to compete with it. But hasn't the world benefitted, even economically? Let's not kill off such golden geese by imagining that only megacorporations can innovate. Writing a law that benefits only them, while freezing out the little guy innovator, is saying that the world has no further need of such innovation. And you and I both know, that's not true.

Finally, I think you'll enjoy reading the excerpts from a UK patent decision that Axel Horn has put on his web site. It's interesting on another subject, the question of how to define the word technical in the EU patent context, but the part that is relevant to this discussion is what Peter Prescott QC, a former patent Examiner, now sitting as a Deputy Judge of the Royal Courts of Justice in London, had to say when rejecting two UK patent applications, GB0226984.3 and GB0419317.3, on the subject of patent proliferation:

I have pointed out that patents that are wrongly granted can be very expensive to challenge, and perhaps beyond the means or inclination of small and medium enterprises. An accumulation of patents of that sort (sometimes known as a "patent thicket") may be a serious barrier to entry.

The only safeguard against that wrong – and it is a wrong – is the vigilance of the Patent Office.

Here's a heads up to the Patent Office, so they can be vigilant. There's a guy who is trying to patent his would-be movie plots. Sigh. Could you please Just Say No?


Hey. This First-to-File Thing Is Scary | 282 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Hey. This First-to-File Thing Is Scary
Authored by: Kevin Mack on Monday, August 15 2005 @ 05:09 AM EDT
Sigh - this system is getting patently absurd.

[ Reply to This | # ]

Off-topic here
Authored by: Ronny on Monday, August 15 2005 @ 05:27 AM EDT
If including a link, please make links clickable thusly:

<a href="">Like this</a>.

and ensure that you have posted in HTML mode.

[ Reply to This | # ]

First-to-File misunderstanding
Authored by: Winter on Monday, August 15 2005 @ 05:39 AM EDT
PJ, please look at how First-to-File works in practise. It is the most widely
used system in the world. As far as I know it does NOT have the detrimental
effects as you paint them. The European system, for instance, has none of the
problems you warn of in excess of their occurrence in the USA.

If we look at Europe, which has a first to file patent system, the iPod patent
mess would untangle like this:

1 There is no grace period. Apple would have filed for a patent on the iPod
BEFORE anything was made public AT ALL. Else, they would not get any patents.

2 No one can file a patent on anything already known. MS would NEVER get a
patent on iPod related inventions filed after the iPod was on the market (or in
a magazine).

A first to file patent policy cannot work without getting rid of the grace
period. The patent filing MUST be the first publication or presentation in ANY
form about the invention.

Think of First-to-File patents as an exchange of a Trade Secret for patent
protection. It is not so much the substance of prior art that will change
(although that has to change too) as well as the timing of the art.


Philosophy of Science assignment: "A theory that explains all the facts is bound
to be wrong because some of the facts will be wrong" (F.Crick)

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: Tpenta on Monday, August 15 2005 @ 05:41 AM EDT
I would have thought that the physical IPOD release before the file date would
be pretty incontrivertible (sp?) prior art.


Alan Hargreaves -

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: eskild on Monday, August 15 2005 @ 05:56 AM EDT
It really seems that the USPTO just don't check for any kind of prior art,
except perhaps searching for valid US patents.

And by the way if a specification is published it should jus not be patentable,
except perhaps by the entity publishing it.'

In patent reform parlance: publishing date should be treated as filing date, and
then everybody (or perhaps just everybody else?) should be barred from patenting
the spec.

And by publishing your spec you make a strong incentive to everybody to support
your idea - an incentive you would loose completely if you create fear, etc.
that you require everybody to pay some royalty at a later stage.


[ Reply to This | # ]

First-to-File Not so scary
Authored by: Ronny on Monday, August 15 2005 @ 05:57 AM EDT
In a first-to-file system, Apple's release of the iPod would comprise
"prior art" and Microsoft's application would be rejected. (IANAL, but
this is the case by every standard I have ever seen covering first-to-file.)

I don't know the patent laws well enough to say whether Apple's patent would be

What first-to-file prevents is having an inventor invent something, keep it
secret, then patent it after somebody else has started to use it commercially.
If you invent something, you can either publish it (establishing prior art to
deflect other peoples' patents) or patent it, or both. In either case the
invention is then in the public eye. The chances of being hoodwinked by somebody
who made the same invention the day before you did, but failed to do anything
*with* the invention, are eliminated.

The first-to-file rule encourages prompt publication and patenting of an
invention. It can count against the "little guy" because patenting
*is* a relatively expensive process, and there is a chance that somebody else
will beat you to the patent office (or even patent something that you have
revealed to them as a trade secret). However, it discourages keeping inventions
secret; this is fundamentally the reason for the patent process *existing*, to
encourage dissemination of inventions.

It also counts in favour of projects such as Linux, since it's less likely that
somebody will think of something, spot it being used in Linux some time later,
and *then* file the patent with a view to claiming damages.


[ Reply to This | # ]

Stating the obvious ...
Authored by: dmarker on Monday, August 15 2005 @ 06:02 AM EDT

In 1980s:
US industry suffered at hands of Asian efficiency and quality. US industry was
exhorted to 'flatten your structures' reform the way you run your businesses
'business process re-engineering' - take advantage of the emerging office
productivity tools and PCs to help achieve this. In the 1990s US boomed, Asia
slipped. Japan is only now recovering - largely by reforming its hierarchial
structures and flattening its organisations. Japan took a long while to learn
but now we are seeing non Japanese citizens heading up major Japanese
corportaions, something inconcievable in the heyday 1980s!.

