Another New Patent Reform Bill is Introduced in the House

On July 29, Rep. Frank Wolf (R-VA), along with Rep. Hal Rogers (R-KY), Rep. Rob Wittman (R-VA), Rep. Candice Miller (R-MI), Rep. Daniel Lipinski (D-IL), introduced a bill entitled “Bring Jobs Back to America:  Strategic Manufacturing and Job Repatriation Act.”  Section 8 of the bill relates to changes to the patent system.

The first major change is that the bill seeks to eliminate pre-grant publication of patent applications and instead only publish abstracts.  This provision will be almost universally opposed by the patent community as less than 7% of patent applications are currently not published prior to issuance.  It is difficult to understand the impetus behind this provision.  The recent trend in US patent law has been to increase international harmonization.  The US was one of the last nations in the world to adopt pre-grant publication when it did so about 10 years ago.

Next, the bill seeks to eliminate much of the so-called “secret” prior art by amending § 102(e) to reduce it almost completely to international applications published in English.  No US applications could be used as prior art under this provision any more.  Again, what is the impetus behind this amendment?

Finally, the bill directs the PTO to give priority in examination to applications filed by institutions of higher learning or patent holding companies affiliated with such institutions.

Congress does some rather strange and unpredictable things, but this bill is simply too bizzare to be anything other than a political re-election ploy on the part of the sponsors.  Given the stalemate over patent reform, it seems highly unlikely that anything resembling the provisions in this bill could be passed.

That being said, there are a number of commentators that are predicting that a lame duck session of Congress may take up patent reform after the elections in November.  Stay tuned . . .

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3 Responses to “Another New Patent Reform Bill is Introduced in the House”

  1. Phoenix Patent Attorney Says:

    What exactly is the connection between US jobs and elimination of pre-grant publication? Really – is there thought that amending our patent law to be less similar to the rest of the world will create (or bring back) jobs in the US? I’ve been trying to figure this out for some time. Perhaps I should accept your suggestion that it is some sort of re-election tactic?

  2. Inventor Says:

    I personally think that a First to File patent system would be better for all inventors, both large and small. A small inventor would not be able to pay the legal fees associated with trying to prove exactly when he/she came up with the idea and has continually worked on the idea since, should somebody start questioning their right to a patent. It would usually be relatively easy and low cost to prove who filed first, therefore increasing the small inventors chances against opposition, even opposition from wealthy corporations.

    I also don’t think it is fair for an inventor to come up with an idea, do all the right things in order to file for a patent in a timely manner, and then only to be refused rights because somebody claims they invented it years ago but haven’t filed for it yet.

    Furthermore, the rest of the world uses the First to File patent system and they only accept an international priority date from the domestic filing date, not the date when the invention was 1st thought of. It would be good practice to try and file sooner rather than later because it would increase the change of success when filing internationally.

    • Matt Osenga Says:

      Inventor,

      As I have posted many times, I agree with you that filing sooner rather than later is nearly always the best way to go. I’m not sure that first to file will be cheaper for small inventors. It will still be necessary to file a complete patent application that meets the statutory requirements for enablement, written description, etc. Many small inventors try to write and file such applications on their own without the aid of any attorney. The results are often predictable: either they can’t get a patent because didn’t provide sufficient detail in the application or they get extremely narrow claims because they didn’t know how or whether they could draft broader claims.
      Futher, under existing rules, to determine priority in an interference or similar proceeding, the senior party must have reduced the invention to practice prior to the junior party (or have been diligent in doing so). He cannot simply have “thought of” the invention and therefore prevail in priority. The diligence requirement would also not permit him to invent something and not file an application on it for years. In such a case, he will be deemed to have abandoned the invention.
      This should address some of your concerns. That being said, I don’t think first to file is an entirely bad idea. The way it’s presented in the reform bills, however, is bad. First, it only goes in to effect if Europe and Japan adopt a grace period that is nearly exclusive to the US. That’s not going to happen. Second, it replaces interferences with a similar “derivation” proceeding. I don’t think much would change in priority disputes if the patent reform bill is passed.
      Matt

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