Patent Truth and Consequence: File First Even in the U.S.

Most who are even casually familiar with patent law and patent practice understand that it is far better to file a patent application sooner rather than later.  There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar of 35 U.S.C. 102(b) from preventing a patent from issuing.  Perhaps the most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US patent application being filed.  In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security. What so many inventors don’t realize is that third-party activity can start the 102(b) clock ticking. So many inventors think what they have invented is so unique that no one else could ever have come up with it, thus there is nothing to worry. This logic ignores the reality that creative people do frequently engage in the same inventive activities.

The most important reason to file sooner rather than later is to obtain an earlier priority date so that the work of others will not be considered prior art.  But what happens if two or more applications filed by different inventors define the same invention?  Throughout the world the answer is simple – the first party to file the patent application is entitled to the rights, provided of course that the invention meets the patentability requirements.  In the United States, however, the rule is much more complicated.  The United States is what is called a “first to invent” system, meaning that the patent, if one ultimately issues, goes to the party who invented first, even if that part was not the first party to file the patent application.  The caveat, and it is a big caveat, is that you must be able to offer proof that you were the first to event, which is not nearly as easy as most believe it to be.


There has been debate over the years regarding whether the United States should become a first to file system, thereby rewarding the party winning the race to the Patent Office. In fact, today we are closer to adopting a first to file system than we have been at any point in time.  Notwithstanding, for now you do not need to win the race to the Patent Office in the United States in order to obtain a patent.  Nevertheless, it is still extremely important to file as soon as possible.  All things being equal, you would rather be the first to file. All of the evidentiary benefits and inferences are placed in favor of the individual or entity that files first. No one should aspire to filing second.

It is not unheard of to have multiple applications claim the same invention, but far less than 1% of all applications fall into this category.  It is equally important to realize that a patent can only be granted once, and only to one inventor (or inventive entity in the event there are co-inventors).  Unlike copyright law, patent law does not allow for independent creation to result in a shared exclusive right.  Patent law does not authorize the provision of multiple rights on the same invention, so there can only be one patent per invention.

A proceeding called an “interference” is the process employed by the Patent Office to determine who obtains a patent in the event there is more than one application covering the same invention.  An interference proceeding can be instituted to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents.  The Patent Office, however, does not have jurisdiction to conduct interferences which involve only patents, i.e., which do not involve at least one pending application. Jurisdiction over those proceedings is conferred to the Federal courts by 35 U.S.C. § 291.

Before proposing an interference, the examiner must be certain that each of the applications in question do in fact contain a claim to the same patentable invention and that each of those claims is clearly readable upon the disclosure of that party and allowable in its application. If the applications each contain at least one claim drawn to the same patentable invention, the examiner proceeds to propose the interference.  This typically happens not because multiple applications identically claim the same invention, but because multiple applications disclose the same invention in the specification.  Because of the way the Patent Office handles workflow, it is all but certain that the same examiner will wind up with both applications.  The examiner can encourage the two applicants to add a claim to their applications, a claim that would be identical for both applications.  If the parties do copy the suggested claim then low and behold you have multiple applications that now claim the same invention and a search ensues to see who was the first to invent.

In the event the examiner does not declare an interference, one may be provoked. First, an interference may be provoked between pending applications by request from an applicant who has become aware of another application which may be claiming the same invention.  Second, an interference between a pending application and a patent can be provoked by the applicant by copying the claim in an issued patent or published patent application and making the argument that they are entitled to the claim.

Regardless of how the interference has begun, the terms “conception of the invention” and “reduction to practice” are encountered in connection with priority questions. Conception of the invention consists of the complete performance of the mental part of the inventive activity. The conception of an invention is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.  The date of this conception is the date when the inventor’s idea has crystallized in all of its essential attributes and becomes so clearly defined in the mind of the inventor as to be capable of being converted to reality and reduced to practice by the inventor or by one skilled in the art. For there to be conception of invention the inventors definite and permanent idea must include every feature or limitation of the claimed invention.