In late 1990s-2000s:
MS was told to stop trying to hijack the InfoSuperHighway and to cease and
desist its attempts to apply its infamous 'cut off their air supply' policy to
its competitors. US industry was told to stop its corrupt accounting practices
and some substantial butt was kicked. IT industry was nudged into cooperation
over the Info Superhighway as the solution to ending the cut-throat corp wars
for control. It appears to have mostly worked (highlight has been MS & IBM
cooperating over XML & XML-Web Services - technology agnostic data
exchange). Soon we can expect another trade boom with US IT again showing the
way (esp with SOA). We can expect some extraordinary deployments of SOA based
technologies that will underpin this boom.

BUT, the next big reform needed in US industry, once enough people in authority
understand the problem, will be to reform the current disasterous US approach to
software patents. Sadly the same trouble maker that got close to being broken
up in 1990s, appears to be the leader of the pack in devious use of software
patents and licenses - they got cunning & tried exercising this control
through petty proxies.

Groklaw may well be the catalyst to bring needed attention to the festering
problem and the will to fix it before it derails the next boom as it surely

Go PJ ! - the force is without doubt with you :)


[ Reply to This | # ]

Thy myth of protecting the little guy
Authored by: morsch on Monday, August 15 2005 @ 06:09 AM EDT
When listening to people justifying the patent system I often go mad. Patenting
has rarely helped the individual inventor. With the increase of applications
and granted patents, the gap of big companies vs small companies / individual
inventors will widen. Therefore the percentage of patents hold by individuals
will decrease, so who is benefiting?

I also challenge the argument that patenting is good for business. The big
players seem to prefer pooling, big against big is just too expensive. So what
cow is going to be milked then? Who apart from some IP-exploiting firms is
really earning money directly related to patents?

Does a patent really protect? Again protection favours the big shots, as they
have the financial means to really enforce a patent. Infringing a patent is
lucrative for a big corp. They can exploit the invention for years until a
settlement takes place or they lose the battle. It is like a negative interest
rate on a long term credit.

A small inventor is mostly ignored: Dyson spent years fighting for his vacuum
cleaner invention and compared to the other players in the market he still is
small. The guy who proposed a "one-for-all" telephone number to
Siemens was first laughed at and his idea was then simply copied. The inventor
of the "Walkman" spent more than 20 years in legal battles with Sony
until his claim was recognized.

In business terms those could be described as opportunity costs, because these
guys did spend a lot of time defending their invention. What if those guys had
spent this time on what they are really good at?

We need something better than the current patent legislations. And first of all
we need a culture which is recognizing and supporting creators and inventors
rather then exploiting them.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: MathFox on Monday, August 15 2005 @ 06:19 AM EDT
David Harmon, in a comment on Bruce Schneier's blog gives as definition
Intellectual Property: The legal basis for preventing anyone poorer than you from profiting by the ideas you stole from them.
Which summarizes the whole article in a single sentence.

When people start to comment on the form of a message, it is a sign that they have problems to accept the truth of the message.

[ Reply to This | # ]

"The rest of the world"
Authored by: cc_benny on Monday, August 15 2005 @ 06:41 AM EDT
[...] they phrase it that it would be desirable to harmonize with the 'rest of the world'

As a non-American this piqued my interest so I tried to check it out with respect to German law. I didn't find a specific reference to a first-to-file rule, instead this at the patent FAQ at the Charité (a medical University in Berlin, in German), my translation:

6. Can you get a patent on an invention after its publication?

The publication of an inventive idea before the application for a patent makes an actual grant of the patent impossible, according to current law. Legally, the invention is not considered new any more at the point of application. [...] This goes for German patent law as well as for the patent law of the other countries in Europe and in most countries of the world - with some important exceptions (USA, Japan, Korea): There you have a newness grace period for publications by the inventor himself.

So this suggests to me that instead of first-to-file, first-to-publish would be the thing to do to "to harmonize with the 'rest of the world.'"

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: jseigh on Monday, August 15 2005 @ 07:12 AM EDT
My understanding of the first to file thing, doing some patent stuff way back, was that you have to be careful not to publically disclose anything before you filed, otherwise you risked your ability to get a patent. That combined with the European practice of publishing all the patent applications led to interesting timing on patent applications. You had to be early enough to be before any public disclosure but late enough to avoid preannoucing your product strategy.

And as an independent inventor (of lock-free algorithms) I'll have to take dispute with the comment by U. S. Under Secretary of Commerce for Intellectual Property Jon Dudas. I don't know who he thinks benefits from "safeguarding" America's ingenuity. It's certainly not the small inventor. The cost and overhead of filing patents is not the problem. It's the thuggery of institutions whose lawyers are bigger than yours are. Having a patent won't help here. It's not even clear I can put inventions into the public domain safely which is what I currently do to protect my right to use my own ideas.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: gbl on Monday, August 15 2005 @ 07:18 AM EDT
In the UK it is first-to-file and the system works. We also have
"provisional patents", these are much cheaper than full patents and
protect your invention just as well for a shorter time (12 months.) If you
decide not to go to a full patent, the provisional patent serves as prior art
and prevents others from just taking your idea and patenting it unchanged. If
you do go to a full patent within 12 months the legal filing date in the UK and
EU patent offices is taken from the date of the provisional patent filing. This
gives you time to find funding etc

If you love some code, set it free.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: Anonymous on Monday, August 15 2005 @ 08:02 AM EDT
I pity Apple, a bit, but why didn't they file before?
They certainly have a large flock of lawyers and IP specialists as their
lawsuits against common people show.

Actually, i hope for more suing of each other from the Sun/Apple/M$ trio. With
some patent trolls giving them a hell meanwhile.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: Anonymous on Monday, August 15 2005 @ 08:03 AM EDT
It has become quite obvious that BG via M$ has bought the
whole world. I can only hope that the old saying of "The
bigger they are the harder they fall" is really true.


