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Goodbye First to Invent

WARNING: This page is out of date but you are welcome to read it and see how things were. As of March 16, 2013 the USA has adopted a "first inventor to file" system with a one year grace period. This page has been replaced with the "First to File (Or Disclose)" (www.idearights.com/firsttofile.htm). Don't get too down, there was little loss with the switch to "first to file."

First to Invent

The United States of America is the only country in the world that has a "first to invent" law. All other countries use "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 in non-US countries that is generally not the case.

In all countries you would likely be interested in doing business in 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 US 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.

The "first to file" rule is one reason you need to pay attention to 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.htm) and "Non-Disclosure" (www.idearights.com/nondisc.htm) 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.

But being first to invent is not enough in even the USA. In any dispute (called an interference) over who should have the rights to the patent several factors come into play. The first is solid, verifiable records of the date of invention. Another is diligent pursuit. Others are reduction to practice, non-abandonment, and fair play. Each of these will be addressed in the following paragraphs.

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. We will resume talking about acceptable records after we dispatch any mythical mis-beliefs you might have about notarization and letters to oneself.

Sealed Envelopes (NOT!)

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 pre-trial 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 "patenting" then you are probably sophisticated enough to know how to beat your own system too.

The sealed envelope trick is often called "the poor man's patent" but the reality is it's the stupid man's nothing. The so called "poor mans patent" has NEVER been held by any court to give any rights whatsoever to anyone. 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.htm) 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. WARNING: As of this writing, April 22, 2007, the USPTO still has the program and forms listed at their web site however, if you send in a DD it will be promptly returned with your check. See Goodbye DD for more on this subject.

Diligent Pursuit

Failure at diligent pursuit of your invention can allow someone who comes up with the same approximate invention after you did but who does diligently pursue it and files an application before you do to be entitled to the patent. First let me make clear, "diligent pursuit" has absolutely no relationship to the concept of "due diligence." Due diligence is an inve-S-ting term and means that the party doing due diligence is studying the viability of an investment in order to properly decide if such an investment is appropriate and/or acceptable to them. An inve-N-tor must diligently pursue their invention from date of conception until (at least) they have "reduced it to practice" (and often beyond if they are constantly thinking up improvements). An inve-S-tor studying your invention as an investment who hears you use "due diligence" when you mean "diligent pursuit" will not be impressed, will wonder what else you've gotten wrong, and likely won't invest in your invention.

It is only by reduction to practice that you actually have completed the "first to invent" criteria (but keep reading). You can reduce an invention to practice in one of 2 basic ways. The first is to actually reduce it to practice by building one, or by successfully executing the process for a method invention. Actual reduction to practice is only valid if you have witnesses and/or strong documentation that a court will accept as proof of the date of reduction to practice. The second way to reduce an invention to practice is to "constructively" reduce it to practice via filing a patent application that is sufficiently descriptive that one of ordinary skill in the art would be enabled to make your invention without undue experimentation.

The law construes an enabling patent application, which can be either a Provisional Application for Patent or a formal Application for Patent, to be sufficient "reduction to practice" and to complete the "first to invent" criteria. But wait, there's more! And this is where "diligent pursuit" becomes absolutely critical. Even if you are not actually first to "reduce to practice" the invention but were first to conceive it and continually diligently pursued the invention--either through actual construction or through diligent preparation and, when completed, prompt filing of a patent application--the law still will allow you the rights to the patent--after you've won the interference or court case declaring you "first to invent."

Alas, "diligent pursuit" generally means VERY diligent, and well documented, pursuit. The courts ultimately decide whether you have been diligent or not and in the past they have found that as little as a week going by without your working on reducing the invention to practice tips the scales in favor of someone who was second to conceive but first to achieve reduction to practice. The only way to prove your diligent pursuit is with well documented, usually via an inventor's notebook, and timely witnessed (by unimpeachable sources) records.

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.

Non-Abandonment

Well, what if you were first to conceive and actually reduce the invention to practice and you have absolutely impeccable records and rock solid witnesses who understand your invention and can testify without any doubt the date you achieved reduction to practice? Can you tuck your records away in a drawer and wait for someone to patent the invention or put it on the market then spring upon them demanding your "first to invent" rights? The answer is--"it depends." Can you pass the test of non-abandonment? Again, it is the courts that will decide exactly what abandonment means in your case.

If you don't monitor issued patents religiously and you miss the fact that one was issued to some second-to-inventor for your invention and you do not make your claim within 1 year of their patent issue date you will have lost virtually all chance at provoking an interference against them to assert your "first to invent" rights. Your circumstances would have to be really extenuating such as being in a coma from shortly after your reduction to practice till your discovery of their patent. Same thing would basically apply if they don't bother to patent but just publish an adequate, enabling disclosure of the invention or they have the invention on the market for more than a year before you discover it. But it gets worse!

Fair Play

What if you did discover the second-to-inventor's patent on the day it issued or her product on it's first day of sale? You would first have to file a patent application and make certain its claims read on both her invention/product and yours. The easiest way to do that is if she had her patent issued you just copy its claims that apply to your invention into your patent application--then bring it to the attention of the patent office and your patent attorney. After that about $50,000-$100,000 of discovery process occurs--which you pay for out of your own pocket. Then, if nobody backs off, it gets more complicated and expensive and goes before the Administrative Patent Judges and then if you--or your opponent--don't like the outcome there it gets even more expensive when you go to court. Does waiting to pounce with your "first to invent" claim still seem such a great idea? The odds are that you will lose not only the case but also all your expenses.

But even, let's say, you're willing to go through all that hassle and expense because you know you would have filed your patent application if you'd ever had the money--you didn't abandon the invention, it was just on "temporary" hold. Shouldn't you still get to assert your rights? The issue will become one of "fair play" which may or may not ever be mentioned in your case. Is it fair that you waited for someone else to have success before you pounced? Is it fair to the second-to-inventor to have their rights taken away after they did everything right and achieved success? What if you were the second-to-invent success and the true first to inventor had lain in waiting and pounced on you?

In general the more opportunity you had to act and didn't the higher the odds that you will be considered to have abandoned the invention--no mater what your intentions. If it has been 5 years and you've had more than $10,000 available for a couple of years the odds of being considered to have abandoned the invention are pretty high. If you wrote a strategy paper and got it dated and witnessed that said your plan was not to abandon your invention but to explicitly wait and pounce when someone else came out with the invention/product then you'll certainly lose due to a lack of "fair play" regardless of what the actual doctrine cited against you is.

It's Really First PLUS

So there you have it, the real "rules" of "first to invent" which clearly show that merely being first is not sufficient regardless of how solid your documentation is.

So, if you really are committed to following through with this invention idea you think you are the first to have just how do you go about documenting it to ensure your first to invent rights? I'll get to that in just a moment but 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.

But, just in case you are, here is how to get your first to invent documentation in order.

Inventor's Notebook

The best method 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, AT THE VERY LEAST, YOU NEED GOOD DOCUMENTATION FOR TWO DATES, THE DATE OF CONCEPTION OF THE INVENTION (NOT NECESSARILY OF DISCOVERY OF THE PROBLEM THE INVENTION SOLVES) AND THE DATE OF ACTUAL REDUCTION TO PRACTICE. But then other things come into play such as diligent pursuit and abandonment as noted above.

Provisional Application for Patent

The only alternative method, and not recommendable in my opinion (but patent practitioners LOVE it, see gbdd.htm), 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 $100 (subject to change) 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 $100 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 US 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 US 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 a documentable 'first to invent' claim that trumps your documentation, 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.

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