[Fsfe-ie] US Congress to Overhaul Patent Law

Justin Mason jm at jmason.org
Fri Aug 26 01:24:37 CEST 2005

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Hi Alex --

As I suspected, I *was* wrong about that, then ;)  Thanks for the

- --j.

Alex Macfie writes:
> 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 
> invention.
> Alex
> --
> Alex Macfie, Taipei, Taiwan R.O.C.
> alex at cgce.net
> http://www.cgce.net/
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