Senate Panel Backs Patent Overhaul Bill

mvar writes "A bill to reduce the likelihood of massive damage awards in patent disputes took a step forward with approval by the Senate Judiciary Committee. The committee voted 15-0 to back the legislation that would give judges a major role in determining how important a particular patent is to a product, so that infringing minor patents would not lead to huge damages. The bill (PDF) also gives patents to the first inventor to file, rather than the first to invent, making the patent application process easier for companies who apply for patents in multiple countries. This year, Microsoft, the Pharmaceutical Research and Manufacturers of America and the Biotechnology Industry Organization support the patent legislation, while Dell, Cisco and others oppose it." Microsoft's blog post in support of patent reform calls for a quick review period for newly-granted patents and the acceptance of prior art submissions from third parties.

Comments

WTF?

[Cyberax]

"The bill (PDF) also gives patents to the first inventor to file, rather than the first to invent"

WTF?

Re:WTF?

[a_n_d_e_r_s]

Perfect now big companies can steal ideas from other countries and patent them in the USA. And the smaller damages means it won't cost as much for Microsoft and other big companies when they are convicted of infringing on others patents. This is really good for big companies that like to infringe on smaller companies patents.

Re:WTF?

[Sonny Yatsen]

Well, there are two major reasons why a first-to-file system may be advantageous. First, the United States is unique among the nations of the world in having a first-to-invent system. This means an inventor can gain priority over another inventor who filed before the first inventor if he can prove that they invented something first. Every single other country in the world uses a first-to-file system. To change US law to permit the first-to-file system would harmonize US law with every single other country's laws, simplifying the matter for inventors. It also gets rid of weird results like a family of patents that protect in every other country but the US.

Secondly, it's cheaper for all parties. A first-to-file system can determine who gains priority in a patent by simply looking at the dates. On the other hand, a first-to-invent system almost always devolves into massive lumbering multi-million dollar litigation suits where hundreds of attorneys and document reviewers pour though millions of pages of notes to prove one party reduced something to practice before another party. It also takes years to go through the courts, which is not helped by the already heavy backlog of cases in the Federal Courts. Plus, while a first-to-file system doesn't help the small inventor, a 102(g) fight priority fight in the courts REALLY doesn't help small inventors. They can't afford the potential millions of dollars that may be lost permanently if they lose such a case, or even to settle.

Re:WTF?

[0123456]

Having to pay a license to lawyers to be authorized to sell your own invention is not really what the patent system is supposed to be.

That's exactly what the patent system is supposed to be: you invent something yourself, then discover that you can't use your own invention because someone invented it before you and has a piece of paper saying they own it.

There are few really unique and innovative inventions which someone else in the field couldn't come up with independently.

Re:WTF?

[cmarkn]

No, you missed the point. The guy who invented the sprocket and got the patent on it in the UK but not the US. US Widgets Inc sees the UK patent and files it in the US -- even though they didn't invent it. Now the UK inventor wants to expand his sales into the US. Bam! He gets hit with a patent suit because US Widgets owns the patent here. The judge decides that the inventor has to pay to sell his own invention, because he was not the first to file, merely the first to invent.

Re:WTF?

[coldfarnorth]

I disagree, this also helps the little people. If you file a patent for a cool idea, and IBM files for the same idea two days later (Keep in mind that the important date here is the postmark), you win. There's no expensive and lengthy court case (where you can lose by running out of money) to determine who invented it first. The debate will be over the day that they look at the postmarks. Keep in mind that prior art applies here also: if you publish a patent in another country, that is prior art, and you can use it to invalidate patents that are filed at a later date in the USA.

Now, if you want to stick with a system where a court case is necessary to determine who gets the patent, I guarantee that will primarily benefit the side with the most cash available for lawyers.

Food for thought, the rest of the world uses a first-to-file system, and it does not appear to have destroyed society yet.

Oh, one more thing: if you, as a "small entity", are willing to do the legwork and write up the patent application yourself, you can have a patent of reasonable length for less than $1000. The current fee schedule is available here:

http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm

Re:WTF?

