Patent Reform Act Moving Forward

by Mark Malek

Well, I’ve heard this one before – the Patent Reform Act is moving forward.  This is something that has been, allegedly, moving forward for years.   The article that I read noted that patent reform has been introduced in each of the last three Congresses.  Does this one have a chance of passing?  There’s really no telling.

Senators Leahy and Hatch have been big proponents of patent reform over the years.  I appreciate that they realize the importance of intellectual property.  Over the years, the various versions of the patent reform act have attempted to address issues such as moving to a “first to file” system, damages, and third party comments on pending patent applications.  This proposed bill addresses those issues, as well as others allowing the U.S. Patent and Trademark Office to set fees in an attempt to address the backlog problem.

The two issues that I will be watching closely are the first to file issue and the fees issue.  Most other jurisdictions are on a first to file system, i.e., a race to the patent office.  Conversely, the United States is currently a first to invent system.  That means one may not necessarily be entitled to patent protection if another inventor can prove that they actually invented first.  Under the first to invent system, it is possible for an inventor to get patent protection even if another inventor beat them to the patent office.  This is provided that the inventor can show that he/she actually invented first. It is a bit more complicated than it sounds.  The patent reform act would do away with that capability.   To tell you the truth, I am not sure how I feel about it.  I think the system is fine the way it is, and I do not believe that we should be in a rush to conform to the way that other jurisdictions do things.  At the same time, I believe that this will encourage inventors to seek the protection that is necessary in a more timely fashion.  This will, however, likely put a strain on smaller inventors. We’ll see how this one plays out.

As for giving the USPTO the ability to manipulate fees to address the patent backlog problem, I personally think it is a bad idea.  The issue, as I see it, is not one of a lack of fees generated from Applicants.  Instead, I believe the issue is with mismanagement on many different levels.  I believe that over the years, Examiners have been discouraged from allowing patents, thereby increasing their workload, i.e., necessitating the issuance of multiple office actions.  I appreciate that heightened scrutiny on patent examination is aimed at producing better quality patents, but when the end result is fewer patents are issued, there is a hit to the revenue of the PTO that is enjoyed from the collection of maintenance fees.  I also believe that the years of skimming money off the top of fees that the USPTO has collected has had a toll on the USPTO’s ability to hire additional examiners where needed, or even improving its infrastructure.  The PTO should be able to keep all the fees that it generates, and reinvest those fees into hiring more Examiners, and providing those Examiners with the tools they need to effectively carry out their duties.

We will be monitoring the Patent Reform Act and keep you posted on how it progresses.