The date of invention relates to your conception. This is true whether you are engaging in an interference proceeding seeking to obtain a claim instead of another who is also seeking the claim, or you are attempting to demonstrate that you can get behind a reference used by an examiner because you have an earlier date of invention. The hallmark of a first to invent system is that those who file second can obtain a patent under very strictly limited scenarios. A byproduct of a first to invent system is that if the examiner finds prior art you can “swear behind” the reference using a 131 affidavit to demonstrate that reference is not prior art for your invention. In both the interference context and the 131 affidavit context there needs to be proof of conception that will satisfy the patent laws.


Reduction to practice can be actual or constructive.  Actual reduction to practice refers to the construction of the invention in physical form, or the successful completion of a process. Proof of actual reduction to practice requires a showing that the invention actually worked for its intended purpose.  Constructive reduction to practice refers to the filing of a regular patent application completely disclosing the invention, which is treated as equivalent to actual reduction to practice.  Constructive reduction to practice is a term of art that refers to the preparation of a patent application. If a the description of the invention in a patent application is sufficiently definite enough to allow one skilled in the art to make the invention, the invention will be considered to be constructively reduced to practice, even if no working model or prototype exists.

The priority question presented by an interference proceeding is determined by the Board of Patent Appeals and Interferences, which is typically a board of three administrative patent judges. The Board will decide who is entitled to the patent based on the evidence submitted. 35 USC § 135(a) also grants the Board discretion to determine questions of patentability during the proceeding. After resolution by the Board the losing party may appeal to the Court of Appeals for the Federal Circuit or file a civil action against the winning party in the appropriate United States district court.

The law requires each party to an interference proceeding to submit evidence of facts proving when the invention was made. In reality, what happens normally is that the party claiming to be the first to invent, and who was the second to file, must in the first instance demonstrate that they can prove a date of invention (i.e., conception) prior to the filing date of the party who was the first to file.  In legal terms the party who is the first to file is called the “senior party” and the party who was the second to file is called the “junior party.”  All inferences go to the senior party because public policy favors the early disclosure of inventions.  So the senior party does not need to show anything, and can simply stand on their filing date, unless and until the junior party is first able to at least beat the senior party’s filing date.

Assuming that the junior party can indeed demonstrate invention prior to the senior party’s filing date, the game is on and the Board of Patent Appeals and Interferences will determine who was the first to invent.  Nevertheless, in the event there is a tie, meaning the parties invented at the same time, or more likely that the evidence demonstrates a tie, the senior party wins.  Much like the rule in baseball that the tie goes to the runner, the tie in an interference goes to the senior party, so the deck is indeed stacked against the junior party from the outset – yet another good reason to file an application as early as possible.

But how could there ever be a tie in terms of when multiple parties invent?  Indeed an actual tie would be rare, but sometimes invention records are not altogether clear, or perhaps even non-existent.  In at least one case the evidence demonstrated that the junior party in all likelihood beat the senior party, but their evidence could only specify that they invented during the last week of October.  The senior party had concrete evidence that they invented on October 31.  The Federal Circuit said that an invention during the last week of October could mean that it occurred as late as October 31, and because that was the date the senior party could prove the senior party was victorious.

In view of the necessity of proving the various facts and circumstances concerning the making of the invention during an interference, inventors must be able to produce evidence to demonstrate when they conceived of the invention and when it was reduced to practice. If no evidence is submitted, a party is restricted to the date of filing the application as his/her earliest date of invention.  Therefore, it is absolutely critical to keep detailed, understandable and accurate invention records.  It is also critical to have the invention records verified by someone competent to understand the invention.  Such verification is necessary because if one thing is clear throughout patent law it is that the testimony of inventors is not credible.  Absent corroboration inventor testimony will be treated as inherently unreliable.  Harsh yes, but that is the rule, so it is essential to have in place a regime that requires inventors to document their work in a meaningful, understandable manner, and to have authentication of the invention records.

