Patent Reform
Will Patent Reform Finally Become Reality? After years of failed attempts, patent reform is again gaining momentum. In March, the Senate overwhelmingly passed what is now called “The America Invents Act,” and the House Judiciary Committee approved a revised version of the bill in mid-April. The full House should consider the measure later this year.
The most significant change to the patent system itself is the move from a “first to invent” to a “first inventor to file” system, putting the U.S. in harmony with most of the rest of the world. There is a great deal of concern this change will harm start-ups and individual inventors that have do not have the resources to file early in the R&D process. There have been moves to expand prior user rights, which would allow certain prior inventors to continue to use their inventions without infringement. Prior user rights are expected to be the source of additional debate, but it remains to be seen whether significant prior user rights will end up in the final bill.
One of the primary stated purposes of the legislation is to decrease the Patent Office backlog of over 700,000 applications and increase the quality the resulting patents. The key provision addressing this problem would allow the Patent Office to set its own fees and prevent Congress from diverting Patent Office fees to other unrelated programs. Congress has used Patent Office revenue for other purposes for many years, and as late as April diverted $100 million of Patent Office fees to the Treasury Department’s general fund.
The bill also provides expanded opportunities for third parties to present “prior art” to the patent office during prosecution and challenge patents after issuance in a post grant opposition process akin to what is used in many foreign countries. The goal is to increase the quality of patents by bringing more relevant prior art to the attention of the examiners and decreasing the cost of challenging a “bad” patent.
Although the bills certainly have opponents, the current Senate and House bills do not contain the types of hot button issues, like limitations on damages, that caused patent reform to stall in past years. And the differences between the Senate and House bills appear to be reconcilable. Given that patent reform has bi-partisan Congressional support, as well as the support of the Obama administration, 2011 may be the year it finally happens.
