More On First-To-File from TWiL's Patent Panelists (#twil #twil28)

This Week in Law with Denise Howell
Originally uploaded by insidetwit

Adam Bagwell, Matt Buchanan, and Steve Nipper joined me on TWiL last week to talk about patent issues. Listener Jim Shaver emailed (denise@twit.tv) to ask,

What is the advantage of first to patent system? I understand how it is advantageous to lawyers, but how does it benefit people who invent things? Would it not have a chilling effect on innovation if I can only invent things if I have lawyers to help me patent inventions?

I ran Jim's good questions by the panelists, who, sharp as they are, had the following to say:

[Matt Buchanan] Supporters of a move to first to file believe that it will benefit all stakeholders because it will eliminate the timely and costly 'interference' procedure now in place for situations where the date of invention is at issue. Interestingly, most patent attorneys don't view first to file as advantageous to them because it will place pressure on them to file applications quickly once received from a client....the specter of malpractice looms here.

First to file makes no change on your ability to invent things and your decision regarding patent protection. If you have an invention, you can choose to pursue patent protection...or not. This is true under both first to invent and first to file.

I actually view the change to first to file as beneficial to small/independent inventors. Many in this group fear that large companies will be able to beat them to the patent office because they have sophisticated administrative systems in place. The reality, I think, is that companies are slow to act....and individual inventors may end up winning the race to the Office more than they think.

I hope this provides some useful insight. Feel free to contact me if you have any additional questions and/or comments.

[Steve Nipper]  I agree. I think most corporations ("on the advice of counsel") are less likely to be able to file quick and dirty provisional patent applications like an independent inventor will be...

[Update: Adam Bagwell] Keep in mind, though, there are also others who believe that switching to "First-to-File" system will result in patent applications that are prepared perhaps too quickly, in the race to the file with the PTO, as Matt notes in his comments. These quickly prepared applications may not be as thorough and complete in describing the invention as before - which could in turn lead to dimished protection for a client's invention and/or confusion on the part of public as to what the patent application intended to cover.

[Steve Nipper] I totally agree.

Thanks guys!  More thoughts on first-to-file, pro or con?  Comments are open.