It is also critical to understand that even if the evidence exists to demonstrate that the junior party conceived first they may still not prevail. This is because in order to prevail the junior party must demonstrate that they diligently worked on the invention from at least before the conception of the senior party straight through and uninterrupted to the date of their reduction to practice. This diligence cannot be interrupted. In fact, if the junior party was not continuously diligent there are virtually no excuses that will allow the junior part to prevail. Stopping to take a vacation is an interruption in diligence. Waiting for your patent attorney who is at trial to get done to prepare and file the patent application is an interruption in diligence. Stopping active work on the invention to raise funds from investors is a break in diligence. The diligence requirement is quite unforgiving.

The take-home lesson here is that the deck is stacked against those who are second to file and claiming they were the first to invent.  In fact, since October 1, 2004, only 1 independent inventor has managed to prevail in an interference proceeding.  Thus, inventors do nothing to help themselves when they believe the U.S. is a first to invent system.  Yes, we are a first to invent system but the evidence required is quite onerous and it is necessary to demonstrate that as you proceeded from conception to reduction to practice you were diligent.  That means no breaks in working on the invention. Does your notebook demonstrate conception? Has it been verified by an independent third-party who understands your invention? Have you worked on the invention continuously? Proving you are the first to invent is exceptionally difficult.

It is better to say that the U.S. is a kinda-sorta a first to invent system.  If you have the required evidence and the facts are on your side you might prevail.  Of course, to have any realistic chance to prevail you will need competent legal representation and that on average will run you about $600,000.  So the first to invent system is really hardly inventor friendly, or even small business friendly.

First to invent seems simplistic and easy to understand, but it is not. Inventors think they know what it means, so they are lulled into making bad strategic decisions based on incomplete understanding of what the law requires and what first to invent actually means. Moving to a first to file system will be far more easy to understand, it will provoke inventors to do what they already should be doing (which is file as soon as possible) and it will ultimately provide enormous strategic advantage to independent inventors and small business because large corporations will be slow to adapt to any changes in the law, but nimble and reactive inventors and small businesses will modify behavior immediately.  I predict that large corporations will regret the day they supported first to file, so inventors and small businesses should see this as a great opportunity rather than a terrible curse.

And for those who say they cannot file patent applications quickly enough or cheaply enough if we move to a first to file system, they are not being straight forward and honest with you. In order to prevail in a first to invent system you need proof of conception. If you have written proof of conception then you have something in writing that will be useful to prevail in an interference and which would be useful to help support a legitimate 131 affidavit. If you have such proof of conception you also have an adequate written disclosure that will support priority. So just take those notes you would like to rely on later in an interference proceeding or for a 131 affidavit and attach a provisional patent coversheet, pay the $110 to the Patent Office and file a provisional patent application. You get immediate patent pending and you lock in your priority date. It really is that simple.


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

19 comments so far.

  • [Avatar for step back]
    step back
    March 23, 2011 05:56 am

    Relax Gene.

    Only mindless sheep bagree with each other all the time.
    The fact that we sometimes clash over controversial topics merely means that we might have minds of our own.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 22, 2011 09:57 pm


    If the USPTO doesn’t step in (no pun intended) then the non-attorney services will prey even more so on unsuspecting inventors once we go to FTF, no arguments there. I will make sure (to the greatest extent possible) that they understand this and will continue to be an advocate for inventors.

    I don’t get quickie requests really, but that is just because I don’t buy into it. If my name or the firm’s name is on it I/we want it to be quality. I weed out clients pretty heavily, and the first sign of wackiness I run. I also only work with those cutting corners when the corners being cut are done so in a business responsible way (i.e., with proper and full consideration of the consequences).

    I do have the Invent + Patent System if folks want to do it themselves and then I am available by the hour to help if they want. It is better than anything else out there I’m aware of, but I think I make clear to the extent possible: (1) you are always better off having an attorney do it; (2) if you cannot afford a provisional patent done right you might want to consider whether you ought to be in the invention/patent game; and (3) doing it yourself should only be pursued if it means you do it yourself or do nothing and walk away. Of course with #3 you should probably see #2, but who am I to prevent folks from dreaming. I’ve taken risks myself, and if they are risking a couple hundred dollars with their eyes open so be it. Inventors just deserve fair and accurate information in my opinion.

