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.  

Patents as an Invention Impediment

Has the existence of patent protection become more of an impediment to creativity and innovation than an incentive?  The impediments that patents create include the writing of the application, the filing costs, researching of infringement possibilities and the defense against infringement charges or prosecution of others infringing on ones own patents.   Anyone who has gone through the whole patent creation process knows that the above impediments are considerable.  As a result, one wonders how much brain power has either been spent on dealing with the impediments or been discouraged by them.   I believe that brain power being spent dealing with patents is brain power being diverted from the constructive activity of inventing and towards the nonconstructive legal activities involved in the patent creation and maintenance process.  It may be claimed that patent protection is necessary in order to justify the expenses inherent in the invention processes that could only be recouped if the invention as intellectual property is protected from being used by competitors.   To some extent I think those claims are exaggerated insofar as it is not so easy both for a competitor to learn how to use the new invention and also to cover the costs of the equipment and tools needed to construct the new invention.  But if it is very easy to copy the invention then one might wonder why the patent protection is deserved since the ease of copying would tend to indicate a certain degree of obviousness.  But even if we take as a given that in the business world patent protection is needed to justify the invention costs, then perhaps we should forgo relying on the business world for the creation of new inventions to the extent that we as as society currently do.  Perhaps we could veer more towards having a government centered invention generation setup.  Many of the inventions that we currently take for  granted have there origins in the government whether it was originally created for peacetime purposes such as was done for the moonshot operation by NASA or the myriad of inventions created for military purposes.  The university system, while it currently does enjoy the income from the many patents it generates,  would still presumably be able to continue to create inventions as a function of academic research but not for the purpose of profits but for the purpose that colleges and universities were themselves originally created for; research and education.  I also think there is something singularly enjoyable about the creative process itself that lends itself to motivating individuals to engage in process of creation without the carrot of money being dangled before them.  I don't think one of the greatest inventors of all time, Nikola Tesla, was just speaking for himself when he stated about the inventing process:   "I do not think there is any thrill that can go through the human heart like that felt by the inventor as he sees some creation of the brain unfolding to success... Such emotions make a man forget food, sleep, friends, love, everything."  If what Mr Tesla says is generally true, then it seems all a society would need to do to foster invention would be to provide inventors with the tools and equipment they need to build their creations along with the food, water and shelter they would also need for basic sustenance and then merely let them alone to 'have at it' with their inventions.  If we take as a given that society both wants and needs these new inventions then maybe society would also be willing to provide the resources needed to build and foster invention creation centers or cottages.  And once the invention is complete to the inventors and societies satisfaction, it would then be released to the community to be freely used by individuals, businesses or other organizations as they see fit.  Imagine what a boon to the creative process it would be if we no longer had to be burdened by the tedium of searching for prior patents to determine if our own invention is infringing on someone else's patent and then if it does incorporate another patent, then having to negotiate an agreement with the other patent holder.  Or imagine not having to deal with patent trolls anymore that engage in the practice of sitting on patents just for the sole purpose of extorting money out of alleged infringers even though the trolls never intend to even ever manufacture a product based on those patents they are trying to 'protect.'  I think, from a perspective of an inventor, a world free from patents starts to appear more and more pleasant in terms of both the invention process itself and the ability of any given invention to have a positive impact on the world that it interacts with.