Patent Reform Issues

Mr. Matt Buchannan is a patent attorney and friend of mine who is closely tracking the patent reform discussions.  His "Promote the Progress" blog is a place that patent attorneys go to see whats going on at present.  It is at http://www.promotetheprogress.com/.  Anyone interested in these reform moves should sign up for his blog. 

There is a move afoot to make some reforms to the patent system in the U.S.  One goal is to remove or lessen differences between the U.S. patent system and the systems of Europe and Japan.  This effort is called "harmonization", not "kowtowing."  Another driver is to make the patent office function more efficiently.  As has been proposed in previous reforms, one measure to improve the U.S. Patent Office is to keep the money paid by inventors as fees within the patent system, to hire more examiners, and to reduce the pendency of patents.  The Patent Office has always been a cash cow, and inventors fee money has always been "diverted" (robbed) by Congress from benefiting inventors to pay for other programs.  In the meantime, a patent application is not read for 12 months to 48 months after it is filed, due to the shortage of Examiners.

The issues that are on the table for discussion of reform include:

1.  adoption of a first to file system, like Europe and Japan, instead of the first to invent system we have now. In a first to file system, whoever files first gets the patent, even if someone else invented it first. A First to File system is disadvantageous to small inventors, who may not be super fast to file for a patent.

2. post grant administrative review of new patents

3. publication of all application within 18 months (not issuance, just publication).

4. limits on continuation practice

5. modification or elimination of penalty for willful infringement (wanted by big companies).  This would take away much of the risk of infringement lawsuits for the big boys, and make it even tougher for the small guys to prevent infringement of a patent by the big boys.

6.  modification of elimination of standard for inequitable conduct of attorney

7.  elimination of the best mode requirement now present in the U.S. system but not in Europe or Japan.

8.  harmonization of US, European, and Japanese examination systems

9.  reinvigoration of the non-obviousness standard

10.  modification of the standard for finding a patent invalid to a preponderance of the evidence

11.  modification of rules for injunctions, making it harder to get an injunction, which the big boys like.

12.  keeping funds paid by inventors for use by the patent office instead of being siphoned off to pay for other government programs. The money to be used to make pendency of patents shorter, so they issue sooner.

More later, as discussions continue.  

Comments

[Norton R. Townsley]

I have a comment about the first to file system. I remember hearing a presentation from a PTO official some years ago. He gave some statistics about interference actions. I forget the exact statistics (I'm sure you could go on line and get actual current statistics) but the bottom line was that the percentage of applications that wind up in interference actions is extremely small (if you think about this makes a lot of sense) and a rare minority of junior applicants actually win their cases. When you consider the enormous amount of money that is spent on such actions and the fact that the administrative judges also hear appeals, my opinion is that the first to file system is economically unjustifiable.

[Denis O'Brien]

Norton Townsley's dis of first-to-file on the basis of interference stats and pre-issue economics is certainly a new angle worth considering.

But what about the advserse post-issue economics of the first-to-invent system? For instance, that fact that patents under FTI are all provisional in the sense that any creep with a back-dated lab book can waltz into district court at any time and calim to be the owner of the invention. Or how about bounty hunters using everything from kindergarten books to ancient archeological discoveries as prior art to destroy patents? How stupid can one system be?

FTI is an embarrassment to the US -- almost as embarrassing as being unable to grasp the benefits of the metric system. A country of morons is the message we send to the rest of the world.

Of course, the lawyers are the ultimate winners of FTI since they are the ones getting paid to conduct all the litigation over priority. Their argument that FTF disadvantages the indiviudal inventor is just specious clap-trap intended to preserve the very lucrative status quo. Do the lawyers ever point out the obvious disadvantages of FTI to the small-time inventors; i.e., how much it costs a patent holder to protect his patent against the heavily represented companies brandishing "evidence" of first to invent?

Denis O'Brien