    I agree that the word “provisional” creates potential mischief, but I’m not sure that any other word would create less mischief. We all get the word out there about appropriate usage, and so does the USPTO. The pretenders and charlatans exist because they sell what inventors want to hear, just like snake-oil sales men of old (and new) times.

    I couldn’t agree more about the fact that so many think they can quickly master what we do. Again, what people want to believe, just like they want to believe that invention promotion companies can make them rich for free.

    By the way, you and I agreeing doesn’t feel right… LOL.


  • [Avatar for step back]
    step back
    March 22, 2011 07:10 pm


    I don’t know about you, but in my practice (in years past cause things are sorta slow now) I would get these annoying requests from clients to file a “quickie” provisional as if such a mythical animal exists and is good for anything.

    You can see the mischief that the word “provisional” creates in the example of Mr. Korpi above.
    It is all too appealing to believe that a patent application is some bureaucratic form one fills out and submits to the Patent Office and that the lawyers/agents are just a bunch of money-grabbing sleaze bags doing what any Do-It-Yourselfer (DIYer) can quickly master on their own. Perhaps at another web site Mr. K offers a DIY brain surgery video as well. It’s plausible.

    FTF will encourage more filings of “quickie” provisionals, much to the determinant of all involved.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 22, 2011 04:30 pm


    Apologies… well… sort of…

    I still think you took issue with the wrong thing, but I understand perfectly your point. You are right to take issue with the suggestion by Korpi (on another thread) that drawings are not necessary in a provisional patent application. Clearly drawings are required.

    You are also right to identify Korpi as one who is not a patent attorney or patent agent. If you look up the Attorney/Agent roster at OED he is not listed, so he seems to be an inventor who thinks he knows better. I don’t know that he is engaging in the unauthorized practice of law. If he just offers a video course that likely isn’t the unauthorized practice of law even if he is wrong. It does make you wonder why one would trust someone not trained when seeking to file a patent application. That is sort of like asking a psychiatrist to perform brain surgery because they know something about how the brain works.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 22, 2011 04:09 pm


    What is wrong with saying file a provisional patent application first? What is wrong with the advice that it is not necessary in the first instance to spend the time or money on a nonprovisional patent application?

    I haven’t looked at what he is offering, and I am not going to comment on what services and products are offered by others, but I finding it interesting that you would take issue with something that is objectively correct.

    There is nothing wrong with a provisional patent application and smart, quick, effective provisional patent applications can and are an important part of a meaningful protection strategy as an inventor or small business proceeds from initial conception to actual reduction to practice. If you have enough in your notebook to prevail in an interference, or if you have enough in your notebook to legitimately swear behind with a 131 affidavit, then you have enough for a provisional patent application that will provide priority. You either know or should know that to be perfection and unassailably true.


  • [Avatar for Patent Idea]
    Patent Idea
    March 22, 2011 11:28 am

    Extremely well written and well supported arguments. This certainly seems like a step in the wrong direction.


  • [Avatar for step back]
    step back
    March 22, 2011 04:28 am

    Well Gene?

    What have you got yo say to comment number 12?
    I’d have to be totally drunk on the Kool-Aid to come up with something like that.
    Have you checked out his 1040EZ Do It Yourself (DIY) Provisional Page? Make sure to have the sound turned on for extra giggles (or should that be sobs?):

    [EDITOR’S NOTE: URL deleted].

    There is you Brave New FTF World.

    What’s next, ads on the sides of buses? File fast, first, and ask questions later?

  • [Avatar for Dave Korpi]
    Dave Korpi
    March 21, 2011 07:48 pm

    So, the lesson here is file a provisional TODAY to get your early fining date! Why spend all the time filing the non provisional if you are concerned about the filing date? Use the provisional as a defensive move! [EDITOR’S NOTE: advertisement deleted].

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 21, 2011 06:22 pm


    You conclude, but never prove, that first to file will be bad for the inventor community. Like everyone else you are basing your arguments on belief and not on fact.

