First Inventor to File (Or Disclose)

The United States of America has, as of March 16, 2013, abandoned the "first to invent" law and joined other countries in "first to file" laws where the first party to file a patent application on a new invention will generally be the one that gets the patent. While that at first seems pretty scary in that you might think that someone merely hearing about an invention could file and get valid patent rights that is generally not the case.

In all countries you would likely be interested in doing business in, USA included, the "first to file" party still must either be the inventor themselves or a party, such as an employer, that would have rights to the inventor's invention. The USA essentially requires that the inventor or inventors be identified on the patent application while many foreign countries do not require that the inventor(s) be identified, merely the filer.

But wait, the USA "first to file" law has some exceptions that most other countries don't have. The USA still allows a one year grace period after public disclosure and before filing whereas most countries have an "absolute novelty" requirement and bar getting a patent on anything that was publicly disclosed before the patent application filing date. The table below shows the USA's basic rules and the exceptions for prior art or prior filing.

Close inspection and a little thinking and you'll see that there are two ways to inexpensively be "first." One is to actually file your (thorough and enabling) provisional application ($65 for micro entities such as most independent, just starting, inventors). That provides you (if you truly are first) the rock solid filing date and also protects your rights to file applications in other countries. The second route is essentially free in that you make a verifiable, genuine, public enabling disclosure such that someone skilled in the art, without undue experimenting, could create your invention from your disclosure. That, of course, eliminates any filing in absolute novelty (most) countries. In either case, however, you have now put yourself under a 1 year deadline, in the provisional application case, to get the full application in (or lose your priority date) and in the public disclosure case to get either a provisional or full USA patent application filed. In the public disclosure scenario, should it ever go to court, you'll need to be sure your public disclosure really is public (i.e., it can't really be secret with sham public trappings) and it really is enabling (likely it won't be via an offer for sale of an unspecified "solution" but it might be satisfied by the physical sale of a readily reverse engineered product).

The "first to file" rule still means you need to be keeping good, witnessed, records of your (and your co-inventors if any) invention conception and progress as discussed in the "Patent" (www.idearights.com/patent.asp) and "Non-Disclosure" (www.idearights.com/nondisc.asp) sections of this information. If your records clearly show that you presented the invention info to someone (or their known cohorts) who later was "first to file" in some country and they have no believable records showing their development prior to your showing them your invention then likely any patent they might get by being "first to file" will be invalid and your application will go though since their filing was "subject matter from you." The catch is that for you to get any patent rights you still must get your USA patent application filed within one year after either any public disclosure or their patent issue, whichever is earlier.

While the old "first to invent" law used to result in, to the financial delight of patent attorneys, disputes called interferences over who should have the patent rights the new "first to file" law will very likely, to the financial delight of patent attorneys, lead to disputes called derivation proceedings over whether the filer is (or represents) "the inventor" or not. In the old "first to invent" situation disputes mainly centered around who had the first solid, verifiable record of the earliest date of invention and, amazingly enough, about 95% of the time it was the first inventor to file. The definiteness of the "filing date" in the new law gets rid of that costly exercise of nailing down the dates of "invention" or "reduction to practice" for each of the disputing parties. Under the new "first to file" law the disputed issues will become 1) whether or not the "first to file" really got their "invention" idea from the second to file or came up with it independently or 2) whether a disclosure before "another's" filing date was public and included the subject matter under dispute. So again verifiable records will be a key to who wins and again I'll bet that the long run statistics will show that first to file wins about 95% of the time (probably after a few false filers get their clocks thoroughly, and rightly, cleaned). (And just on the side, I'll bet that the attorneys come out at least even in spite of the promoted savings intent of the revised law.)

Verifiable Records

Verifiable records mean one of only 3 things: 1) records that are understood and witnessed by unbiased third parties that can and will testify about them in court, 2) contemporaneously prepared (or collected) business records that are believable and that you (or their preparers) can believably swear by, and, 3) records that are held by an unimpeachable source (alas, this latter used to be possible via the USPTO but is no more---and there is no known viable substitute for them). Specifically, neither a sealed letter mailed to oneself or even to a trusted friend/acquaintance (whether registered or certified or not) nor a notarized paper are acceptable records because they fail the above criteria.

An unimpeachable source is whatever the court deems it to be but generally it must be someone (or multiple someones) that are competent to understand your records and invention and who absolutely do not stand to gain from your invention. Obviously spouses and boy or girlfriends are unacceptable witnesses as is your 94 year old uncle who happens to be a judge and who will likely be dead 5 or 10 or more years from now when you need your witnesses. Let me completely dispatch any mythical mis-beliefs you might have about notarization and letters to oneself.

