Patent reform bill pitched to Congress

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."