    The argument was that the little guy could prevail in a first to invent system, and the facts demonstrate that is not true.

    Then the argument morphed into 131 affidavits, and we know that they are rarely if ever filed for a whole host of reasons, so that is a red herring as well.

    Now the argument is there will be a mad dash to the Patent Office and there will be all kinds of new disclosures. Surprising that no one ever recognizes that just such a thing is precisely what the entire patent system is intended to foster, and indeed the Constitutional purpose.

    Patent law encourage engineering around and patent law encourages early disclosure. So it is undeniable that we will get more innovation, it will march ever forward as more and more people seek to patent their inventions, which you regard as terrible. I wonder what the founding fathers might have thought about that?

    You and everyone else also want to live in the fictitious world where large corporations can and do change policies and procedures at the drop of a dime, always engaging in activities directly and properly aimed at world domination, never making mistakes or acting in counter-productive ways. For crying out loud grow up! Large corporations are like air craft carriers. They can’t, don’t and won’t turn on a dime. A change from first to invent to first to file won’t matter (as the facts demonstrate) and it will benefit those who are nimble enough to take the requirements into account. We all know (or should know) that large companies will lose miserably.


  • [Avatar for Gene Quinn]
    Gene Quinn
    March 21, 2011 06:15 pm

    Robert K S-

    Do all the semantic dissecting you want. It costs on average $600,000 to partake in an interference. No truly small business or independent inventor can afford that.

    Ignore reality if you want, but the overwhelming percentage of applications never have a 131 affidavit filed in them, so pretending that is some huge justification for keeping first to invent is pure flight of fancy.

    In order to legitimately file a 131 affidavit you need the same proof to prevail as you would in an interference and inventors and truly small businesses, those who are supposed to benefit from first to file, never have the required proof.

    Pretend all you like, but at the end of the day you are fooling yourself and being believed by those who want to ignore the facts and embrace a feel good legal standard.


  • [Avatar for step back]
    step back
    March 21, 2011 04:15 pm


    Bottom line is that First To File (FTF) encourages a mad dash to the steps of the Patent Office.
    No leeway is given to the inventor who was first to conceive but spent more time and diligence in perfecting the invention so as to make it better.

    FTF is good for you and me (patent attorneys) because inventors will have to file more often and more quickly. More business for us, more money for us.

    But it is a bad result for the inventor community and for the general public in the long run.

    Someone has just flipped the speed dial to MAX on the patent filing treadmill. Inventors are all going to have run faster, file faster, and more often. It’s going to produce a negative outcome in the long run as they get exhausted from that fast paced race to nowhere. Then inventing will decrease and filings will decrease in the long run. All due to a short sighted lust for more gold now.

  • [Avatar for Robert K S]
    Robert K S
    March 21, 2011 03:57 pm

    Gene, I’m going to take the “$600,000” paragraph and dissect it backwards. You conclude:

    “So the first to invent system is really hardly inventor friendly, or even small business friendly.”

    For that to be true, everything that you said about interferences must be true, AND interferences must be the most significant aspect of first-to-file. But the latter assumption is the same mistake you keep making in these arguments. First-to-file isn’t all about interferences. It’s also about the grace period and antedating affidavits.

    “[T]o have any realistic chance to prevail [in the first-to-invent system] you will need competent legal representation and that on average will run you about $600,000.”

    You don’t dispute that it doesn’t cost that much to antedate–in fact it doesn’t even cost a cent if you do it pro se–so your statement isn’t correct. Also, I’m not quite sure what your level of honesty is in continuing to bat around this $600,000 figure as if it is gospel now just because Senator Kyl quoted that number from your blog. It seems to be an inordinately high number from 2005. “The all-inclusive cost for each party in interference was $600,000 in 2005, $302,000 in 2003, and was $201,000 in 2001.” What was it in 2007, 2008, 2009, 2010? This number is probably all over the map. And I’d bet that for many cases it is under $10,000. I’d be curious in seeing what the cost figures are for pro se and in-house interferences. These hundreds-of-thousands-of-dollars figures are probably from the law firms that put a half-dozen associates on “document review” for a month gobbling up billable hours in order to milk their biggest-money clients.

