[Fsfe-ie] US Congress to Overhaul Patent Law
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
> that a patent cannot be issued on their invention to someone else, as
> 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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