[ Reply to This | # ]

A little knowledge is a dangerous thing
Authored by: Anonymous on Monday, August 15 2005 @ 08:06 AM EDT
The situation can't be as described in the media reports you linked because 35
U.S.C. 102(a) and 102(g) already put the law on Apple's side if the folks at
Apple did invent the technology before Microsoft. So, perhaps it isn't wise to
"assume that the reports are 100% accurate". (You don't believe
everything you see on TV, right? :-))

[ Reply to This | # ]

Not as scary but different problem
Authored by: Anonymous on Monday, August 15 2005 @ 08:21 AM EDT
First to file systems, where they exist, neither mitigate prior art, nor allow this particular form of injustice to occur. What they generally do is require immediate publication at the time of filing. This does have one benefit as it makes it much harder to have submarine patents. But it also does something else that I think is very important from the perspective of Microsoft.

What such a system does is make it nessisary, in fact, essential, to file patents, because those that do not file will automatically be disadvantaged. Today, while software patenting exists, it is neither nessisary or essential to file patents to author, publish, and commercially sell original software. After all software is already strongly protected by copyright.

What first to file, combined with a legal system permissive of software patents, will do is make it actually nessisary to patent software. Microsoft desires to fundimentally change the very nature of the commercial software business from one which relies on copyright protection to one that relies primarly on patent protection. This is because patent protection offers far better market control to existing players, such as Microsoft, and allows them to then control who is permitted to produce and sell software, both by bullying them with license fees for common ideas, and by using a position of wealth to be able to be first to file when new and promising ideas initially appear.

New software companies, to exist and come into the market at all, will have to develop their ideas entirely in secret, and will then have to announce their products through their patent filing, to assure Microsoft does not patent what they are developing. Venture capital will understand this and insist business is conducted in this way in such a legal climate if one wants to raise any funds. This simultaneously raises the bar for proprietary commercial competitors and creates a commercial environment both legally and fundimentally hostile to Free and Open Source software. It is an excellant way to perpetuate their own monoply, by destroying the marketplace itself for everyone else.

[ Reply to This | # ]

This is a joke right?
Authored by: zeff on Monday, August 15 2005 @ 08:38 AM EDT
Since when has it been important for the US to
"harmonize with the 'rest of the world'"?

Does this mean the US is going to go metric as well?

[ Reply to This | # ]

The USPTO is a protection racket
Authored by: Anonymous on Monday, August 15 2005 @ 09:15 AM EDT

There's no other way to describe it now. It's practically threatening businesses. Pay us for patents, or else.

The Patent Office should be a service, not a business in its own right. It should be paid a flat fee from taxation, not paid for by its victims - sorry, customers.

Of course, the current situation works out just fine for the USPTO, Congress, and their paymasters in the megacorps, so it's not like it's going to change short of another revolution.

[ Reply to This | # ]

First-to-File works provided....
Authored by: Anonymous on Monday, August 15 2005 @ 09:20 AM EDT
In other countries first to file works, but it only works
because prior art invalidates the patent. If Apple had
invented something earlier but did not file and Microsoft
files the patent later, then Microsoft would be awarded
the patent, but the patent would be invalidated because of
Apple's prior art. Because there is prior art, the
invention is now in the public domain and neither Apple
nor Microsoft can hold patent rights, but both can use it
thus preserving their investment. This saves time, money,
and is eminently sensible and fair, because apart from
anything else, the mere fact that two people independently
invented it is a cast iron proof of it's obviousness.

The whole idea of a patent is that in exchange for IP
protection, the details of the idea is revealed. If Apple
decides to keep it's idea secret, and then can claim
patent rights later when some else files a patent, then
that is unfair to Microsoft because any money they have
spent on developing the product, genuinely thinking it was
unprotected is wasted. On the other hand, if Microsoft is
awarded the patent and is able to extract royalties from
Apple, the inventor, then that is also unfair. The only
fair and just solution is for the prior art to invalidate
the filed patent so the invention becomes public domain so
both can use it.

If the US wants to bring it's patent law in line with
international standards, this is what it will need to do.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: micheal on Monday, August 15 2005 @ 09:44 AM EDT
I am including several different topics rather than submitting several different comments.

"Do you really believe that Microsoft and big entities with deep pockets like them can't beat you little guys to the Patent Office over and over?"

It may be worse then that. If you do not file for a patent on a feature of a product because you believed it was not patentable (or did not recogonize that it was patentable) then someone could patent that feature of your product and collect royalties on your product.

Maybe we should all file for patents on various features of all of Microsoft's products! Wouldn't it be fun to collect royalties on Word for Windows? We could also patent features of other companies products that run on M$ OSs!

Maintenance fee.

How much is it and how often is it to be paid? This could be a significant drain on a small company with a large portfolio (a necessity under first to file).

Prior art.

It is not clear if Apples "prior art" could be used under a "first to file". I thought that "first to file" was in effect only if there was no prior art.

Here is a section of the proposed law (my bold)


`Sec. 102. Conditions for patentability; novelty

`(a) Novelty; Prior Art- A patent for a claimed invention may not be obtained if--

`(1) the claimed invention was patented, described in a printed publication, or otherwise publicly known--

`(A) more than one year before the effective filing date of the claimed invention; or

`(B) before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

`(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

I would think that even under "First to File" that the iPod availability would invalidate Microsoft's patent.


If I have anything to give, made of this life I live, it is this song, which I have made. Now in your keeping it is laid.

