overview of the patent reform act of 2007
The Patent Reform Act of 2007 (pdf here) was approved by the House of Representatives on September 7 by a vote of 220 to 175, and is now awaiting Senate approval.
Although a similar bill, the Patent Reform Act of 2006, failed to gain momentum last year, it appears the Patent Reform Act of 2007 may actually have a chance of being approved by Congress. As such, over the next few days, we’ll be providing an overview of the major sections of the legislation and its possible effects.
Two sections are covered in this post: (1) the conversion of the U.S. patent system from a “first-to-invent” system to a “first-to-file” system, and (2) the express “clarification” of regulatory authority in the USPTO to promulgate rules to ensure the quality and timeliness of applications.
Conversion to a First-to-File System
The current version of the Act would convert the U.S. patent system from a “first-to-invent” system to a “first-to-file” system. More specifically, under the current system, if two individuals develop the same invention, the first inventor is entitled to the patent, regardless of who files the application first. Under the proposed changes, the first one to file the application would be entitled to the patent, regardless of who first discovered or developed the invention.
However, the Act does provide an avenue for challenging the right of another to a patent. An applicant may institute a “derivation proceeding” alleging that a patentee “derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention.” Current interferences would also be retained for applications filed before the changes become effective.
The proposed “first-to-file” amendments are also contingent. The changes would not go into effect until 90 days after issuance of “an executive order containing the President’s finding that major patenting authorities [at least Europe and Japan] have adopted a grace period having substantially the same effect as that contained [in this Act].” This appears designed to coax Europe and Japan into emulating our 12–month statutory bar, in which an applicant is not barred from obtaining a patent by their own disclosures within 12 months of filing.
The conversion would likely reduce interference proceedings and other litigation over the question of who first discovered or developed a claimed invention. Some argue that the change will disadvantage individual and small entity inventors that are not as well positioned for a “race to file.” However, it does seem that these inventors may be at an even greater disadvantage in litigation.
Express “Clarification” of USPTO’s Regulatory Authority (Quality and Timeliness)
The current version of the Act also “clarifies” the authority of USPTO “to promulgate regulations to ensure the quality and timeliness of applications and their examination, including specifying circumstances under which an application for patent may claim the benefit . . . of the filing date of a prior filed application for patent.” This provision would essentially clarify that the USPTO has the authority to promulgate the rules limiting continuations and claims that were released in final form on August 21, 2007, and are scheduled to go into full effect on November 1.
However, although the Act stresses that this is merely “clarifies” the scope of power granted to the USPTO, the amendment adds an additional procedural hurdle to the promulgation of rules affecting the quality and timeliness of applications, including claims of benefit (continuations). Specifically, new regulations in this area “may not take effect before the end of a period of 60 days beginning on the date on which [they are submitted to both Houses of Congress].” The amendment further specifies that such regulations shall not take effect if Congress passes a “joint resolution of disapproval” and that no court may infer any intent of Congress from a failure to pass such a resolution of disapproval.
I can’t help but wonder how long it will take for this legislation to become a part of the arguments advanced in the pending lawsuit challenging the propriety of the USPTO’s new continuation rules. For example, if the “clarification” requires an additional procedural hurdle, does the USPTO have the authority without this Act? Also, if the Act fails to pass the Senate, does that failure indicate Congress’ unwillingness to affirm this power of the USPTO? Also, what later versions of this provision may alter the scope or interpretation of Congress’ intent with respect to this specific regulatory authority? We’ll keep you up to date on the Patent Reform Act, what effect if any it has on this lawsuit, and other developments that look interesting or noteworthy.
As always, feel free to send us any questions or other topics you’d like to read about …
You may be interested in reading the following related posts:
- Patent Reform Act of 2007 – Part 4
- round 2 – continuation rules review – part one
- Round 2 – Part 3 – Review of the New Continuation Rules
- new continuation rules released — let the games begin . . . and continue
- madrid protocol e-forms at uspto
Posted by Douglas Sorocco, September 17, 2007 at 5:12 pm
Permalink: overview of the patent reform act of 2007
1 Comment
“first-to-file” – does this not signal the possibility of hundreds just sitting at their computers, iPhones, PDAs, and taking the same approach many have with Domain Names?
How many times have we seen ideas wait until later in the process {create, bring to market, see if there is a demand} too pursue a patent?
Patent Office currently is overwhelmed with submissions this could be an administrative nightmare…