Posts Tagged ‘reform’

Patent Reform – Solving Problems That Do Not Exist?

Thursday, 15 September, 2011 16:04 Written by Scott Nyman 2 Comments

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?

Patent Reform Act of 2011 – Part 5 – Remaining Topics

Sunday, 20 March, 2011 06:57 Written by Scott Nyman 0 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011 as part of a series of articles. As a refresher, the Senate recently voted to pass the Act with a 95-5 vote. Now, a sister bill is currently making its way through The House of Representatives.

The Patent Reform Act of 2011 proposes new policies to reform (for better or worse, depending on your view) the way the U.S. examines, allows, and enforces patents. The U.S. Senate and House bills are now being called the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

In the preceding articles of this series, I have covered many of the changes proposed by the Patent Reform Act of 2011. Today, I will cover the remaining provision of the Patent Reform Act of 2011. Please check out my previous articles on TacticalIP for the complete coverage of the Patent Reform Act of 2011. Of course, I will continue to follow the progress of the Patent Reform Act as it makes its way through the House and possibly into law.

The Patent Reform Act of 2011 includes a few miscellaneous provisions that affect how patents are examined and enforced. Due to the large number of false patent marking cases filed in the recent years, the Patent Reform Act of 2011 proposes to limit the parties that may file such cases. False marking occurs when a manufacturer or party lists a patent number on a product or packaging without the valid authority form the owner of the patent. Under the proposed Act, parties with the right to sue would now include only competitors that can prove competitive injury and the U.S. government.

A new provision is also included to assist corporation in filing oaths for substitute inventor, when another inventor is uncooperative.

Also included as a provision in the Patent Reform Act of 2011, failure to set forth the best mode for carrying out an invention would no longer provide grounds for invalidating a patent. The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention. (251 F.3d 955, 963) Under the proposed reform, the duty to ensure the best mode requirements have been met would lie solely on the USPTO during examination.

Finally, the Patent Reform Act of 2011 proposes allowing the USPTO to adjust its own fees. However, this new authority would be limited to making adjustments in a way that the aggregate fees collected do not exceed the estimated operating costs of the USPTO. Seeing as how the USPTO is one of the few government entities that actually turn a profit (although they are not allowed to keep that profit), this proposed reform has been need for a long time.

Also, included in this proposed fee setting authority is the creation of a new “micro entity” for a special class of applicants, providing further reduced fees. Too bad most of the cost of drafting and successfully prosecuting a patent isn’t in the filing fees.

Thanks you to all my readers who have been following this series. If you enjoyed these articles, or if you have any suggestions for a future series, hit up the comments.

PATENT REFORM ACT OF 2011 – PART 4 – THIRD PARTY CHALLENGES

Thursday, 17 March, 2011 11:12 Written by Scott Nyman 0 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011 as part of a series of articles. As a refresher, the Senate recently voted to pass the Act with a 95-5 vote. Now, a sister bill is currently making its way through The House of Representatives.

The Patent Reform Act of 2011 proposes new policies to reform (for better or worse, depending on your view) the way the U.S. examines, allows, and enforces patents. The U.S. Senate and House bills are now being called the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

Today, I will cover the provision of the Patent Reform Act of 2011 as it relates to third party rights. In the next article, I will finish up the series by covering the remaining topics of proposed reform in the Act. Of course, I will continue to follow the progress of the Patent Reform Act as it makes its way through the House and possibly into law.

The Patent Reform Act of 2011 includes new provisions that affect how a third party may challenge a patent or application through the USPTO. The new provisions include avenues for a third party to present a challenge during the examination and after issuance of a patent. During examination, the Patent Reform Act of 2011 proposes allowing a third party use Pre-Issuance Third-Party Submissions to challenge an application. After a patent has been issued, a third party may challenge the patent via a Third-Party Requested Post Grant Review or Inter Partes Review Proceedings. With the inclusion of these new challenges available to third parties, the Patent Reform Act of 2011 will effectively expand the possible influence of the third party.

With the new Pre-Issuance Third-Party Submissions provision, a third party would be able to submit previously published patents, applications, and other publications to the USPTO to be considered by the Examiner while examining the application for patentability. The third party may also include a description of how the submitted publications are relevant to the examination of the application.

The third party, the new third wheel.

