The lines have been drawn in the sand regarding the Patent Reform Act of 2005 (HR 2795). Most recently, testimony was given (Legislative Hearing on “The Amendment in the Nature of a Substitute to H.R. 2795, the ‘Patent Act of 2005’ ” (September 15, 2005) before the Subcommittee on Courts, the Internet, and Intellectual Property representing widely divergent interests including, among others, the software industry, pharmaceutical companies, biotech start-ups, and independent inventors.

By and large, the provisions are directed toward three issues existing in patent law today: 1) patent quality; 2) international harmonization; and 3) unwarranted or abusive patent litigation. (Senator Orrin Hatch: Remarks to Generic Pharmaceutical Association (Sept. 20, 2005)). Some of the provisions benefit patent holders while others benefit those defending themselves from patent infringement lawsuits.

This series will include postings regarding the various proposals in the Patent Act of 2005 including the 1) First-Inventor-to-File; 2) Assignee Filing; 3) Best Mode Requirement Repeal & Publication of Applications after 18 Months; 4) Duty of Candor in Front of the USPTO; 5) Willful Infringement; 6) Repeal of §271(f) for Software; 7) Apportionment of Damages for Infringement in the Case of a Combination; 8) Injunctions; 9) Continuation Applications; 10) Inter Partes Reexamination; 11) Prior User Rights; 12) Post-Grant Opposition Proceeding in the USPTO; 13)Submissions by Third Parties; and 14) Venue.

Since the Patent Act of 2005 was not [a] front burner issue (Senator Orrin Hatch: Remarks to Generic Pharmaceutical Association (Sept. 20, 2005)) as the first session of the 109th Congress came to an end this fall, there is plenty of time to contact your representatives and let them know what you think of these provisions.

First-Inventor-to-File

The United States is currently a first-to-invent system but this legislation would change it to a first-to-file system. This proposal serves Senator Orrin Hatch’s objective of international harmonization. If passed, the legislation would align the United States with the rest of the patent world by granting a patent to the first person to seal an application in an Express Mail envelope and have it stamped by a U.S. postal worker.

The current system allows a later filer to prove to the USPTO that they actually invented their claimed subject matter before the earlier filer. If they succeed, the later filer may receive the patent grant.

This change has those representing the independent inventors howling that this is clearly a pro-business stab into the heart and soul of United States patent law. No longer will the solitary inventor, toiling away in his garage lab by candlelight receive the recognition he so richly deserves! They fear that well-heeled businesses will too easily nab patent rights away from the true inventor. (35 U.S.C. 102(f) actually prevents the awarding of a patent to a quick filer that did not invent the subject matter so don’t throw away those lab notebooks yet!) Their fears have served as a rallying point to amass support to defeat similar proposals in the past.

This rhetoric clouds the issue but there is an easy solution to their fears: the provisional patent application. For a nominal fee, this trick buys an inventor a place in line and an extra year to fully develop their patent application. No claims are required at this point – only a written, enabling description of the invention and the best mode known of practicing the invention (as of the provisional filing). (35 U.S.C. Section 112).

Many inventors delay filing their patent applications (both independent inventors and those who work for corporations) because of the misconception that the USPTO requires a perfected, working embodiment before they can file for a patent (provisional or non-provisional). Not so! It may require years to make a marketable product out of an invention. If you can describe what your invention is, how someone else can create it, and the best way known of practicing it (even if you have never actually created the final product), then a valid provisional patent application may be submitted. As inventors make further developments, additional provisional applications may be filed (up to the one year time limit).

The proposed legislation is not really against the independent inventor. (Besides, only 15-20% of the claims that an earlier inventor, who did not file their patent application first, should receive a patent succeed.) Mostly, it is aimed at encouraging early filing of patent applications (which merely comports with the spirit of United States patent law to encourage early disclosure in exchange for a short-term monopoly). As far as the United States is concerned, it gives a nod to the rest of the world that the United States doesn’t always insist on things being done their way.

Next Up: Part 2. Assignee Filing and Best Mode.

Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

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