[ Reply to This | # ]

Nice rant, but....
Authored by: Anonymous on Monday, August 15 2005 @ 10:02 AM EDT

The rejected Apple application is not exactly a critical one. It also doesn't appear that the Microsoft patent covers the subject matter of the Apple application, rather it was used as an example to deny the Apple application because it isn't an original idea.

Platt's application covers a way to automatically generate playlists from songs similar to one or more song manually chosen by the user. As an example of usage, Platt described a portable music player that uses a menu hierarchy for navigation. The menus aren't really the invention though.

The Apple application, on the other hand, is all about hierarchical menus. Yes, seriously, that's what they were trying to patent, the idea of using a tree of menus to operate a portable music player. Can you believe it? (I knew you could.) I'd chalk this rejection up to an example of the USPTO doing some good.

The rejected Apple application is 10/282,861 - Graphical user interface and methods of use thereof in a multimedia player

The Platt application is 10/158,674 - Auto playlist generation with multiple seed songs

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: perpetual_newbie on Monday, August 15 2005 @ 10:02 AM EDT
Rather obviously, I have been fairly vocal in my support of "product"
patents. However, this change is frightening.

Right now, we have books that we hold and everything that we see as
"innovative" we put into these books and sign (and date). This reform
pretty much throws these out the window. It makes no difference if we designed
it first or not.


[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: wvhillbilly on Monday, August 15 2005 @ 10:03 AM EDT
Good grief! This reads like something I'd expect to see on Humorix except that their stuff is all fake (they tell you that emphatically), and this is for real.

Like they say, truth is sometimes stranger than fiction.

What goes around comes around, and the longer it goes the bigger it grows.

[ Reply to This | # ]

Stepping Back for a Moment
Authored by: sproggit on Monday, August 15 2005 @ 10:09 AM EDT
... and looking at the issue of patent issuance in general, there are a couple
of observations that we can make.

Firstly, and I invite anyone to correct me on this if I'm wrong, I believe that
in the recent past the USPTO suddenly woke up to the fact that they could
generate a lot of MONEY for issuance of patents. In other words, the more
patents that they issue, the more revenue they generate. And they are a
MONOPOLY. That's right, noone else in the US can issue patents. So... this
generates the nightmare scenario we see before us today - in that the USPTO are
failing to conduct adequate research before issuance, failing to make even the
most basic validation checks, and creaming in large amounts of money, while at
the same time having the side effect of strengthening the strangle-hold that
multinationals and transnationals have over the economies of the world.

But there is another side to this coin, and it is potentially far more dangerous
for the United States. Imagine this hypothetical future:

consider that US companies have blanketed the IT industry so thoroughly with
software patents that they have become a complete barrier to entry. It is no
longer possible to write new software without infringing upon a stack of
patents, or paying significant sums of money in patents. Innovation in other
countries of the world [Japan, Europe, India, China] where software engineering
takes place, would be stifled.

Now, imagine that you are the governments of those countries, and your
technology industries are faced with ruin, all because the USPTO are being
irresponsible and the US Legal System is permitting this to continue.

How long do you think such a situation would be permitted to continue?

I'd like to think the duration would be short indeed.

What's left is commercial slavery.

[ Reply to This | # ]

Not heard of iPods?
Authored by: gumnos on Monday, August 15 2005 @ 10:12 AM EDT
When you are applying for a patent, you have a duty of candor, as they put it, to list all prior art you know about. iPods. We're talking iPods. Is there anyone left on the planet who hasn't heard of iPods?

Well, my understanding is that iPods became such a "problem" on the Microsoft campus that a ban was put on them


[ Reply to This | # ]

Corporate support of patent system
Authored by: Anonymous on Monday, August 15 2005 @ 10:16 AM EDT
It is interesting how the corporate world has largely been silent or supportive
of the patent system - until it bites them.

The system obviously needs reform, but the problem is how to approach that
reform. Congress is *very* beholden to corporate interests and nowadays
Intellectual Property is seen more as an international macroeconomic issue than
something to protect individual inventors.

My conclusion is that unfortunately we are going to have to go through a lot
more pain, and some really bad results, before this issue gets the attention it
deserves. Now is a very good time to start a grassroots lobbying effort to our
elected officials in congress so that in 5 or 10 years when this is a major
issue they will already know where their constituents stand.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: Anonymous on Monday, August 15 2005 @ 10:38 AM EDT
"Platt discloses an apparatus and a method of assisting user interaction
with a multimedia asset player by way of a hierarchically ordered user
interface, comprising: displaying a first order user interface having a first
list of user selectable items; receiving a user selection of one of the user
selectable items; and automatically transitioning to and displaying a second
order user interface having a second list of user selectable items based upon
the user selection."

Am I the only one that finds this description to be basically the same as menus
used in Lotus 1-2-3?

[ Reply to This | # ]

"In conformity with the rest of the world"!
Authored by: Anonymous on Monday, August 15 2005 @ 10:40 AM EDT
Since when has being "in conformity with the rest of the world" been a
goal for the United States of America? As an American, I feel that it would be
a betrayal of my country to want to be "in conformity with the rest of the

Were we "in conformity with the rest of the world" when we decided to
settle a new continent and make it our home, instead of exploiting it at a
distance? Were we "in conformity with the rest of the world" when we
established a representative government based on the authority of the people,
without a monarch of divine right? Were we "in conformity with the rest of
the world" when we walked on the moon? Are we "in conformity with the
rest of the world" when we implement, at no small inconvenience to
ourselves, a policy of thwarting and deposing oppressive tinpot dictators and
genocidal mass murderers?

I admit that normalization of international law can be a salutory
accomplishment, but it is not a universal panacea. And being "in
conformity with the rest of the world" is not going to get the U.S.A. back
on course with its mandated goal of granting limited monopolies to encourage
innovation and technological advancement.