Sealed Envelopes (NOT!)

Wait a minute, doesn't that "first to file" rule now make the whole idea of "proof of invention date" totally irrelevant? Unfortunately, no. And that in spite of what the smart folks that pushed getting rid of interferences so hard said. "Proof of invention," in the event of a derivation proceeding dispute, is still a requirement and thus dates and possible (provable or just highly probable -- whatever a judge or jury will believe) chains of idea transfer will remain critical pieces of evidence. So I'd bet my last dollar that somewhere there will still be people who (mis)believe that a sealed envelope will provide some kind of proof. In reality, a sealed envelope won't prove anything (and never has).

If you want to you can take 5 envelopes TODAY and fold and place 3 blank sheets of paper in each one then tuck their flaps in, do not seal, apply postage, address and mail them to yourself. After they arrive you will have 5 envelopes with today's mailing date (assuming legible postal cancellation dates on all of them!) that you can seal anything you want in--and which will get you laughed right out of court should you ever try to use them to "prove" some date. Even if you go the route of registered or certified mail and the postal clerk stamps all your sealed envelopes and all their seams you'll still most likely get laughed out of court assuming you get your still sealed envelope there.

What normally happens is that the discovery process will require that your sealed envelope be opened so that copies of all material can be provided to the other party. If the opening of the envelope is not carefully documented and witnessed and its contents noted then it would be easy for the opponent to claim that you could have substituted the presented material for what, if anything, was actually in the envelope. Worse still though is that the court will believe that if you are "sophisticated" enough to choose to beat the law and make up your own rules for proof then you are probably sophisticated enough to know how to make your system show whatever "proof" you want.

Under "first to invent" the sealed envelope trick was often called "the poor man's patent" but the reality is it was always the stupid man's nothing. The so called "poor man's patent" was NEVER held by any court to give any rights whatsoever to anyone. Under "first to file" a sealed envelope will NEVER prove you are the idea originator either. You will NOT be the first to be successful playing that game, I guarantee it!

...And Notaries (NOT!)

As far as notarization goes all notarization means is that, on the date noted by the notary, a party that all evidence led the notary to believe was you signed the page they have affixed their seal to and witnessed. In other words, at best their notarization attests to the date and signature. Should you, 5 or 10 or perhaps 20 years from now, even be able to find the notary to have them appear as a witness they would not be able to testify that they understood what was on that paper or even exactly what was on the paper. Your opponent will be able to suggest that critical matter was added well after the paper was notarized.

So how do you create verifiable records? First and foremost you start an inventor's notebook and maintain it scrupulously. The details are discussed on the "Inventor's Notebook" (www.idearights.com/invtntbk.asp) page. And that's IT, there is no alternative. The USPTO used to have a Disclosure Document Program but it is no more, the patent practitioners finally got it killed off effective February 1, 2007. See Goodbye DD for more on this subject.

Diligent Pursuit, Abandonment, Etc.

Proponents of the new "first to file" patent law claim that diligent pursuit, abandonment, concealment, suppression, conception, and even reduction to practice have gone away due to the change. They've been removed from the text of the applicable "first to file" section of the law because Congress believed they only applied to interferences. But have they gone away? Will those concepts still bite your ass if you are the true inventor and someone subsequently, based on a disclosure you made (directly or indirectly) to them, is "first to file" on your invention, or just improvements thereto, more than some x years after that disclosure? Where x may be as little as 1 or 2 and for almost certain is less than 5, the maximum number of years courts will allow for non-disclosure agreements (excluding trade secrets).

Imagine this scenario: you come up with a brilliant invention that is truly worth protecting, under the promise of secrecy you disclose it to a buddy or two or under an NDA to Company Z, 3 years later you've done absolutely nothing with the invention but a buddy or Company Z has come up with some great enhancements and they take off building and selling your invention plus their improvements and file a patent application. You get wind of their public disclosure and before one year after their public disclosure (or their patent issues if there's no earlier disclosure) you submit your own application for the underlying invention.

The first to file law appears to be that as long as you beat that one grace year patent application filing deadline resulting from their disclosure, and no matter how long after your secret disclosure or NDA, you're still entitled to the patent for the underlying invention. Miss that one year deadline and you cannot get a patent because the grace year expired and, of course, you're already blocked from patents in absolute novelty countries. Suppose you do miss the grace year filing deadline, can you attempt to effectively claim the invention without a patent and sue that buddy or company for royalties? Of course you can. Will you win? I'll bet my $100 against you because regardless of what the courts might call it (abandonment, lack of diligent pursuit, concealment, suppression), it will be YOU that is violating the intent of the USA Patent Laws which is that you be granted---for YOUR patent application disclosure (which you did NOT do)---a limited time monopoly. Worse still, your suit will be outside of the court system that normally handles (and has the expertise for) patent matters so it's likely there will be a lot of murky decisions for many years.