[Jane Q. Public]

But that's a narrow definition of "prior art", and it does not seem like a fair method. As I understand it, that would give companies an advantage over garage inventors.

Let's say I invent gadget G in my basement. I have kept meticulous records of the lab and shop work I put in over time to invent it. It took me 5 years.

I want to patent it, but it takes me a year and a half to get the funding to do a proper patent search and file for a patent. In the meantime, my next-door neighbor, who works for Corporation X, saw my invention, and the corporation filed for a patent right on G away, 8 months before I did.

My invention is not yet "public knowledge". Yet clearly I was the inventor. Why should Corporation X be awarded the patent?

If that's the way it would truly work, I am strongly against it.

Wolf in sheep's clothing

[locallyunscene]

legislation that would give judges a major role in determining how important a particular patent is to a product, so that infringing minor patents would not lead to huge damages

Okay that sounds good, what's the catch?

patents to the first inventor to file, rather than the first to invent, making the patent application process easier for companies who apply for patents in multiple countries

... and making it much harder for anyone who is not a large company with money to throw at patent applications. Also could someone familiar with patent law explain how changing this one particular law in the U.S. makes it easier for companies to file in other countries?

Schumer's amendment would have allowed companies sued over such patents to ask the U.S. Patent and Trademark Office to declare them invalid without resorting to litigation.

"I feel very strongly about this issue," said the Democrat from New York. He could not guarantee he would vote for patent reform once it hit the Senate floor if it was not in the bill.

So 90% of what would have protected smaller innovative companies was removed and what is left is further patent domination for the bureaucratic styled corporations.

Other provisions in this year's 99-page bill aim to prevent bad patents from being issued by allowing third parties to provide information on why an application should be rejected.

Useful, but not nearly as useful as the above proposed amendment.

The U.S. Patent and Trademark Office has asked for the right to set its own fees in order to hire more examiners and upgrade technology so it can chip away at a massive backlog of patent applications.

The bill would give the patent office authority to set fees, but requires that the smallest applicants get relief on application fees.

They'll need it with the flood of "first to file" applications coming in.

Re:code for "death to prior art"

[ThosLives]

"First to file" doesn't eliminate the "novel, useful, unobvious" requirements on a patent. If an invention is already in the field and in use, first to file won't be the thing that locks it up. Instead, it will be the same thing that happens today when people get patents on obvious or preexisting "inventions".

First to file simply eliminates the fights over who invented things first. Of course, I'm of the opinion that if there is a "who invented it first" fight then the patent under question should immediately be invalidated or rejected, because near-enough simultaneous development by disparate parties means the invention is "obvious to those skilled in the art" QED.

First to file is very bad for academia.

[seeker_1us]

You need to be able to publish your stuff in academia as fast as possible, once you have good results. Waiting for the patent filing process (just the filing) can delay it badly. If you have first to invent, you can do your invention, then publish while you are doing the patent filing.

This will cripple innovation in America's Universities as researchers are forced to choose between publishing and patenting.

Re:Prior Art is No More

[Java Pimp]

First-to-file does not negate or eliminate prior art. First-to-file applies to parties independently coming up with the same invention (without existing public knowledge of such an invention) and granting the patent to the first to file.

Prior art can still be used to show that the first to file didn't actually do the inventing.

Interestingly enough, the Microsoft blog linked to in the article specifically mentions and endorses the use of prior art in countering patents.

Stop with the prior art comments!

[sir_eccles]

Can we please stop the comments about prior art.

Suppose you have "great open source software" everyone loves it and has been using it since v 1.0 (wow, I know it got out of beta!) came out on April 1st 2000. Now today Microsoft says "haha, no-one has patented this great piece of software let's steal it, lolz".

First to invent - lolz we totally have notarized log books that show we actually did this way back in February 2000, see you in court"

First to file - v 1.0 is prior art, end of story, Microsoft's patent application isn't novel, you can all carry on using the software without any problem