There’s been a lot of talk about the new Patent Reform Act of 2011. Congress has been talking about reforming the patent laws for a number of years now and earlier this year got to work on the latest round of revisions. Although they had discussed some really exciting changes, the actual law that passed was disappointingly modest. However, one of the most talked-about changes did make it into the new law – the move from first-to-invent to first-to-file.
First-to-Invent meant that if you invented something and a competitor filed an application for that exact same invention before you filed your application, there was a court proceeding you could undertake to prove you invented first (it was called an interference).
First-to-File means that if you invent something and a competitor filed an application for that exact same invention before you filed your application, you don’t get to patent your invention.
This might sound like bad news. But the reality is that interference proceedings are actually terribly expensive, time consuming, and challenging to win. Most companies don’t have the resources to undertake what’s effectively a small law suit. If you were a large company with over 500 employees and significant resources, you might have had a budget for interferences. But on average, over the last ten years about 100 interference proceedings are started every year – contrast that with an average of 210,000 patent applications getting filed every year. So not even large companies operating in a great economy were making use of this process with any great regularity.
A lot of people, unaware of the costs and the high burden of proof, have the illusion that a first-to-invent system would have protected them against competitors who can file applications more quickly. I’d say we’re better off with a more honest system that doesn’t hold out this kind of false hope. Developing a valuable patent portfolio is hard enough without that.
After years of waiting for patent reform, and agonizing over whether it would be good or bad or useless, the patent world may soon find out that Congress has actually passed a reform act. I hear the Senate is voting as we speak and that very soon we’ll have some interesting changes to discuss! Two of the more exciting things from my perspective would be:
– that the Patent Office would have the authority to set fees – and define the filing discounts smaller companies get!
– that the Patent Office can keep the fees it collects, instead of being required to give the majority of the fees over to Congress.
I’m going to go back to hitting “refresh” on the web sites and will post an update when there’s news.