First to file patent criterion may be a disincentive to making an invention public

By Glen Wallace

The following is my response to an article in the Star Tribune about the new first-to-file provision in the patent application process:

Kalinsky states regarding the new first-to-file provision: "For the garage inventor, it changes little. He or she does what they’ve always done. You come up with an idea, you raise funds and you file for a patent."

What if the garage inventor has a hard time raising the funds for the application process but still wants to utilize his invention for a small home-based business?  Could some big corporation then reverse engineer or just copy the invention utilized in the garage inventors product?  Could the big corporation that does have the funds and expertise to file and acquire a patent on the garage inventors invention, then turn around and file a patent based on what they copied and then demand compensation from the actual inventor, the little guy, for patent infringement?  I'm not an attorney, but if the criterion is really first to file, then I don't see any reason why a corporation wouldn't be allowed within the law to sue the actual inventor in such a scenario as I describe above.  While the costs for provisional filing may be low for a large company, those costs could be considerable for the garage inventor or home based small business.  Therefore this new act just gives further advantage to those already with the bulk of wealth and further disadvantage to those already without.  I thought patent protection exists to incentivize the creation of inventions that help society.  While I question if patents have ever has been a creative incentive, I would say this first to file development if anything is a disincentive to making a beneficial invention public because unless the inventor is willing to wade through the lengthy and costly patent application process, they may prefer to keep their invention secret, depriving society of its benefits, in order to prevent some wealthier interest from stealing the idea and turning around and suing the true inventor in such a scenario I had described above.

The so-called America Invents Act that created this "first to file" rule has about as an appropriate title as the Patriot Act.  A better name would be 'America Files Act' or 'America (Patent) Trolls Act.'   This is an act that puts not inventions first put the legal machinations surrounding inventions first.  I can envision scenarios whereby individuals might come up with a new process or invention that unbeknownst to them have some value as patentable ideas.  Those individuals however, out of the goodness of their hearts, in an effort to help others, could publish a youtube video of their ideas that the inventors believe might assist others in making their lives better in some way by solving some problem they're having.  But at the same time there could be some patent troll firms searching through youtube videos with the sole goal of finding such patentable ideas made public that have not yet been filed yet with the US Patent Office.  The troll firm then does the filling, thereby being the first to file and so once the patent is granted the patent troll firm can now extort money out of the real inventors because they are infringing on first-to-file patent troll firm.

Edit to add:  It recently occurred to me a possible legal conflict regarding the first-to-file rule.  I believe I read that a copyright automatically belongs to an author even without the author ever registering their work with any U.S. government office.  So, when I think of copyrights and authors I think of writers.  But then I wondered -- why wouldn't the writing of programming code be considered authoring something that would then automatically belong to either the author of the code or the authors employer?  Well, I also understand that a great number of patents have been issued for and profited from computer processes.  Now I'm not sure if it is the process that is patented or the code but even if it is the process for which the patent is granted, it seems inevitable that for any specific computer process, wouldn't much of the wording have to stay the same in the code that was used to first create the process?  And if someone then copied that code in order to be the first to file a patent, wouldn't they then be violating the copyrights of the original author of that code.  Would a loophole exist if the first to file used a different programming language from the original code to duplicate the process?  Or would the same principles that protect a translated common language written work also apply to a 'translated' work of computer software code?  I'm assuming that even though a great deal of work is done in any ordinary common language translation that the copyright still belongs to the original author that wrote the piece in the first language it was written in.  And if we allow programming code to be legally considered works that were authored, where first to create is granted the exclusive right to copy, then to what extent could the same principle that would grant such an allowance also be generalized to include material constructions that serve some purpose be considered as created or authored and be thus granted the same copyrights to the author that created the work.  Doesn't the copyright principle that applies to authors of ordinary language works also apply to artists, including sculptors?  Now, supposing some inventor decides to label his or her work as a work of art as, say, for instance, a moving sculpture?  Does the creator of a work get to decide whether something is legally considered a work of art that is copyrighted or purely utilitarian device that is instead patentable?  If it is the author or creator that gets to decide then wouldn't they be able to prevent some patent troll firm from copying someone else's work in an effort to be first to file.  Could the author or creator then just tell the patent troll firm that the invention is really a work of art and that in copying the invention the patent troll has thereby violated the copyrights belonging to the original author/creator?  I think these are all good questions, but anyone reading this should keep in mind the fact that I'm no lawyer and I'm really unsure how such ideas as I have presented here would play out in any real court presided over by a real human judge.