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 covering the Act. As a refresher, Senate Bill 23 is currently making its way through Congress, otherwise known as the Patent Reform Act of 2011, with the hopes of reforming the way the U.S. examines, allows, and enforces patents.
Last time, I covered the proposed transition to from the traditional U.S. “first-to-invent” system to a simpler “first-to-file” system, which is followed by Europe and the rest of the world. Today, I was planning on discussing the new provisions of the Patent Reform Act of 2011 related to damages. But, since there has been such a tremendous buzz circling the internet lately about the “first-to-(fill in the blank),” I feel that this topic deserves some additional discuss before I can file it away as “covered.”
Patrick Anderson, who runs another quality intellectual property blog GametimeIP.com, has noted in one of his articles, “changes to the treatment of inventors (such as ‘first to file‘ and changes to the inventor’s oath provisions) at a minimum send the wrong message to innovators, and potentially threaten to harm innovation and progress.” (source) Likewise, Gerry Elman of GEN Magazine commented, “without a transformation of the information technology supporting patent examiners, patent reform would be like rearranging the deck chairs on the Titanic.” (source)
A recent article posted at PatentlyO discusses the implications the Patent Reform Act of 2011 would have on obviousness (or inventive step, to the rest of the world). In this article, the author raises the issue that the contents of a previously filed, yet unpublished, application could be use to make an obvious-based rejection during prosecution by the USPTO, creating a “secret prior art”. In other words, the USPTO could find it obvious for an inventor to combine prior art references, which references are being withheld from him by the USPTO. Make sense? I do not think so either. The last time I tried to make sense out of the “you should know what we won’t tell you” line if thinking, I was in law school.
The article at PatentlyO also brings up an interesting point that the Patent Reform Act of 2011, as it currently stands, would actually cause the U.S. patent system to overshoot the harmonization of patent priority laws to that of the rest of the world, making the new U.S. law more prohibitive for inventors. As said best in the article, “under our current invention-date-focused system, some inventions are patentable in the US that would not be patentable in Europe and Japan. On the flip-side, once the bill is passed, there will be a new set of inventions that are patentable in Europe and Japan, but not patentable in the US.” (source)
As you can imagine, people haven’t been shy about voicing how they think the current U.S. patent system should be reformed without stripping the law of its inventor-focused roots. One of the best suggestions I’ve encountered was from Bruce Hayden, chairman of the intellectual property committee of the IEEE, a group comprised of electrical engineers such as myself. Mr. hayden suggested, “rather than pursuing questionable reforms in S.23, we urge [Congress] to turn instead to a bill that would command immediate and universal support—a bill that adequately funds the PTO and allows the agency to retain the fees that it collects,” said Hayden. (source)
I completely agree.