The Third-Party Requested Post Grant Review would permit a third party to challenge the validity of a claim in an issued patent. This proposed proceeding shares a number of similarities with the reexamination proceedings in existence under the current patent system. However, under the proposed Third-Party Post Grant Review, a third party must request the review within nine months of issuance of a patent.

After the nine month period for Post Grant Review has expired, a third party may file for an Inter Partes Review Proceeding under the proposed provisions of the Patent Reform Act of 2011. This new inter partes proceeding would replace the inter partes reexamination of the current system, limiting the review to considering only novelty and obviousness issues.

PATENT REFORM ACT OF 2011 – UPDATE – SENATE PASSES ACT

Thursday, 10 March, 2011 09:21 Written by Scott Nyman 4 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011, as part of a series of articles. As a refresher, Senate Bill 23 is currently making its way through Congress, with the hopes of reforming the way the U.S. examines, allows, and enforces patents. This bill was formerly known as the Patent Reform Act of 2011, and has since been renamed to the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

Apparently, someone flipped the "bipartisan switch."

Since I posted the last article in this series, the U.S. Senate passed the Patent Reform Act of 2011 by huge majority. This 95-5 Senate vote proved that legislators on both side of the aisle recognize how broken the U.S. patent system has become, and the Senate is committed to fix it. Either that or it shows that the lawmakers on both sides of the aisle have no idea how the U.S. patent system works, but they know some change is necessary . Either way, it’s progress… I guess. Next stop: The House of Representatives.

In passing the Patent Reform Act of 2011, the Senate included provisions that would reshape the U.S. patent system closer to a “first-to-file” system. I have covered this topic HERE and HERE. Also, the Senate has included measures to provide the USPTO with  more control over its fee-setting structure. Some benefits that this provision may bring could include the elimination of fee-diversion and the creation of a “micro-entity” fee structure.  The Senate also passed provisions regarding third-party challenges, limitations to parties that can bring claims for false marking, provisions regarding inventor oaths, and the removal of failure to disclose the best mode as a means to invalidate an issued patent.

Honestly, I expected a more traditional Senate debate.

Some of the aspects of the Patent Reform Act of 2011 mentioned above have not yet been discussed in this series. These aspects will be covered in future articles. Don’t worry, the bill now must make it through the House Judiciary Committee. This should provide plenty of time to cover the rest of the Patent Reform Act of 2011 in sufficient detail before it receives the final vote.

A Walk through the Patent Reform Act of 2011 – Part 1 – An Introduction

Friday, 25 February, 2011 10:54 Written by Scott Nyman 3 Comments

By Scott Nyman

As some readers may already be aware, Congress is currently sitting atop a bill that is aimed at reforming the way the U.S. examines, allows, and enforces patents. Beginning in March of 2011, the U.S. Senate will likely begin debating Senate Bill 23, otherwise known as the “Patent Reform Act of 2011.” Senators on both side of the aisle hope that the Act will result in patent reform that may modernize, and make more efficient, the U.S. patent system. I am optimistic that the Senate will be able to put forth a bipartisan effort to see this goal realized, especially considering the Senate Judiciary Committee unanimously approved the bill. I am equally optimistic that the bill will have similar success once it reaches the House.

The Patent Reform Act of 2011 proposes changing the several aspects of the current U.S. Patent Act. In the articles to follow, I intend to present the changes to the act to our readers, along with some background information related to those changes. Of course, I will also include some editorial opinion on the proposed changes.

These changes will be briefly discussed in this article, with much more detailed discussions to follow in subsequent articles.  The Patent Reform Act of 2011 proposes to change the system that determines priority of inventorship from its current system to a newer, first-to-file based system. Additionally, the Patent Reform Act of 2011 seeks to provide a better structure for the calculation and awarding of damages. Furthermore, the Patent Reform Act of 2011 expands on the way third-parties may challenge the patent rights of others. Finally, other issues modified by the Patent Reform Act of 2011 relate to false marking, oath, determination of “best mode,” and fee setting.

Keep watch in the following few days, as I will discuss these areas of reform in greater detail. Consider it a blog mini-series.

« Older Entries

SUNDAY, FEBRUARY 05, 2012

Bad Behavior has blocked 1574 access attempts in the last 7 days.