C3 Patent and Intellectual Property Law

Apr302009 | Steve O'Donnell

Pending patent reform

It seems that every year there is a patent reform bill kicking around the capital, and this year is no exception. The biggest proposed change is moving the US from a first-to-invent to a first-to-file system. This change would put us into phase with most of the rest of the world, but it it not without it's problems.

Currently, if there are two applications for the same invention, the patent will go to the first inventor after the resolution of an interference proceeding. Proving that one is the first inventor can be an expensive, time consuming bother, but it can be done. Amended bill S. 515 would change that. If it becomes law in it's current form, then the winner of the race to the patent office would be the one to get the patent..

As reported by PatentlyO, the bill has been approved by the Senate Judiciary Committee and has been placed on the Senate Legislative Calendar. If it passes through the Senate and the House, then it will go to the President for his signature. You can watch the progress of this, and other bills via the legislative search engine Thomas (search for bill number S. 515)..

At first blush, this doesn't seem to be that bad of an idea. That is the way most of the rest of the world's patent offices work and it would eliminate the need for interference proceedings. Unfortunately, I fear that it will adversely impact small businesses and independent inventors..

Assume that a small business person (A) invents a widget in January but doesn't file an application until June, during which time the business person is test marketing the widget or looking for investors. If another person (B) happens to invent the same thing in April and gets an application on file in May, A may still be able to obtain the patent for the widget. At least that's how it is now. If the proposed changes become law, then A is shut out because he didn't move fast enough. There is a real risk that this would adversely impact first time inventors that aren't familiar with the patent process and might not have the money on hand to invest in obtaining a patent..

The new law will probably also increase the overall cost in patent office and legal fees to the inventor. No practitioner is going to sit on an application, or take longer than needed to draft it, but under the new law, very application will be a race. Practitioners will find themselves exposed to greater malpractice premiums due to the possibility that a slight delay may kill their clients' chance of getting a patent. That cost will be passed on to inventors. Inventors will also likely find themselves paying premium prices to have their attorney push their applications to the top of their docket.  Additionally, since they can be filed faster than a non-provisional application, provisional patent filings will increase, causing inventors to pay additional fees that they wouldn't have otherwise needed to pay in order to preserve their right to a patent.

If this concerns you, contact your elected officials.