[Kopimism] more on: [FirstToDisclose.org]

From: Carl Oppedahl <carl(a)oppedahl.com> Date: March 16, 2013, 9:31:46 AM PDT To: "ipprofs(a)listserv.law.unh.edu" <ipprofs(a)listserv.law.unh.edu> Subject: [Ipprofs] FirstToDisclose.org My reaction as a patent practitioner is that this web site, despite the good intentions of its creators, is likely to do far more harm than good. The paradigm user is the inventor who gets the impression that he or she (a) can publish and (b) can now relax and postpone the pesky business of filing a patent application for almost a year (a so-called one-year "grace period"). As another poster (Ted Sichelman) points out, ill-advised reliance upon this one-year grace period can lead to the problem of a third party reading the publication and filing a prompt patent application on slight improvements thereof. But it is likely to be far worse than that for some inventors, due to a different problem, namely the irrevocable loss of any hope of patent protection in most countries of the world outside of the US. The great majority of countries around the world have a grace period that is not one year, but instead is negative one day. By this I mean that if the inventor publishes on a Monday and contemplates filing outside of the US on the subsequent Tuesday in a given country, it is (depending on which country we are talking about) too late to file the patent application and all possible patent rights will have been lost. A defender of this "disclose early and file your patent application later" approach might say "oh, don't you realize, the inventors that this approach is intended for are the inventors who won't ever want or need patent protection outside of the US, but will find their business needs more than fully served by US patent protection alone." Inventors who might imagine that they fall into this category are many, but most are mistaken. Example 1. The inventor who may eventually seek an investor to help commercialize the invention. The first or second due diligence question from the mouth of a potential investor will be "did you get your patent application filed chronologically prior to your first public disclosure?" The answer had better be "yes" or the potential investor will likely drop the inquiry and go find some other inventor who was not so unwise. Only if the answer is "yes" will the potential investor feel that foreign patent rights are still potentially available. The inventor who says "see how smart I was, I publicly disclosed my invention in a highly visible way that is easy to find, almost a year before filing my patent application" will be shown the door very quickly. Indeed the potential investor who sees that the inventor got this part wrong will figure that the inventor probably also got other things wrong that are not as easy to sniff out. Example 2. The inventor who looks to get rich by selling or licensing the invention. Suppose it's a better way to make paper clips. The would-be licensee who catches on that all foreign rights were lost will probably say "thank you for showing me a better way to make paper clips" and will set up the paper clip factory in Mexico or wherever. Yes I am aware that there are a handful of countries outside of the US where you get a very limited grace period (often much shorter than a year) for your own disclosures. The creators of this web site could do a great service to the inventing community if they wish. They could develop and post a detailed survey of the 180 or so countries of the world that have patent offices, listing for each country the nature and duration of the filing-after-publication grace period if any. Potential users of the publication feature of the web site would then have a clearer sense of how many countries' patent rights would be irrevocably lost by such publication and the relatively few countries' patent rights that might remain in prospect despite such publication.