Should first to file vs invent matter in a well managed patent system?

This is a discussion that has bothered me for a long time.  There are debates and studies which try to suggest that one or another of "first to file" (FTF) or "first to invent" (FTI) is better for one or another type of inventor (small inventors, etc).

A recent article in IP Osgoode demonstrates the problem.  In referencing a study the article suggests, "The study finds that the shift to FTF resulted in a reduction in the number of patents granted to individual Canadian inventors and small businesses".  This is a study based on the Canadian experience having made the switch to FTF in 1989, with the USA switch coming into force in 2013.

The assumption of the article, and most of the debaters, is that if some patents are good, more are better.   The fact that the number of patents granted went down after a change should not be presumed to be a bad thing, when in fact patents not being granted may just as easily be a good thing for innovation.

Governments granting statutory monopolies need to be understood as a government intervention in the marketplace for a specific public policy purpose (See: Statutory knowledge monopolies and supply management).  The success of the patent system must then be measured against that public policy purpose, not measured based on number of patents granted or some other nonsensical measure.

Innovations which are strong in utility, novelty, and unobviousness should be encouraged, and in these relatively rare cases I believe it is justified for the government to interfere with the free market and grant statutory monopolies to the innovator.  The innovator should then be free to decide how they wish to benefit from that reward, thus making the monopoly able to be sold (IE: a form of intangible property) is also appropriate.

Innovations which have weak or fail to demonstrate utility, novelty and unobviousness should not be granted a monopoly.  The interference by government with the free market ends up being a disincentive for innovation.  Individuals and companies who independently develop a product may then find some undeserving statutory monopoly holding company is able to block and/or "tax" (monopoly rents, royalties) their independent innovation.

This brings me back to the FTF vs FTI question.  If two innovators independently come up with the same inventive idea, such that the differences between FTF vs FTI matter, I believe neither is deserving of a statutory monopoly.   It seems obvious to me that if FTF vs FTI matters, then the innovation is weak in novelty and/or unobviousness.

What I believe would be appropriate is internationally harmonize on FTF for the simplicity of paperwork, but have the type of documentation previously used in FTI jurisdictions to change ownership of the statutory monopoly to instead invalidate the statutory monopoly.  We currently allow far too little prior knowledge to be used as prior art in determining novelty of innovations, so expanding this would be beneficial to all innovators.

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So close...

You had me right up to the last two paragraphs. You seem to find it hard to believe that two people could independently make the same invention around the same time. History would disagree with you. Science, mathematics, and technology develops around the world, and yesterday's intractable problems may become possible today.

In a world of 7 billion people, is it possible that two people may arrive at similar, truly inventive conclusions, entirely independently? It seems obvious to me that the answer is "of course". If the first inventor keeps the invention as a trade secret, then this is contrary to the public service goal of the patent system. They should not receive any benefit under this system, including the ability to prior art their competitor's patent. This is the tradeoff between trade secrets and patents, after all. The inventor who told the world about the invention first should receive the benefit.

I'm also not sure what you mean by "We currently allow far too little prior knowledge to be used as prior art in determining novelty of innovations". Present law in most countries is that any publication of the innovation or innovations, in any language, anywhere in the world, may be used as prior art. The publication does not even have to be in written form. I'm not sure how you would propose to extend this.

You may have meant that patent examiners are currently relying too heavily on patents as prior art, and could do much more to include non-patent literature. I would agree entirely with that statement. The recent inclusion of a post-grant opposition proceeding in the America Invents Act is a wonderful step forward, and Canada would do well to follow in Europe's footsteps on this front.

There are also new crowdsourcing models to prior art searches, including Peer-To-Patent (a USPTO pilot project) and numerous for-profit examples. Both are great examples of ways to improve the system.


Interesting. I found Russell's last two paragraphs to be fairly reasonable, although I thought your comments were also interesting.

