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:

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"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.