Patent Reform & the Red Herring Patent Interference Argument

As the patent reform debate continues on the floor of the Senate, the expected battle against the so-called “first inventor to file” (FITF) began today. Senator Feinstein D-CA, broke from the party line and assailed the proposed FITF provision as inefficient, encouraging incomplete filings, and disadvantaging small inventors. Sen. Feinstein had an impressive understanding of these very complex issues.

In attempting to rebut Sen. Feinstein’s position, two arguments were consistently repeated. First, it was argued that the “rest of the world” had a first inventor to file system. Ironically, this argument was made by the same folks beating the “America is the greatest innovator in the world” drum.

The second argument, was more troubling to me as a practitioner. This argument, justified the change to a FITF system based upon extreme patent interference statistics. In my opinion, the patent interference argument is a complete red herring.

The statistic repeated by the opposition was that only 1 patent interference, of 3 million patent applications (over the past few years), resulted in a victorious small inventor (i.e., small entity). In other words, the FITF debate as to small inventors being harmed is much ado about nothing. (since it is only relevant to expensive interference disputes). This argument is incredibly misleading.

Ignored in this half baked statistic is the degree to which antedating evidence is raised in application prosecution, patent reexamination, and even patent litigation. There are hundreds, if not thousands of antedating declarations filed every year in ex parte patent prosecution, ex parte patent reexamination, and inter partes patent reexamination under 37 C.F.R. § 1.131 (swear behind). In addition to USPTO declaration practice, antedating evidence may also be presented in patent litigation. In the presentation of such evidence, the patentee seeks to prove that their invention was conceived, prior to the critical  date of the applied prior art, and diligently reduced to practice thereafter. If this evidentiary showing is satisfied, the reference is removed as prior art. This is how the first to invent system currently works.

Antedating evidence is especially crucial in post grant practice before the USPTO. This type of declaration evidence can mean the difference between winning and losing valuable patent rights. (see past discussion here and here). It seems unfair that Congress is seeking to expand the ability to challenge patents via new post grant proceedings while at the same time removing a very powerful defense for patentees.

Antedating is very clearly not limited to high cost priority disputes (i.e., interference proceedings). 

Antedating evidence is often times crucial in countless proceedings before the USPTO and district courts.

If Congress wants to advocate becoming a follower in the interests of “harmony,” that’s one thing. But, to dismiss the proposed change as anything other than game changing is simply absurd.