If I wanted to be "in conformity with the rest of the world", I would
not live in the United States. I would live in the rest of the world.


[ Reply to This | # ]

Industrial espionage at it's best! --The Dark Ages return!
Authored by: ikocher on Monday, August 15 2005 @ 10:58 AM EDT
Just image a company developing a product, and an industrial spy... mix with
first-to-file and the result gets much more than scary, total anarchy!

Company A develops a product, complete secret, but an employee (disatified, spy,
thief) tells company B about it, handles in all the data, so company B files the
patent! Then company A is under serious trouble, they can even try to sentence
to death the traitor, but the patent has been granted... try to invalidate it!
company B will tell everybody how they really worked on the idea, etc, bla bla
bla, to avoid by any means the patent invalidation or transfer (they have the
data). Even more difficult if it is a foreign company.

This won't happen the next day this crap becames law, these kind of guys will
wait a few year until the first-to-file practice is standard, there have been a
few trial/demands on similar problems, and then a rush will come... by then the
Congress will not be able to easily stop or change this new mess, because on one
hand they will have the fair owners of patents that use the first-to-file
"property" of the system, and on the other the abusers. The congress
can't take case by case, the solution will have to be a law, applied to everyone
equally, so which side wins?

In a few words, why develop or research? Just hire the services of spy
agencies, see what other guys are making, file the patents and then sue. Simple!
No need to spend millions in research, when you can have the whole cake for a
few thousands...

Also I think about the dark ages, I mean the period of time between 1400 and
1700, where the church basically stopped all technological advance. Now, it
will be called instead of church, 'megacorporations monopoly granted by the
goverment'. I a simple guy somewhere creates a piece of software, something sort
of simple, publish it, megacorp patents it, sue back, the poor guy will have no
life for the rest of his life, because he will owe so much money in patent
infringments, and he will not be able to do any new things as he used to do.
There goes any other innovation or idea he would have been able to create :(

In the dark ages, people where not always killed, but basically separated from
society because anyone who have relations with them was in risk.

Think about the relation...


[ Reply to This | # ]

Authored by: Anonymous on Monday, August 15 2005 @ 11:00 AM EDT
There must be a spelling mistake in the article. I'm pretty sure you must mean
"MSPTO", not "USPTO".

[ Reply to This | # ]

Prior Art?
Authored by: Anonymous on Monday, August 15 2005 @ 11:07 AM EDT
Playlist ( a Perl script
which creates XMMS-compatible lists and HTML index files for any file format
(Ogg, MP3, MPG, etc.). It can also fix ID3 tags on MP3 files, and for complete
albums it will use the CDDB to recover the track numbers. It is useful for large
MP3 collections, music video lists, and apps which do not provide their own
playlist support.
Playlist was originally written by Patrick Hearon. Patrick passed away in a car
accident on Saturday, 11/18/2000.


[ Reply to This | # ]

First-to-file collateral
Authored by: overshoot on Monday, August 15 2005 @ 12:11 PM EDT
PJ, the first-to-file countries have a few other wrinkles that go with it. Not least is that they don't have the one-year window following public disclosure that the US allows for filing.

In the US, I can (like Apple) show an invention to the public for a year prior to filing for a patent on it. In Europe, if my lawyer gets held up in traffic until after the press release goes out, it's too late.

The one-year window in the USA works for first-to-invent since presumably (as in this case) Apple will have no problem showing that their date of invention trumps Microsoft's by a mile. However, first-to-invent almost always ends up in court, too, because proving date of invention gets messy. That's one of the main arguments for first-to-file.

However I would certainly not put it past Congress to leave the one-year window in along with first-to-file, either explicitly or by not laying down a black-letter block on the USPTO doing so by administrative edict. However it happens, a window combined with first-to-file will result in a tremendous explosion in patent filings as companies discover that they can file patents covering the products that their competitors already have on the market (again, like the instant example.)

As an engineer with a fair number of patents to my name (about 20 in the USA, including a few that have expired) I must say that first-to-file implemented the way Europe does will on balance be an improvement. As usual, the devil is in the details -- and those details are being drafted by firms that have large lobbying budgets because they have a large stake in the outcome.

[ Reply to This | # ]

Real People Invent
Authored by: GelW on Monday, August 15 2005 @ 12:49 PM EDT
All inventions are made by people and most are independent / amateurs. It is the mavericks that make the difference, Education in a narrow field, or specialism, tends to diminish the ability to innovate.

Of course we never hear about this, because most of the people who do the reporting are specialists and part of the system, but many famous inventors drop out of the education system.

"ICI's own paints laboratory held an internal audit and what they found puts this claim in an entirely different light. For the audit showed that the most scientifically qualified of its research chemists had contributed to the least number of patents, and the fewer scientific qualifications the staff possessed, the greater the number of patents they had contributed to. In the most striking case of all, the person who had contributed to most ICI's patents had no scientific qualifications at all."

Alternative Science

Many more discoveries are made by scientists working outside of their regular sphere of expertise, these discoveries are universally ridiculed by the 'experts' - who often have most to lose.

Eric Laithwaite - BBC

And BTW Cold Fusion really does work!

The essence of discovery is found in being multi-talented, the much maligned 'jack of all trades'. Those who have been trained in one field alone rarely break out of the strictures of their education.

