Senate Passes Landmark Patent Reform Bill

inkscapee writes "The US Senate is congratulating itself for passing a 'landmark' piece of patent reform legislation. Some key elements are 'first to file' instead of first to invent, and ending fee diversion, which means fees paid to the Patent Office will actually fund the Patent Office. Curiously, this practice has resulted in a backlog of 700,000 patent applications. The House is reportedly working on a similar bill, and soon harmony and rationality will triumph."

Comments

wait

[CSFFlame]

Isn't first to file REALLY bad? It helps patent trolls doesn't it?

Re:wait

[Gumshoe]

Isn't first to file REALLY bad? It helps patent trolls doesn't it?

Yes. It's a disaster. In effect if you invent something you now have to patent it or possibly suffer the consequences from a patent troll. It's a money spinner for the patent office if nothing else.

Re:wait

[IP_Troll]

First to file encourages people to file for patents sooner rather than waiting for someone else to file and cutting them off with a first to invent claim.

First to file doesn't favor patent trolls, they can't patent the invention if someone else was using it publicly and didn't bother to patent it.

If anything it cuts off patent trolls because they can't keep inventions a secret waiting for someone else to file a patent, and then usurp that patent from the original filer.

Re:wait

[skids]

They used to file, then before they got approved, refile with amendments and just keep doing that until someone with something close enough to their patent came along, then refile with one last final amendment to make their patent close to what the unfortunate victim had started to market.

That was called a "submarine patent" and they fixed that a while back. This is probably aimed at killing the practice you just mentioned, which was what trolls turned to after that.

Re:wait

[Jane Q. Public]

First-to-file does favor companies and corporations indirectly, if not necessarily patent trolls.

Backyard and basement inventors (who make up a surprisingly large percentage of true innovation) in many cases do not have the money to file right away. Although the patent search situation is much better than it was some years ago, it can still take money, research, and time to file, and the services of a patent attorney, while not technically necessary, can be an advantage.

These are things that many companies and corporations have readily at hand, or can easily afford to do. Not so the independent inventor.

There are a few protections in place, but there is still no doubt that first-to-file favors the big players over the little. That is a very bad situation, and I argue that it is worse for inventors in America than the problem it is supposed to solve.

Re:wait

[h4rr4r]

So then they should publish their works. The patent system was created to move knowledge into society. If you want to keep your widget a secret you do not deserve protection. It was not made to protect anyone or let anyone profit from anything.

Re:wait

[93 Escort Wagon]

Flying car
Flux capacitor
Food in pill form
Warp drive
Pills in food form

  My offspring's gonna be rich...

Sorry, I just printed out your post and faxed it to the Patent Office - I win!

Re:wait

[zzatz]

Very wrong. Patents exist to provide an incentive to the inventor for making knowledge about his patent available to the public. It's not about inventors; it's about growing the body of public knowledge. A patent is the reward for publication, not a reward for inventing.

Inventors can profit when they keep their inventions secret, for certain types of inventions. Keeping a better mousetrap secret wouldn't work, because anyone could buy one and figure out how to make it. But if the invention is a better way to make a mousetrap, secrecy could be more profitable than a patent. First to market is another powerful reward that does not depend on patents.

The government should not be in the business of picking winners and losers; the market, with certain notable failure modes, does a much better job. On the other hand, providing incentives to people to act in ways that benefit the public at large is the principle role of the government.

Does not Affect Prior Art Doctrine

[Sonny Yatsen]

I'm sure someone's going to start asking whether a First-To-File system affects the prior art doctrine and whether it means big companies can steal ideas from open source projects and patenting them. Let's dispense with some misconceptions.

Misconception 1: This destroys the prior art system.
* This isn't true. A prior art will still cause an application to be denied under 35 USC 102. This means that if any sort of prior art is published (i.e. available to the public) that would anticipate or render an application invalid, it would still operate to render the application unpatentable. Remember, the law requires all patents to be "novel" and "nonobvious".

Misconception 2: This would mean big companies can steal ideas from open source projects and file applications on them.
* This isn't true either. The open source project would function as prior art against the later application. Even though there is a first to file system, it doesn't mean that the first person to file can steal ideas that were out there and use it as their own.

The first to file system only really works in a very specific context - where you have two inventors who filed an application on almost identical types of inventions within a short period of time. Under the current system, there has to be a very fact-intensive and time consuming process of determining who was the first inventor - which means going through years of lab notebooks and correspondences to pin out the priority between two applicants. This is very expensive, very time consuming, and it's also taxing on the court system and the USPTO. A First to File system makes it much easier - priority can be determined within seconds of looking at the filing date.

Re:Does not Affect Prior Art Doctrine

[Drakkenmensch]

Remember, the law requires all patents to be "novel" and "nonobvious".

What will become of the dozens of geniuses who patent laser pointers as "cat exercise systems"?