    “If you have the required evidence and the facts are on your side you might prevail.”

    That is under the system we have today. Under the system you advocate for, you can have the required evidence and the facts on your side and still be SOL.

    “It is better to say that the U.S. is a kinda-sorta a first to invent system.”

    Whatever you call it, it’s better than first to file.

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 21, 2011 02:42 pm

    Robert K S-

    Perhaps you should read the article. Your comment is what is malarky. Nowhere did I say or even suggest that it costs $600,000 to file a 131 affidavit. It does, however, cost on average $600,000 in attorneys fees to fight in an Interference. Those are the facts, not malarky. That was the conclusion of a study by the AIPLA.

    Additionally, you call this and my other articles propaganda and YOU are saying that patent reform will get rid of inventors’ rights? That is laugh out loud funny! Talk about ridiculously over stating your case. And people wonder why those challenging patent reform are not taken seriously. First, you blatantly misrepresent what I said. Second, you come out with the absurd (and factually untrue) statement that inventors rights will be lost as if inventors will have no rights whatsoever.



  • [Avatar for Ron Hilton]
    Ron Hilton
    March 21, 2011 10:47 am

    As an inventor, entreprenuer, and practicing patent agent specializing in provisional patent applications, what I do, and advise my clients to do, is to file before disclosing the invention to anyone who cannot be trusted 100% to keep it confidential. As a practical matter, it would be unwise to make such a disclosure during the formative phase of the invention anyway. You don’t want to present a half-baked idea to prospective investors, licensees, customers, partners, etc., unless you have some history with them that they can be trusted as confidential “sounding boards” for you ideas. To the extent that “first to invent” encourages inventors to be sloppy and careless with their disclosure during the initial stages of conception, I think they would be much better off under the discipline and clarity that a “first inventor to file” system would provide. However, the currently proposed law is suboptimal in the way that it unnecessarily weakens the definition of the traditional grace period. It would be good to see that fixed before it gets enacted by Congress.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    March 21, 2011 10:36 am

    A Rule 131 “Affidavit or declaration of prior invention” clearly says that it cannot be used to swear behind a prior application of another claiming the same patentable invention as [broadly] defined in Section 41.203(a) [read both Rules!] [That situation requires an interference.] Nor can a Rule 131 declaration be validly used if that prior application was published more than a year before the subject application, because that makes it a statutory bar. As this article notes, a mere naked Rule 131 declaration allegation of prior conception without also providing evidence of continuous dilligence is fatally legally defective, on his face, even if fraudulently slipped by some clueless young PTO examiner to obtain a worthless invalid patent. Unfortuately too many of the people most vorciferous about “first to invent” simply do not understand what that really means in law [35 USC 102(g) and the case law thereon], or in PTO practice, and missrepresent it as a valid excused for delayed application filings. Some of the people taking a cavalier attitute towards missuse of inadeqate and/or improper Rule 131 declarations [declarations have the same legal risks as affidavit oaths] are even risking inequitable conduct and malpractice accusations.
    [P.S. This is not a comment on the S.23 grace period, which is a legitimate issue for discussion.]

  • [Avatar for New Here]
    New Here
    March 21, 2011 09:42 am

    “This sort of gives you an idea of why first-to-file (FTF) is a lousy idea and why the first-to-invent (FTI) system that the USA has harmonized its own citizens around for over 200 years is the wiser approach.”

    @step back

    I will start with a guess that first-to-invent is the wiser because a real world inventor has all the time needed to perfect a messy, dirty business, idea ?

    Then it seems that if this real world inventor has no equal working on the same, messy, dirty business, idea, then the question why does such an inventor feel the need to file anything early ?

    First-to-invent it seems would mean that something is complete, I have never heard of anyone selling parts of a house being built — over time with the claim it is a house. No matter how messy, dirty business it is, if an inventor is filing incomplete parts of an idea that needs continued work is an idea that no one could find or be woking on. For another inventor, trying to home-in on the idea is going to be kinda like trying to make a picture from incomplete sets of 100 different jigsaw puzzles. Again, why does such an inventor feel the need to file anything early from fear of another. What could be claimed by one or the other ?