[ Reply to This | # ]

Jack and the Beanstalk
Authored by: Anonymous on Monday, August 15 2005 @ 01:01 PM EDT
"I gather the USPTO is beginning to get a glimmer that small and medium
sized players are being left out of the patent orgy, because in the same press
release, they call on all such to join in and patent everything they can, to
protect America's economy, no less:"

Once upon a time in the 1800's the US was the world's manufacturing and
agriculture powerhouse. At the same time we were sorely lacking on the
intellectual side, so our copyright laws were set up to ignore the IP rights of
citizens of other nations and let us get away without paying royalities (if I
recall properly if you published a book outside the US but didn't publish an
edition also here within n days , you had no copyright claim on it in the US and
it was fair game to be copied without payment to the author. ) fast forward to
our current times. Our manufacturing economy has been decimated, we are now
either a net agracultural importer (or nearly one) and all we have left to sell
to the world is our IP, so what do we do? We try to change the rules of the
game to be once again in OUR favor with IP being the "true wealth" and
manufacturing being done as a commidity by the cheapest source. And that's why
we're so hellbent on protecting our IP, it's all we have left since Jack sold
the cow for 5 beans. Only unlike Jack I'm not very optimistic that selling our
manufacturing base for low cost VCR's from China is going to get us to the top
of the beanstalk (IP ubber allas)

[ Reply to This | # ]

First To File -- and Prior Art
Authored by: DannyB on Monday, August 15 2005 @ 01:31 PM EDT
I'm sure that the First To File rule was to simplify things at the US PTO. It is much easier to determine who filed first than it is to determine who actually invented first. So it makes sense that the PTO would want a rule like this. It saves them effort.

There is another labor saving efficiency that could be introduced to the US PTO. Eliminate the need to search for prior art. This would save a lot of time and trouble.

Things would be very simple. Whoever gets to the patent office first with any kind of claim whatsoever, wins. Wins as long as it isn't covered by a previously filed patent.

This would streamline the efficiency of the PTO in granting patents. More patents are granted. Thus, Innovation is increased. And best of all, the revenue generated from patent applications will go up significantly.

It's good for everyone.

Okay, maybe not.

The price of freedom is eternal litigation.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: Anonymous on Monday, August 15 2005 @ 01:31 PM EDT
software is math equations put in sequence to do a job. They should not be
patentable. PURIED!

Right now microsoft is money machine for the government. Do you think the
government is going to bite the hand that feeds it?

[ Reply to This | # ]

Naming The Inventor
Authored by: UglyGreenTroll on Monday, August 15 2005 @ 02:06 PM EDT
I have a question.

Currently the inventor(s) must be named in a U.S. patent. Any inaccuracies or exclusions here can jeopardize the patent, although honest mistakes are tolerated.

What happens under a "first to file" system? The filing party might not be the inventor - indeed the filing party might not know who should be included or excluded as an inventor. Does the inventor not have to be named?

[ Reply to This | # ]

Fix this and more by abolishing corporations
Authored by: Anonymous on Monday, August 15 2005 @ 02:25 PM EDT
At some point, if we cannot fix this problem and others like it, it will become
easier to simply remove the legal entity status of corporations instead.

It is becoming increasing clear that granting corporations legal entity status
was a mistake. Problems like this help raise awareness of this fact, and when
that awareness eventually reaches a tipping point we can demand legislation to
reverse that mistake.

If patents were issued to individual inventors, this wouldn't have become such a
big problem. Companies wouldn't have had the incentive to pay for all the
patent applications in the first place if the patents had to be assigned to
their repective inventors and couldn't be transferred to the corporation.

If appropriate patent reform cannot be accomplished, another solution would be
to remove the legal entity status from corporations, and have all patents held
by corporations devolve to their respective inventors.

Abuse of patents is only one portion of the harm corporations do. All the
groups harmed by corporations ought to include this idea as a possible solution,
instead of fighting all these smaller skurmishes without a view to the larger

Corporations will only stop harming us when their existance is threatened. It
is high time we start threatening them with something more meaningful than the
lose of the ability to abuse patents.

[ Reply to This | # ]

M$ has patents on the Menu system?
Authored by: hamstring on Monday, August 15 2005 @ 02:38 PM EDT
From what I could find, the M$ patents are on the Menu system. Please correct
me if this is not true/complete, but if it is:

Would this not fall under the "obvious" reason for invalidating a
patent anyway? Maybe that is why Apple did not file.

MP3 files contain header information that can be used as a sort key. In each
MP3 file space exists (whether it is used, or not) for a music classification,
song title, artist, genre, etc, etc...

Since all of this information is contained in the file, the "menu" is
just a basic file manager that can read MP3 headers for sort options.. File
managers sort by date, name, type, creator, etc.. already so why not MP3 tags?

Any way, very sad M$ keeps doing what it has been doing for years and the US.DOJ
does not take severe actions. Time to break up the monopoly!

* Necessity is the mother of invention. Microsoft is
* result of greed

[ Reply to This | # ]

Constitution & International Treaties
Authored by: Anonymous on Monday, August 15 2005 @ 02:58 PM EDT
Might first-to-file patents be unconstitutional? Maybe so, if Congress passed
such a bill on its own say-so. But guess what: treaties trump the US
Constitution. This was officially noticed among the right-wing extremists a few
years back. They've since been working quietly and tirelessly behind the scenes
to do away with all manner of constitutional, er, inconveniences.

All they need to do is sign a treaty with any agreeable country to override, oh,
any amendment you like, and get the Senate to ratify it. BOOM, the courts'
collective hands are tied. It could be tricky to get a flag-burning,
anti-gay-marriage, or anti-abortion provision into a treaty, but tricky is what
tricksters are good at. They're starting with provisions that put normal people
to sleep, but they're thinking big. Given a tame Senate, all this inefficient
democratic foofaraw and rights-mongering can become a thing of the past.

