First to file, first to invent: disclosure of inventions and the Wayback machine

Does the US need to
concern itself with what
the rest of the world does?
Towards the end of March, IP Brief posted "America: Last in Line for First to File System", by Christine Casaceli who wrote:
"In America, the patent process has always been a first-to-invent patent regime. The United States now joins the rest of the world in first-inventor-to-file. Section 3 of the America Invents Act [AIA] contains the controversial centerpiece of the patent reform statute, which changes the patent application process. Under the previous system an inventor could produce a date stamped note, proving they were the first inventor and defeat any challenger who may have filed before them. The rest of the world has already been operating in a first-inventor-to-file system where the first inventor to file a valid patent gets the rights. 
This first-to-invent system has been viewed as beneficial to smaller entities when dealing with the might and money behind large corporations. Many smaller inventors complain that under the new system large corporations have a window to steal ideas and file the patent first. However there is hope under the new system in the form of an exception. In section 102 of title 35,there is a fundamental change in the role of disclosures and under the new system public disclosures can serve as a place hold until the actual patent application. Disclosures can include official postings on company websites, presentations or demonstrations at trade shows, even postings by company employees on social networking sites. 
Pre-filing disclosures do have a downside. Many international patent regimes do not have a “grace period” in which to file for patents. While a pre-filing disclosure may preserve the inventor’s rights within the United States, it may cost forfeiting rights elsewhere. This is a large change for United States companies and it will take time to adjust. The USPTO saw a swell of applications on March 15, 2013 [on which see David C. Berry's short note on PatLit, here]. A good patent attorney will be able to digest the changes under the AIA and enable companies to navigate through these new waters".
Spotting this, katfriend Chris Torrero comments as follows:
Add caption
"The issue that interests me is that I understand that the EPO rejected a citation of the Wayback Machine as prior art as it could not be conclusively proved that a particular web page appeared in that form on a particular date. Given that it is likely that, at least in the short term, some US inventors will make attempts to protect their rights by placing details of inventions on their websites before filing, this could become a serious issue. 
Conversely, there might be circumstances under which a non-US applicant may choose to do this after the Paris Convention priority date but before US filing. This would have interesting effects if the applicant later decided to refile or otherwise abandon the priority claim". 
Every so often the IPKat comes across a subject on which he genuinely struggles to make up his mind.  The impact of different permutations and timelines for invention, patent application, disclosure and publication is one of them, since every possible approach, whether based on grace periods or not, and first-to-file or first-to-invent, is amenable to the construction of examples that favour both justice in the individual case and general principles of good practice.  He'd be delighted to know what readers think.

Merpel thinks it doesn't matter how you go about assessing priority and protecting the interests of inventors and applicants, so long as the rules you choose are (i) clear and certain in their application and (ii) uniformly applied across the world.
First to file, first to invent: disclosure of inventions and the Wayback machine First to file, first to invent: disclosure of inventions and the Wayback machine Reviewed by Jeremy on Thursday, April 11, 2013 Rating: 5


  1. The fact of the matter is that, in effect, the US did have a first-to-file system prior to 16 March 2013. The number of interferences had fallen to a very low number, and in any disputes relating to who invented first, the winner was almost invariably the party with the earlier priority date.

  2. Has there been any case in the last fifty years in which a US "small inventor" succeeded in a claim to be the first inventor against a large company?

  3. Re Chris Torero's comment about the Wayback Machine, although there may have been a case where the contents of the Wayback Machine were considered not sufficient to establish a publication date, it is to be remarked that the official position of the EPO is that archiving services and computer-generated timestamps are considered reliable means to assign a date to a disclosure. In particular, the new Guidelines, G-IV, 7.5.4.(a), state that in case of doubt, the examiner may refer to:

    "Information relating to a web page available from an internet archiving service. The most prominent such service is the Internet Archive accessible through the so-called "Wayback Machine" ( The fact that the Internet Archive is incomplete does not detract from the credibility of the data it does archive. It is also noted that legal disclaimers relating to the accuracy of any supplied information are routinely used on websites (even respected sources of information such as Espacenet or IEEE), and these disclaimers should not be taken to reflect negatively on the websites' actual accuracy. "

  4. The idea of publishing inventions on web pages and their use as prior art was tested in a contrived case - T1553/06.

  5. The problems with the WayBack Machine as a reliable repository of prior art were quite conclusively shown in this article and the related Belgian court case. The WayBack Machine archives HTML script, not the objects embedded in the archived web pages (notably image files). If the webadmin replaces the objects linked to in the HTML script while keeping the same URLs, the replacements will be shown in the "archived" web page instead of the original objects...

  6. I always thought the ROW had a first-to-file system as opposed to a first-inventor-to-file system. All my clients are in for a nasty shock when I give them the bad news that their patents, not filed in the inventor's name, are invalid. I'll wait until Monday so as not to spoil their weekend.

  7. You ask what should be the rules. To Merpel's two requirements I would add a third, for me the most important.

    Increasing numbers of people in positions of influence are setting against the patent system. Increasing numbers of engineers and scientists are setting against the patent system. They are doing so because they perceive the rules to be made for the convenience of lawyers and not the good of society. So we need rules that strike everybody as sensible and good for promoting the progress of useful arts, nurturing the progress of technology and achieving a simple balance between fair protection for inventors and maximum legal certainty for the public. With clear clean rules that even academics can accept, inventions will get the protection they deserve. When that happens, criticism of the patent system will subside.

    Otherwise it is only going to get louder.

    So let us push the existing EPC Rules, proven, tried and tested, simple, and workable. If these are explained to the critics they might then get behind them. the criticisms of them do not stand up to scrutiny. See the Tegernsee scrolls. If the Rules are more complicated than that, inventors will ignore them, and then shout foul when they don't get the protection to which they suppose they are entitled. Not good.

  8. The problem with the patent system in this country is cost and incompetence. It is a closed shop for a style of pseudo-lawyer (patent attorneys and IP lawyers alike) that lacks an appropriate understanding of the relevant technology and of research-based business and is unable to apply basic legal principles to such matters. 'Interdisciplinary' and 'multidisciplinary' are concepts not associated with many of the attorneys I have the misfortune to deal with.

    'Bookworms'? Yes. Rule followers'? Yes. 'Highly educated'? Yes. 'Good patent lawyers'? Absolutely not. The IP profession needs a complete overhaul.

  9. In response to Anonymous of Sunday, 14 April 2013 13:26:00 BST I would advise that please shop around. If you are not satisfied with your patent attorney then go to another. There are good ones who provide value for money and wish to be as helpful as possible. I find for some reason that people are reluctant to do this, and assume from one bad experience that all patent attorneys are the same. We are not.

  10. My position is based on numerous examples over the years and is not based on a single bad experience.

    Shopping around is not the answer. I know several good patent attorneys, but many bad ones.

    Oh, forgot to mention. I am a patent attorney myself. I speak with knowledge and experience and would not label my opinion 'IMHO'.

    I'd be interested to hear some justification from attorneys as to why they believe they are worth upwards of £300 per hour, other than 'that is the going rate because we are a closed shop and that is what we all charge'.


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