[Fsfe-ie] US Congress to Overhaul Patent Law

Alex Macfie alex at cgce.net
Thu Aug 25 05:02:46 CEST 2005

On Aug 25, 2005, at 02:14, Justin Mason wrote:

> I'm under the impression that first-to-file gives the ability for an
> applicant to be issued a patent, even if there is prior art, as long as
> the inventor of the prior art had not filed for a patent themselves.
> This is in contrast to first-to-invent, where an inventor can be 
> assured
> that a patent cannot be issued on their invention to someone else, as 
> long
> as they can prove that they invented it first.
> I may be wrong in that, though... ;)

You are wrong about first-to-file.

Prior Invention != Prior Art

If there is valid prior art (i.e. public knowledge about an 
innovation), then no-one can get a patent on it. That is as true in 
first-to-file as in first-to-invent.

Look upon first-to-file as "first-to-publish". Under first-to-file, 
prior publication *always* kills a patent. If an innovation is 
published (or brought to market, or become known in any other way), 
then there is prior art, and it cannot be subsequently patented, by 
anyone. This is true even if the patentee is the publisher. This 
creates a degree of legal certainty --- there can be no valid patents 
on what is currently known. Small patent-holding inventors don't like 
it because it means they must file patents before bringing inventions 
to market, because bringing it to market first would kill the patent.

Under first-to-invent, something that is published *can* be 
subsequently patented, if the patentee can prove prior "invention". 
This should be of concern to us, because it means something we read 
about in a computer science journal could later be patented by someone 
who claimed to have invented it before the publication. Apple could 
patent the iPod user interface if they can prove to have invented it 
some time before November 2001.

Prior use is something different again from either prior art or prior 
invention. In a patent system with prior use rights, then a third party 
who can prove to have used a patented invention it was patented, but 
did not publish the fact (so didn't create prior art), can continue to 
use it without violating the patent. However, this does not affect the 
validity of the patent with respect to anyone else's use of the 

Alex Macfie, Taipei, Taiwan R.O.C.
alex at cgce.net

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