[ Reply to This | # ]

Patents only protect the little guy when...
Authored by: Marc Mengel on Monday, August 15 2005 @ 03:50 PM EDT
...when they expire. Otherwise they (like most of our current legal infrastructure) are pretty much a way for the Rich to get Richer.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: stend on Monday, August 15 2005 @ 04:01 PM EDT
In fact, the USPTO issued more patents in 2004 than it did during its first 40 years.
So we have observed. You are proud of that? Did the US suddenly become a nation of innovative geniuses?
According to the census, the United States population rose from under 4 million in 1790 to just under 13 million in 1830, as compared to over 280 million in 2000. That puts the current US population at about 40x the average from the first 40 years of the patent office, so if the population is as innovative as it was at the time, you would expect the current volume of patents. Do i think that is what is happening? No. But the sheer volume of patents isn't a valid argument in support of them being invalid.

Curiously, perhaps, this is not a new problem.

As a result, many patents were issued that perhaps should not have been while other worthy patent applications were neglected.

The Act of 1793 was passed largely in response to inventors complaints that the system established in 1790 was inefficient. Patent applications took several months to be examined, and less than half (fifty-seven total patents) were eventually issued between the 1790 Act and the Act of 1793. This discouraged inventors to file applications, which at the time required a trip to New York and later Philadelphia.

Think we'll get it right in another 200 years?

Please see bio for disclaimer.

[ Reply to This | # ]

How is this different from other law?
Authored by: Anonymous on Monday, August 15 2005 @ 04:16 PM EDT
and the law in practice has become so bizarre and arbitrary and out of sync with the way the system was set up to work that you can't even predictably rely on a just outcome.

You can't rely on a just outcome in any area of the law. Men have spent decades in jail, then been proved innocent.

AFAIK nobody has ever tried to make a credible estimate of what fraction of the prison population has actually committed a crime. 80%? 70%? 50%?

And that's the criminal law, which was intended to have much greater safeguards than civil law. To be convicted of a crime, the standard of proof was "beyond reasonable doubt", which in practice today means anything from "well he probably did it" to "I don't like the look of this guy". To lose a civil lawsuit, however, even the theoretical standard of proof is "well he probably did it", so in practice it comes down to having the better team of lawyers. You think this has anything whatsoever to do with justice? Well, you're entitled to your opinion.

[ Reply to This | # ]

largely moot because Apple & Microsoft cross-license patents
Authored by: retiarius on Monday, August 15 2005 @ 04:54 PM EDT
yet some media report otherwise, since the most publicized
patent licensing agreement between the two companies
was inked for five years starting in 1997.

however, i have a record of a call to AAPL investor relations
stating that a joint patent license agreement was renewed
when i inquired last year.

yes, MSFT can sublicense their own inventions to others, or
otherwise use them as leverage, but not directly against AAPL.
most other major computer companies cross-license (IBM/SUNW,
IBM/MSFT, SUNW/MSFT), but curiously not AAPL/SNE at
the time of my inquiry.

also, the patent may relate only specifically to aspects
of playlist management and not the entire iPod GUI, where apple
clearly would be the senior party during an interference proceeding,
because of first-to-invent.

good points about first-to-file "harmonization", otherwise.

[ Reply to This | # ]

Even if msft loses, msft wins
Authored by: Anonymous on Monday, August 15 2005 @ 05:02 PM EDT

Msft is sending this scary message to every other potential innovator:
"stay away - or msft will sue you." Apple may be big enough to take
care of themselves, but what about those who don't have at least $50MM for legal

Msft stays on top by killing innovators, and potential innovators. I
conservatively estimate that msft has set back computer technology at least ten
years. Why innovate just to get clobbered by an abusive monopolist who has $50B
in spare change?

- walterbyrd

- walterbyrd

[ Reply to This | # ]

Hey. This ***USPTO*** Thing Is Scary
Authored by: SilverWave on Monday, August 15 2005 @ 05:20 PM EDT

Correction ;)

Hey. This First-to-FileUSPTO Thing Is Scary

For any system to work the USPTO needs to be trustworthy.

First-to-File seems quite a lot simpler to administer and the default looks to be set NOT to issue a patent.

This looks like a good idea!

"They [each] put in one hour of work,
but because they share the end results
they get nine hours... for free"

Firstmonday 98 interview with Linus Torvalds

[ Reply to This | # ]

First-to-invent includes First-to-File
Authored by: AllParadox on Monday, August 15 2005 @ 06:25 PM EDT
First-to-Invent includes First-to-File

For a patent to issue, there are a number of requirements, including originality
and novelty.

For originality, the inventor must be listed on the patent application, even
though someone else, like his employer, is actually pursuing the patent.

For novelty, i.e. "newness", the idea must be newly created. If the
thing was published anywhere in the world prior to the exclusionary period - a
year, I think, or actually used anywhere in the U.S., then it is neither novel
nor new.

First-to-Invent has two problems: actual invention, and continuous development.

If you discover someone else's cool idea, and file for the patent before he
does, you are not entitled to have the patent issue: you are not the inventor.
Do people lie about things like that? Yes, they do. However, if they would lie
about that, they would lie about other things, too. This is why I distrust
First-to-File. It makes the little guy hold off production until the patent
application is filed. Otherwise, the big company with the big patent firm can
win the race to file at the patent office, then pull a stunt in the courtroom
like Microsoft's "slow" system with the crippled IE kernel code.
(Note: for those unfamiliar, MS got caught with its expert lying about
performance timing.)

Here is the "however" part: an inventor cannot come up with something
and then just sit on it. He must be in continuous development until he files
the patent application. There are some "reasonableness" aspects to
it, but the basic idea is that if you create an idea, then quit working on it,
abandon it, then you only get to claim the time back to when you restarted your

First-to-Invent only has meaning in the context of independant inventors, and
then only when both of them have had continuous development. If they both
stopped development, then much later pulled everything together and ran to their
patent attorney's office, the applicable rule is clear: First-to-File wins.

