For what it’s worth, Neil:

The switch from a first-to-invent rule to a first-inventor-to-file rule* is probably among least significant part of the Act for small inventors, at least as a practical matter. To understand why, you have to understand the procedures and costs associated with the first-to-invent rule under current law.

The general rule under current law is that the first to file wins. The current law, however, allows for an “inventorship” challenge under three general scenarios: as a means for invalidating an issued patent under under 35 USC 102(g)(1); as part of an interference proceeding involving at least one pending patent application in the USPTO; and as part of an interference proceeding involving two issue patents under 35 USC 291.

Under current law, interference challenges in the USPTO or under Section 291 have special, threshold requirements and apply only in limited cases where both parties have a patent (or patent application) and the claims of those patents and/or applications “cross-read”. Put another way, patents can overlap — indeed, one patent can completely “dominate” another — without there being a basis for an interference. A validity challenge under Section 102(g)(1) is potentially broader, but it operates only as a defensive mechanism to invalidate the patent. One does not “get” a patent of one’s under 102(g)(1).

All three of these challenges require substantial resources to pursue: a simple interference in the USPTO — likely the cheapest of the three — can cost $100,000 or more in attorneys fees, costs, and expenses.

So: Unless you already have considerable resources, you are already unlikely to be able to take advantage of the current first-to-invent rule.

The new law generally eliminates the two, relatively narrow interference procedures but generally keeps the ability for a prior inventor to make a validity challenge (what was before a 102(g)(1) claim). There are some nuances, however, that I lack the space to adequately explain.

Finally: (1) I am not advocating the AIA — I am neutral on the matter — and (2) there are some interesting Constitutional issues about the first-inventor-to-file rule that one can debate. However, the AIA’s first-inventor-to-file rule needs to be put into context of what really happens under current law. I really don’t think that the sky is falling on small inventors — any more than it already has fallen, that is.

*For clarity, the US is not moving to a first-to-file rule under the AIA: It’s moving to a first-inventor-to-file rule. The US will continue to allow derivation claims. A derivation claim essentially allows a prior inventor to assert that his or her idea was stolen by another person (“you derived the idea for that patent from me!”) A true first-to-file rule means just that: first to file wins, every time.

The bottom line is that the distance between ?interesting idea? to filed patent application is significantly greater for a small business entity (or at least an entity with relatively little experience in dealing with the patent system).

The is absolutely correct, but it is also correct under the current system. Even quite large companies that can keep up with the patent filings of the giants under the current system.

Implementing a per se rule such as first to file just puts another obstacle on small companies successfully obtaining and benefiting from patent assets.

This is where I think the argument gets questionable. Surely, the AIA provides an incentive to make a decision regarding patentability as early as possible. But a small company can’t patent every idea under the current system — not even a fraction. And even under the current system, you can’t wait indefinitely to file a patent: assuming you’re selling a product, 102(b)’s one-year bar comes into play. And once you sell the product, the AIA’s revision to the definition of prior art should block someone else from patenting it.

I am not asserting that the AIA’s switch to a first-inventor-to-file rule won’t negatively affect some small businesses — it might. But I do question whether any effect will be significant. This does not mean that small businesses shouldn’t advocate against the change: there is good reason to argue against an unknown. But I am very skeptical of the “sky is falling” type arguments, because I have yet to see the case made in a credible way (e.g., with reference to the already substantial barriers that exist in the current system).

Can’t help with that.