Re:Does not Affect Prior Art Doctrine

[Cyberax]

This isn't true. A prior art will still cause an application to be denied under 35 USC 102. This means that if any sort of prior art is published (i.e. available to the public) that would anticipate or render an application invalid, it would still operate to render the application unpatentable.

Yeah, sure. Like USPTO concerns itself with prior art searches. Or like you're going to waste hundreds thousands of dollars in multi-year lawsuits if a patent troll approaches you with 'an offer you can't refuse'.

Re:First to file versus first to invent?

[Sonny Yatsen]

Then the patent is invalid on the basis of 35 USC 102(f):

"A person shall be entitled to a patent unless -
(f) he did not himself invent the subject matter sought to be patented."
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2137.htm#sect2137

first to file standardizes things world-wide

[rritterson]

Other comments have taken to clearing up some of the misconceptions regarding first-to-file versus first-to-invent so I won't duplicate them. However, one thing not yet pointed out is that the vast (VAST) majority of the rest of the world uses a first-to-file system.

By switching our system, it reduces the burden on an inventor (and thus the legal cost) of obtaining a world wide patent as the systems become closer to the same. And note that Europe has not considered switching to first-to-invent as a way to combat patent trolls, which says something about how much the USA switching will help/hurt trolls.

That's not real reform

[Waffle Iron]

Backlog, schmaklog. The real reform we need would be to reduce the number of patents issued by orders of magnitude. The bar for patentability should be raised from "not blatantly obvious to below-average freshman engineer" to "that's freakin' genius". That would simplify things for everybody, eliminate most of the huge burdens on society involved with accounting for tens of millions of extant patent claims, while still ensuring that people with genuine Big Ideas get rewarded.

IMO, it would be an improvement to make the patent system a reality show like The Apprentice or American Idol. Allocate something like 100 possible patents each year to each field of industry, then have juries (not bureaucrats) review all of the applicants in rounds, make the would-be idea monopolists defend their claims in public. Keep voting applications off the island until the few truly worthy patent candidates still stand.

More info on the bill

[billstewart]

The Senate bill is S.23, aka "America Invents", sponsor Patrick Leahy, who's been trying to get patent reform done for years.
Bill status query at thomas.loc.gov (not sure if these are persistent), Computerworld article, National Journal with some brief comments from pro/neutral/con parties, SF Chron article.

Silicon Valley businesses large and small were mostly against it, IBM was for it. Dianne Feinstein attempted an amendment to remove the First-to-File part, but voted for it anyway after that failed. Barbara Boxer voted against.

The US patent system has been first-to-invent for a long time, while Europe has been first-to-file. There's lots of other detail, largely intended to reduce the amount of patent litigation, improve the coordination with non-US patents, potentially improve the problems with patents on things with prior art and obviousness, and affect some tax issues."

First-to-File prevents publish-then-patent

[billstewart]

One big difference between the First-to-File system and First-to-Invent is that with First-to-Invent, you can publish your invention and then file the patent within a year of publishing it, while it's very difficult to do that with first-to-file. I'm not sure how important that is in practice; one major impact it had in the US was the RSA patent and other patents that were affected by another US quirk, which is that the military can declare your patent application to be classified and prevent publication (nearly forever), and Publish-then-Patent made it possible for R, S, and A to get their work out.

First-to-file is good, not bad

[Bruce Perens]

Currently, a patent applicant can pre-date their application by 364 days and claim that they made the invention before the Open Source project, standards committee, or whatever they are eavesdropping. With first-to-file, there is no more pre-dating of inventions, so this loophole is closed and the Open Source project, standards work, etc. is more defensibly prior art.

There has been no prosecution for lying on a patent application under perjury laws since 1974, when the patent office closed its enforcement department. Lawyers sometimes get penalties if they are caught in inequitable conduct, but not the lying applicants. Thus, there was no penalty for pre-dating your invention.

Re:First-to-file is good, not bad

[Bruce Perens]

They can do everything you are afraid of today, but they can pre-date their invention by 364 days, so that it is even harder for you to prove that you sent an email disclosing this particular invention before they "invented" it.

So, I think it's better for the system to make them file their invention with a date concurrent with or after your email, rather than a year before you. You have a better chance of killing that patent.

It would be nice if public disclosure was enough to prevent someone from filing a patent, but that ignores the fact of patent thickets, in which someone patents many different (and possibly trivial) variations of what you invented. If you want to stop that, sit down and think of the variations yourself, and make a protective disclosure of them.

IMO, the system is still set up so that most of the incentives are for the bad guys, and there are little penalties for being a bad guy. This isn't the last reform bill needed.

Re:First-to-file is good, not bad

[Bruce Perens]

Yes, but that's perjuring themselves to the court rather than the patent office, and judges are very much more likely to bring perjury charges and the peril to the perjurer is substantial. Also, it puts the burden of proof on the patent holder. And the patent holder would have to show that the material was not published, but was made available to that particular party in some way.