PJ deletes insult posts, not differences of opinion.

AllParadox; retired lawyer and chief Groklaw iconoclast. No legal opinions,
just my opinion.

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: Anonymous on Monday, August 15 2005 @ 06:29 PM EDT
I fail to follow PJ's logic. If MS's patent application covers technology that
is not incorporated into the iPod, then there is no issue - MS invented
something novel and assuming the other requirements are met (utility,
nonobviousness, etc.) then that's what entitles you to a patent. Of course,
that's a big assumption, but I'm not going into the other issues since this
focus of the comment is on novelty.

If the iPod is prior art, then MS's patent
is invalid under either current law or the new law. The only situation in which
MS could obtain a patent on something in the iPod if (A) Apple kept it secret
(i.e., didn't release the iPod AND didn't publish), and (B) MS filed first. But
that's the intent of the first to file approach - punish Apple for not
disclosing its invention to the world and not filing a patent.

Under the
current law and the proposed new law, Apple's prior release of the iPod before
MS's kills MS's patent.

I think it's uncontroversial that MS's patent is
invalid under the current system if the iPod qualifies as prior art. Let's look
at the proposed new law:

"Sec. 102(a) Novelty; Prior Art- A patent for a
claimed invention may not be obtained if . . . the claimed invention was
patented, described in a printed publication, or otherwise publicly known--

more than one year before the effective filing date of the claimed invention;

(B) before the effective filing date of the claimed invention, other than
through disclosures made by the inventor or a joint inventor or by others who
obtained the subject matter disclosed directly or indirectly from the inventor
or a joint inventor...

MS's effective filing date is May 2002. The iPod was
released and publicly known Nov. 2001. This is before the effective filing date
of MS's patent application - end of story - MS's patent is invalid under

The exclusion from 102(a)(1)(B) only applies to a public
disclosure by the inventor on that patent application - i.e., it only protects
MS from prior disclosures made by Mr. Platt, MS, or by others who obtained the
subject matter disclosed directly or indirectly from Mr. Platt.

Now, of course,
the proper functioning of any patent system is subject to the PTO having the
competence to recognize prior art as such, but others have pointed that out in
other posts. The problem is with the PTO, not first to file or the 1 year bar
(for the inventor's own disclosures) rule.


[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: webster on Monday, August 15 2005 @ 08:44 PM EDT
1. Apologies to those whom I repeat above. I've been skimming. FTF is scary and
unconstitutional. The Constitution only provides for the inventor:

*** To promote the Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their respective Writings
and Discoveries;***

So if the First-to File is not the inventor, they need a constitutional
amendment, not a law, to get a patent. So the First has to show he/she is the

2. Imagine an inventor who doesn't care to exploit his invention, doesn't care
to file. He implements it and gives it to the world. Does the First-to-File
get the rights by default? Can they exploit others though they did not invent
but filed first? If so, it would seem to be unconstitutional.

3. The USPTO may be in a crisis if their patent decisions have no credibility.
The courts aren't going to like it if every software patent has to go to court.
If they equivocate about prior art and meaning, their patent is worthless in
court. The courts will be bouncing patents back to them with examples of
unreviewed prior art to re-examine all their patents. Can a Court take Judicial
Notice that the PTO is underfunded, understaffed, and didn't review all relevant
prior art?

4. Since you can patent software, one ought to patent every project one is
working on with a few lines of code and idyllic claims whether they are complete
or not. You'll be first and have a leg up on any actualized inventions.

5. A disgruntled large corporation can subvert the whole system by putting a few
million into overwhelming the system. A million dollars gets you 10,000 patents.
A few million on vague undecipherable patents will save you from
millions in recoveries later. Have a million monkeys key code and apply for
patents. They would invent a lot and it wouldn't be obvious.

>>>>>>> LN 3.0 >>>>>>>>>

[ Reply to This | # ]

What Goes around comes around
Authored by: Anonymous on Tuesday, August 16 2005 @ 12:01 AM EDT

For years Microsoft said that software patents were evil, and refused to apply
for any.
Apple has allways gone after all the software patents they could, including
getting patents for the windowing system they stole from Xerox.
Inthe late '80s, Apple sued IBM, Microsoft, and HP for patent infrengment for
IBM and HP got a get out of jail free card by doing a patent swap.
Microsoft had no patents, so they had to fight it out in court for years
After that, Microsoft started patenting everything they could in self defense.

I don't want to do too much to defend Microsoft, but I feel good anytime Apple
gets burned by the fire they lit.


[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: flagboy on Tuesday, August 23 2005 @ 09:53 AM EDT
I don't care whether Apple or Microsoft gets the iPod patent. I want no-one to
have the patent. And first-to-file makes that situation easier to attain (see my

other post).

[ Reply to This | # ]

Hey. This First-to-File Thing Is Scary
Authored by: flagboy on Tuesday, August 23 2005 @ 09:59 AM EDT
<blockquote>Although Apple introduced the iPod in November 2001, it did
not file a provisional patent application until July 2002, and a full
was filed only in October that year. In the meantime, Microsoft submitted an
application in May 2002 to patent some key elements of music players,
including song menu software.</blockquote>

So if Apple gets the patent under first-to-invent, any prior art to invalidate
needs to be dated before November 2001. If Microsoft get it under first-to-
file, the prior art needs ot be dated before May 2002.

I prefer first-to-file. I want no-one to have this patent, not Apple to have it.

[ Reply to This | # ]

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