The difference seems to me to be this. Russell (to put words in his mouth) seems to be thinking that if two people come up with the same idea at the same time, that's evidence of obviousness, and hence the idea isn't patent-worthy. I didn't see anything to indicate that he thought this was an unlikely event. You seem to be thinking that these ideas are still worth rewarding, if they are revealed. Hence the first to file would get the reward of a patent due to having made the decision to help the world by revealing their idea. Looked at that way (and recognising that this is my interpretation of both your positions), I find Russell's side more convincing, ironically for exactly the reasons you state :-) I find it hard to believe that in a world of 7 billion *only* two people are likely to come up with the same idea at the same time, and if multiple people are capable of coming up with the idea, then the value of revealing it to the world is fairly slim. So I'd go with Russell and allow evidence of co-temporaneous invention to be used as evidence of obviousness, and hence ineligibility for a patent.

Evidence of obviousness

Just to add one more point to the discussion. In Canada, simultaneous invention can be used as evidence of obviousness, either pre-grant or post-grant. The key difference is that it is evidence, not proof of obviousness.

Simultaneous invention may indicate obviousness, but then a long-standing unfulfilled market need may indicate non-obviousness. Much like copyright's fair dealing test, it is a nuanced definition. I think Canada has a fairly workable test at this point, much better than the old formulaic (and now overruled) Teaching-Suggestion-Motivation the US used for years.

It's also important to note that obviousness has a very specific legal meaning in the realm of patents, separate and quite distinct from novelty.

Which of the 4 options?

"In a world of 7 billion people, is it possible that two people may arrive at similar, truly inventive conclusions, entirely independently?"

Chris is right in saying I have a hard time believing in "truly inventive" independent innovation, but that is likely because I have a different scale for "truly inventive" than you might. History may disagree with me on your scale, but not on mine :-)

I'll get past the "truly inventive" thought for the moment, and throw out a different thought.

If two parties A and B arrive independently at similar innovative conclusions, we have 4 of options:

  1. Grant both a statutory monopoly (Both can deny others, or both can grant others, or some other convoluted scenario ...)
  2. Grant it to party A
  3. Grant it to party B
  4. Grant no statutory monopoly at all

The debate thus far has been about whether it should be A or B (middle options), which I don't think is the relevant question.

I am saying the policy should be the last option. I strongly believe that the statutory monopoly of patent should only be granted in those relatively rare circumstances where utility, novelty and unobviousness are strong enough such that independent invention within the monopoly period (20 years) would be rare enough to not be able to measure. The fact of independent innovation should itself be a reason to grant fewer patents, not to grant more or to spend considerable public resources dealing with disputes between those independent innovators.

In the alternative: Having an "independent innovation invalidation" filing process would force the parties to come together on their own if they wish there to be any type of statutory monopoly. In other words, the first option would be possible through the parties themselves agreeing, otherwise the last option would be the norm.

The ability to invalidate existing patents through a filing of "independent invention" would also be an incentive for the parties to come to their own out-of-court/out-of-patent-office agreements rather than the taxpayer partly footing the bill for disputes (patent office or courts).

Additional notes:

My article was in reaction to the amount of debate in the USA over this issue, not about the current state of Canadian law.

I understand that novelty and unobviousness are different, but they are also linked which is why I mentioned them together in the original article for simplicity.

The patent system may "on paper" work better than it does in practise. We can talk about the ideals of a patent system, but then note high-profile cases like Apple vs Samsung where a ideologically blinded jury foreman effectively wiped out the nuances you speak of that make this statutory monopoly more palatable.

Any published prior art might be considered, but only those with the financial resources to be involved in a fairly expensive process can really make use of that. The cost to invalidating/denying a statutory monopoly is higher than the granting, and I believe it should be the opposite. (A patent filer can sue the patent office to have a patent granted, but others can't sue the patent office to have a patent denied, etc, etc).

The presumption of a statutory monopoly patent system should be invalidity -- including tweaks such as financial bonuses for patent examiners for well documented denial (not granting) of patents, extensive mandatory use of non-patent prior art searches, denying of patents on subject matter where the alternative of "secrets" aren't an option (publicly published software and other information/mental processes).