Will your first to file buddy or Company Z be able to claim (not just their improvements, but) your invention? Technically no. What exactly is it worth to you to take it to court if they do claim your invention and (if I'm right) the odds are against your getting any royalties from which to pay your attorney?

In other words, if you're prepared to disclose your invention in secret to your buddies or under an NDA to Company Z, you'd better be willing, able, and ACTIVE in getting your patent application filed. Keep that "first to file" line sharp and clean in your favor.

It's Really First Inventor to File or Disclose PLUS

So there you have it, the real "rules" of "first to file" clearly show that the filer must either be the inventor or representing the inventor and the filer cannot be filing on an invention disclosed by you or your joint inventors whether the filer received the disclosed information directly or indirectly.

If you really are committed to following through with this invention idea you think you are the first to have just what ought you to do? First I recommend you read through the suggested idea-to-market steps presented starting at www.willitsell.com/goshopping.asp (another web site of mine). There you will discover (should have discovered?) how to go about determining if you truly are first to invent and have a high chance at having a profitably marketable product. Less than 2% of all patents make anyone any money and the odds are still lower that you are actually the first to solve a particular problem.

Inventor's Notebook

The best method of keeping records is to start an inventor's notebook as described in the "Inventor's Notebook" section. The inventor's notebook has the advantage of being cheap (just the cost of a permanently bound notebook with consecutively numbered pages) and providing the best (if maintained AND witnessed properly) documentation. But it also has some big disadvantages. First it is onerous to maintain it daily, even hourly when appropriate and it is getting to be more and more onerous as we use computers to write and draw. Second is that you must disclose your invention to (trusted, you hope) witnesses who MUST keep it secret, who must understand it (and have the credentials if appropriate to prove it), who must be unbiased by potential gain from the invention, and who must be available to you as a witness in 5, 10, even 20 years if necessary. It can be very embarrassing to drag your notebook to someone every week or two to get them to read, understand, and witness your notebook. What's worse it can be almost impossible for you to keep them from suggesting "improvements" and thereby becoming biased (and therefore likely useless) witnesses due to co-inventor (and possible personal gain) issues. Pay attention, YOU ALSO NEED TO INCLUDE WHO YOU DISCLOSED TO, WHEN AND WHAT.

Provisional Application for Patent

The only alternative method to an inventor's notebook, and not recommendable in my opinion (but patent practitioners LOVE it, see gbdd.asp), is to draw up a thorough and enabling Provisional Application for Patent (PAP) as quickly as you can and file it at the USPTO with the $65 (subject to change) micro entity or other appropriate provisional filing fee. Patent attorneys and agents often recommend this method--and some even recommend you pay them about half their regular fee to prepare the PAP for you. The major problems with this method are two. First, you can waste a lot of $65 fees on "inventions" that you later discover to be old art already done before or that will not be commercializable for one reason or another. And second, the 9, or at most 10, months before you absolutely must commit to preparation of the full application (particularly when paying a practitioner) or face losing the priority date the PAP holds for you, will vanish before you will have accomplished much and really know for certain that a full patent application will pay off. And just incidentally, if you plan to file foreign patent applications, either they or a delaying PCT application must also be filed within 12 months of your PAP filing in order for them to benefit from the priority date established by the PAP. The practitioners LOVE to put the screws to you at 9 or 10 months by suggesting dire consequences of missing the 12 month deadline. Usually the only "dire" consequence is the practitioner fails to collect a fat $3,000 - 10,000 in additional fees for getting you a totally worthless patent.

Additionally the "protection" you feel from the right to use "patent pending," the "safety" of being able to disclose your invention without losing any USA or foreign filing rights, and the (believed) completeness of the PAP will very likely lull you into doing things, such as public disclosure, that will make it imperative that you do commit to paying for a full application in 10 months or risk substantial loss of filing rights in the USA and abroad. Legally, filing a PAP first is safest, but business wise the odds of your wasting your money on the PAP and then the full application are very, very, very (did I mention very yet?) high.

Of course, you can always develop the philosophical attitude that you'll work on your invention in secret and take timely steps to file a thorough and enabling application when the time comes and then, if it turns out someone else has been "first to file," you'll just say "that's life" and move on to your next invention. In case you're wondering, most successful independent inventors adopt this approach--or don't even bother with patents at all, they just get their products on the market and selling then move on whenever the competition gets too rough. Yep, really--it's not patents that make profits, it's profitable sales.