Thursday, 02 June, 2011 19:59
Written by Scott Nyman
Scott Nyman
As you may recall, I wrote a series of articles (here, here, and more) about the America Invents Act, formerly known as the Patent Reform Act of 2011. In the articles, I outlined the proposed changes to the US Patent System from where it stands today. I also included some views and commentary regarding what I believe is representative the patent community. That view? First to file hurts inventors and is a step backwards for the American inventive spirit.
This week, U.S. Commerce Secretary Gary Locke has issued a press release outlining the Obama Administrations take on the act. Locke states,
The America Invents Act, sponsored by Chairman Smith, enhances the U.S. patent system by increasing certainty of patent rights through implementation of a first-inventor-to-file standard for patent approval while also reducing the need for cost-prohibitive litigation, which all too often ties up new ideas in court, stifling innovation and holding back job creation. It will also allow the United States Patent and Trademark Office (USPTO), which is entirely fee funded, to set and retain the fees it collects from its users. This fee-setting authority will ensure high-quality, timely patent review and address the backlog of patent applications that is currently preventing new innovations from reaching the marketplace. Ultimately, the proposed legislation will provide the most meaningful reforms to the U.S. patent system in 60 years.
The press release continues, stating, “In meetings with CEOs and U.S. business leaders from companies of all sizes, the shortcomings of the U.S. patent system and the need for reform has almost always been a topic of conversation.” This comes as no surprise, seeing how first-to-file patent systems tend to favor business and corporations that can afford to file a large number of patents just to lock in a priority date.
Although Locke argues, “The cost of proving that one was the first to invent under the current first-to-invent system has been prohibitive for many small inventors, generally favoring larger entities better equipped to handle legal challenges. With the appropriate resources to process patents more quickly, inventors will be able to use their intellectual property rights as vehicles to leverage new sources of funding for their innovations.”
Under the current system, in a debate over the first-to-invent, the Courts will initially look at the filing date. An inventor claiming to priority over a previously filed patent must be prove their priority with cold, hard evidence. Also, the inventor has to continually develop the invention. If he or she comes up with the conception for a new invention, and fails to diligently pursue developing the invention, the right to claim priority will be lost.
Under the new system, how are inventors supposed to use the funding received earned through their intellectual property if they can’t file their application as fast as a multibillion dollar company with an entire patent department?
The USPTO has some great ideas to improve its operations, such as the first full action interview program, a government-wide training database, and committing to remain open through threatened government shutdowns.
If you want my opinion on how to improve the US patent system (and I’m sure you do!), allow the USPTO to keep all the revenue it generates, revive the plan for satellite offices, and burn through that patent backlog. Granted, it’s easy for me to sit here in Florida and say this. However, this is the plan the USPTO had in place, which it recently scrapped.
You can read the entire press release here:
http://www.uspto.gov/news/pr/2011/irl_2011may31.jsp
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