    First-to-file seems, is what most inventors are doing already, filing first their ideas. Just with first-to-file an inventor is going to have something “complete” down on paper, going through the Patent Office. For small inventors this is going to be a better approach because their ideas are often complete. It is my experience with small businesses that many know what they need / want, because they work in those ideas and have a working knowledge of them to start with.

  • [Avatar for step back]
    step back
    March 21, 2011 03:20 am

    So here’s the story; or as Nassim Taleb, author of The Black Swan might call it, the pulled out from our own rectum, fabricated narrative:

    Two inventors get together.
    They stare deeply into each other’s dreamy blue eyes.
    And then, at an orgasmic moment, they simultaneously shriek, “Eureka, it is crystallized!”

    What is the “it” that has crystallized?, you ask.

    Well that should be obvious and not worthy even of the asking. “The Invention” is of course the thing that has taken final form and rooted itself in their brains at that beautiful orgasmic moment, the “moment of conception” as the black robed judges might proclaim from their ivory tower benches.

    All very pretty. But all pure BS. Because that is not the way inventing takes place in the real world.

    Inventing is messy, dirty business; sort of like giving natural birth to a premature baby. No one knows for sure if “the invention” is viable or what it will look like when it finally gets all growed up. It’s an ongoing and constantly evolving process. Even the parents, the inventors of the premie baby, don’t quite know what it is or what it will look like if and when it grows and matures into a commercially viable toddler.

    So when to file?

    For the attorney/agent who is clueless about the real world inventing process, the simple minded and revenue maximizing answer is of course, as soon as the first labor pains begin and many times thereafter.

    For the inventor who has to pay the repeat doctor bills, there is something a little fishy and sleazy about that answer. Who can afford to file and file again every few weeks (or every few hours if you really want to go crazy with the idea)?

    This sort of gives you an idea of why first-to-file (FTF) is a lousy idea and why the first-to-invent (FTI) system that the USA has harmonized its own citizens around for over 200 years is the wiser approach.

    But then again, as King Solomon asked just before he sliced the baby in half, what’s love got to do with it, got to do with it? Isn’t it merely a second grade emotion?

  • [Avatar for Robert K S]
    Robert K S
    March 20, 2011 10:36 pm

    This post is propaganda. That $600,000 figure is malarky. It doesn’t cost that much to file a competent swear-behind declaration, especially if you have the evidence of conception and diligence on-hand and ready to go. If you’re smart and you want to do it pro se, it’s possible to do it for nothing (there’s not even a filing fee).

    This patent reform bill is just about getting rid of those pesky inventors’ rights, and Gene, I’m still trying to figure out why you’re so hotly going along with it. What’s really going on here?

  • [Avatar for New Here]
    New Here
    March 20, 2011 03:45 pm


    The importance to file early, seems to me applies to first-to-invent as well first-to-file equally. First-to-invent shares the problem as I believe you’ve mentioned, that is many are working on ideas that some just may be what *you* are working on as well — with untold dates involved. Having many players (inventors), makes for complex questions, with those untold dates as basis of all arguments over claims.

    When the first-to-invent question is raised, and to obtain an answer to the question “who invented first”, would be based upon arguments of dates anyway as it should be. Filing early, but I for one are not sure if dates alone are enough to “know” for sure, to base the grant of a patent on with so many players (inventors known and unknown with dates), all with showing of hands on the table when claims over ideas ride on such a question.

    First-to-invent shares the problem with first-to-file, those that will file first will soon find that being first isn’t enough — unless some grand patent base is formed in agreement with the patent offices around the world. A complex question is raised, “who filed first”, I believe it is clear that an answer is not going to be easy.

    First-to-file isn’t about early dates, it is about what is going through the patent office. In reviews of patents ( if bill becomes law) , that review will offer more time for a complete answer with more information, not just dates and/or claims.