Scott Nyman

A few months back, I wrote a series of articles outlining the provisions included in the Leahy-Smith America Invents Act, then called the Patent Reform Act of 2011. One topic that I covered extensively in the discussion was shifting from the outgoing first-to-invent system to the first-to-file system currently practiced by a majority of other countries.

In the articles, I expressed my view that, as a matter of policy, the first-to-file determination of priority favors big business over start-up companies and individual inventors. Since big businesses typically have big resources, a significant amount of which may be directed to its intellectual property departments, these large companies may quickly and easily file a large number of patents, hoping some of which may stick. Conversely, the little guys may have to raise capital just to cover the expense of securing their first patent.

In policy, the argument holds true. In practice, however, America’s outgoing first-to-invent system has effectively produced the same results as a first-to-file system. Under first-to-file, an inventor could initiate an interference proceeding to claim inventive priority over a previously filed patent application. However, in practice, interference proceedings are rare. As an example, just 51 interference proceedings were pending last month, many of which have been pending for over a year. Compare this with the nearly 500,000 patents filed in a given year, and the relevance of interference proceedings become negligible. (The USPTO has plenty of data regarding pending interference and patent proceedings here and here.) Additionally, interference proceedings are often decided in favor of the inventor that files first, producing the same result as if priority were determined solely on the filing date.

In an article written by Kirk Teska, published at IEEE Spectrum, the author presents a similar argument. Teska additionally compares patent decisions by the Courts, which effectively reformed the patent system, with the reform recently enacted by Congress.

At the end of the day, I still don’t see a huge impact resulting from the newly passed patent reform. I agree that the patent system is in need of a change, but I doubt we’ll see any substantial increase of efficiency for patent prosecution and examination due to the Leahy-Smith America Invents Act. However skeptical I may be, I would love to be proven wrong. But hey, at least the Patent Reform Act is creating jobs, right?