(Editorial Note: Last week, I posted my thoughts on the proposed changes to the US patent laws from a first to invent to a first to file system. In response to my post, I received an exceedingly detailed and substantive comment from David Boundy, Vice President, Ass’t Gen’l Counsel, Intellectual Property at Cantor, Fitzgerald. (David wanted me to say that this post his personal view, and does not reflect the views of Cantor, Fitzgerald.) David’s viewpoint on what the proposed legislation will mean to business deserves a forum, and he has graciously allowed me to post his comment in total on the IP Asset Maximizer Blog. Anyone who works with business to generate patent assets should be concerned about the proposed changes.)
About guest poster David Boundy: David Boundy has spent over a decade on Wall Street, first in several of New York’s most prominent law firms, now as in-house counsel at one of Wall Street’s largest investment banks. In several years of his career, David as one single lawyer moved more money around based on patents than the entire federal judiciary combined. David believes that litigation costs and damages should be irrelevant to the current patent reform debate; what matters is the effect on investment flows.
David Boundy’s views on the proposed First to File legislation:
I concur with Jackie on the narrow points of her last paragraphs from her post of last week: IF the proposed legislation simply changed § 102(g) from “before such person’s invention thereof” to “before such person’s effective filing date,” and IF the currently-pending legislation left in place §§ 102(a) and (b) so that an inventor can “swear behind publications” (don’t forget prior use and sale!), “but not [behind] previously filed patent applications that claim the same or similar invention,” then I think the new statute and first-to-file might work. As Director Kappos wrote in his blog, IF that were the proposal, the number of affected applications would be small. Continue reading