The United States Senate has passed the America Invents Act, the patent reform legislation that has been working its way through committees for several years. Because the Act passed the Senate by an overwhelming bipartisan majority, a form of it is also likely to be approved by the House of Representatives. Changes are also possible as leaders in the House have their own ideas about patent reform.
The Act has a number of provisions that will be advantageous to inventors. The first is a transition to a first-to-file system. While this may seem to be a disadvantage to individual inventors, in practice, it is slightly advantageous to individual investors. In the past, inventors could show prior inventorship, even if they filed their patent application later than another inventor, in an interference proceeding. However, interference proceedings are expensive, and are usually won by the side with the most money such as big corporations. Transitioning to a first-to-file system will likely help individual inventors who often file provisional patent applications early in the inventive process.
Another advantageous provision allows for the United States Patent and Trademark Office (USPTO) to set fees and keep the fees that it collects. In the past, the USPTO has been forced to divert much of the revenue from filing fees to government coffers, reducing the number of examiners it was able to hire. Allowing the USPTO to retain all the fees it collects will ultimately increase the number of examiners and reduce the patent backlog. In addition, the USPTO will have more latitude to implement its strategy of allowing some patent applications to receive accelerated examination for a fee, while allowing other applicants to delay the examination of their applications. Both new options will be very advantageous to inventors both by increasing options and reducing the application backlog.
The bill also includes several provisions making it easier to oppose an application, both during examination and after grant. In the past it was difficult for interested third parties to influence the prosecution (examination) process. The current bill makes it easier for third parties to submit art for review with explanations about the arts importance.
In addition, the Act allows third parties to oppose post-grant patents in a new opposition system that may have advantages over the current reexamination system. This may help some companies avoid infringement litigation by allowing the more rapid invalidation of questionable claims.
The patent reform legislation also has something for taxpayers. It may eliminate some tax strategy patents, although under the Supreme Court's Bilski, this type of patent has become less important.
We will have to wait and see what the final legislation looks like. However, it is likely to be positive and to increase the importance of filing early provisional applications to secure the earliest possible filing date for an invention.
The Act has a number of provisions that will be advantageous to inventors. The first is a transition to a first-to-file system. While this may seem to be a disadvantage to individual inventors, in practice, it is slightly advantageous to individual investors. In the past, inventors could show prior inventorship, even if they filed their patent application later than another inventor, in an interference proceeding. However, interference proceedings are expensive, and are usually won by the side with the most money such as big corporations. Transitioning to a first-to-file system will likely help individual inventors who often file provisional patent applications early in the inventive process.
Another advantageous provision allows for the United States Patent and Trademark Office (USPTO) to set fees and keep the fees that it collects. In the past, the USPTO has been forced to divert much of the revenue from filing fees to government coffers, reducing the number of examiners it was able to hire. Allowing the USPTO to retain all the fees it collects will ultimately increase the number of examiners and reduce the patent backlog. In addition, the USPTO will have more latitude to implement its strategy of allowing some patent applications to receive accelerated examination for a fee, while allowing other applicants to delay the examination of their applications. Both new options will be very advantageous to inventors both by increasing options and reducing the application backlog.
The bill also includes several provisions making it easier to oppose an application, both during examination and after grant. In the past it was difficult for interested third parties to influence the prosecution (examination) process. The current bill makes it easier for third parties to submit art for review with explanations about the arts importance.
In addition, the Act allows third parties to oppose post-grant patents in a new opposition system that may have advantages over the current reexamination system. This may help some companies avoid infringement litigation by allowing the more rapid invalidation of questionable claims.
The patent reform legislation also has something for taxpayers. It may eliminate some tax strategy patents, although under the Supreme Court's Bilski, this type of patent has become less important.
We will have to wait and see what the final legislation looks like. However, it is likely to be positive and to increase the importance of filing early provisional applications to secure the earliest possible filing date for an invention.
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