In most countries, if two people come up with the same invention
independently, the first one to file a patent application gets the
patent – known as the first-to-file system. But the
US
currently has a first-to-invent system, in which the first inventor
gets the patent even if he filed an application later. The biggest
problem with the first-to-invent system is in proving who invented
something first.
Patent reform has been high on the agenda of legislators and big
business recently, with increasing concern about the backlog of
patent applications and the high number of patents that are
challenged after they have been granted.
Particular criticism has focused on business method patents,
which according to a campaign launched by the Electronic Frontier
Foundation last year, are routinely granted by the US Patent and
Trademark Office on the basis that any question over the legality
of the patent can be dealt with by the courts.
This, says the pressure group, puts the onus and the cost of
ensuring that a patent is valid onto competitors of the patent
owner, increasing litigation and reducing certainty in the business
community.
Pressure from business and campaign groups has resulted in
action, and yesterday Republican congressman Lamar Smith introduced
the Patent Reform Act into the House of Representatives, with the
stated intention of improving the quality of patents issued by the
USPTO
.
In brief, the proposed legislation:
- Provides that the right to a patent will be awarded to the
first inventor to file for a patent who provides an adequate
disclosure for a claimed invention;
- Simplifies the process by which an applicant takes an oath
governing the particulars of an invention and the identity of the
rightful inventor;
- Deletes the “best mode” requirement from the existing Act,
which lists certain “specifications” that an inventor must set
forth in an application;
- Codifies the law relating to inequitable conduct in connection
with patent proceedings before the
USPTO
;
- Clarifies the rights of an inventor to damages for patent
infringement;
- Authorises courts with jurisdiction over patent cases to grant
injunctions in accordance with the principles of equity to prevent
the violation of patent rights;
- Authorises the
USPTO
to limit by regulation the
circumstances in which patent applicants may file a continuation
and still be entitled to priority date of the parent
application;
- Expands the 18-month publication feature to all
applications;
- Creates a new post grant opposition system; and
- Allows third-party submission of prior art within six months
after the date of publication of the patent application.
The bill has a long way to go before it becomes law, and the
patent system is a source of enormous controversy, as evidenced by
the continuing arguments in Europe over a law on
computer-implemented inventions, first proposed five years ago.
But if passed in its current form, Smith says his bill would be
"without question, the most comprehensive change to
US
patent law since Congress passed the 1952 Patent Act."
He added: “The bill will eliminate legal gamesmanship from the
current system that rewards lawsuit abuses over creativity. It will
enhance the quality of patents and increase public confidence in
their legal integrity."
Industry group the Business Software Alliance welcomed the
proposals.
“This legislation is of critical importance to the technology
industry. Patent reform is needed to ensure thriving innovation in
software and computer technologies,” said
BSA
President and
CEO
Robert Holleyman. “The bill is
especially important and timely because it addresses the key
issues: improving patent quality, making sure US law is consistent
with that of other major countries and addressing disruptions
caused by excessive litigation."
