“May you live in interesting times”, or so they say. The USPTO and IP attorneys have been handed very interesting times indeed with recent Supreme Court decisions and Congressional alignment in pushing ahead the Patent Reform Act of 2007. History may show the turning point of frustration to be NTP’s infringement case against RIM that almost shut down the Blackberry network. Ever since, a campaign against patent infringement litigation has swung public opinion towards resolving patent gaming.
Here’s a reader’s digest version of the Patent Reform Act’s main provisions and some insights from around the web…
First to File
The U.S. has bucked the trend globally by using a “first to invent” system that allowed proof by inventors showing they conceived an idea before someone else. A filing date at the USPTO is easy to track, and avoids costly contesting cases using less verifiable means to determine the true first inventor.
Post Grant Review
Far more controversial, the Patent Reform Act seeks to open up a window where patents can be reviewed after issuance. Specifically, a patent’s claims can be petitioned by anyone up to 12 months after grant or within 12 months after being claimed as an infringer on a patent. Companies riddled with infringement suits, like Microsoft and Intel, agree with this provision as it provides a timely review of whether the patent should have been issued in the first place. Critics complain that the PTO’s examiners are in place to do such a review in the first place and that a post-grant review is merely than second guessing and that more emphasis should be put on pre-grant funding and put less pressure on examiners to churn through large volumes of applications each quarter. This provision may not make it to vote as inclusion in any form looks shaky.
Tying Infringement Damages to a Patent Claim
The current system allows a patent owner to take claim to profits of a product that uses it, regardless of the number of other patented concepts a product may use. Semiconductors and the iPhone use many, many different concepts that require a large number of patent owners to grant rights to ensure a “clean” product that doesn’t infringe patent claims. The Act’s proposal attempts to separate infringement claims to value that the patent includes. Microsoft’s loss to Alcatel for $1.5 Billion has been used to show that a patent on multimedia shouldn’t lay claim to its OS revenues. Easy to say, harder to assess, especially in court where a judge and jury would need to make a determination of the value of oscillator rings for microprocessors, for example.
Restricting Venue for Litigation
Today many cases are filtered to the speedy and patent owner friendly Texas Eastern District Federal Circuit Court. The Act’s proposal would narrow the venue to logical venues where the owner resides with little room for “venue-shopping” in advance of filing litigation suits.
Applicant Quality Submissions
The Act requires a search report related to an application and the PTO has the right to deny submissions that do not submit one. While previous law required patent owners to submit relevant prior art that was uncovered during the invention and review process, this provision goes one step further stating applicants need to do a search for patentability as part of preparing a case for filing.
USPTO Allowed to Increase Fees as Needed
Insiders have known for a long time that the PTO is a cash generator for the government. With the boom in applications, the PTO was granted more budget by Congress, but future funding was still tethered to Congressional approval. Finally, the PTO can ensure that it can fund its needs (like hire more examiners) to handle its workload.
What’s not in the Act
Hopes for a two-tier system, or deletion of software patents altogether, are not being met. [Maybe the Abstract Factory's proposal of using StarCraft as a means of setting software-based infringements, maybe not, but nice post]
Wrap
Combined with the recent KSR ruling on Obviousness, how good does the auction winner of this $2.86 million patent feel? To be sure, Intellectual Ventures is sitting in a precarious position for monetizing its large pool of filed and purchased patents see a different set of rules get pushed forward in 2007.
Where this all leaves individual inventors and small companies is a great question. Many lobbying efforts are being put forward to ensure big companies and universities’ needs are being kept in mind in revisions of the Act.
The key question is whether this Act can make it in one piece to vote or if it’ll lose steam going into and possibly after the August break. Think any of the Patent Reform Act will be dated 2007?
Copy of the original Patent Reform Act of 2007 via The Fire of Genius
Updates to the Act here and here via The 271 Patent Blog
Is the House getting it right on patent reform? via the Patent Hawk
Can Patent Reform Cross the Finish Line? Chicago IP Litigation Blog
The REAL Purpose of S.1145/H.R.1908 Patent “REFORM” Legislation
“Not a single section in this proposed legislation is for improving the patent system! And NONE OF THEM are directed at reducing the massively INCREASING, backlog of PENDING Patent Applications. ALL of them are designed to spread Web based Land Mines to cripple American patents and Inventors, while REDUCING THE EXPOSURE OF INFRINGERS! This, CLEARLY, cannot help the people who created the jobs and wealth that make America the most creative technological engine the world has ever known! And it would ABSOLUTELY, POSITIVELY, DESTROY AMERICA’S TECHNOLOGICAL SUPERIORITY!” (Retired Bell Labs Patent Attorney)
S.1145 is being RUSHED THROUGH COMMITTEE, before the Senators CAN DISCOVER that Nothing in it helps American Inventors or Invention or Innovation. And NOTHING IN IT is Good for America! It will only benefit its Goliath Multi- National sponsors!
As a long time Professional Inventor, I can assure you that this bill will be a DISASTER for American Technology, as was shown in the FORTUNE article — http://money.cnn.com/2007/07/02/magazines/fsb/patent_interview/?postversion=2007070306.
THIS LEGISLATION WOULD DESTROY OUR PATENT SYSTEM and ECONOMY!
This Doublespeak legislation is NOT designed to solve problems with the patent system. It is craftily crafted to PROTECT the sponsoring multi-national corporations from the consequences of “borrowing” — without recompense, the Inventive Property of creative American small businesses, universities and independent inventors! These, together, create virtually ALL OF THE BREAKTHROUGH INVENTIONS WHICH MAKE AMERICA GREAT!
This Legislation would provide a clear path for countries like CHINA to usurp even MORE of our manufacturing power – including America’s mainstay automotive and Electronic industries. NO MANUFACTURING — NO PAYROLLS – AND A DYING AMERICAN ECONOMY!
WHY THE AMERICAN PATENT SYSTEM WORKS
The purpose of the American patent system is to grant a limited, short term, monopoly if an inventor FULLY describes his or her invention. The Patent Application description of the invention is to advance the art and TEACH it so that other Americans can build upon it. THAT is the purpose of our time tested,The purpose is NOT to SELL products. successful patent system.
BUT because the Patent Office is DISMALLY UNDERSTAFFED AND UNDER FUNDED – it is INCAPABLE of EXAMINING THE INCREASING FLOOD OF PATENT APPLICATIONS. Because of this — patent application pendency is now about 800,000! In plain English – that is Eight Hundred THOUSAND applications BEHIND – and getting further behind every day. So IF the USPTO were to accept NO NEW APPLICATIONS – it would take more than FIVE YEARS to complete them with the examining staff currently on board.
S.1145 WILL ABSOLUTELY MAKE THE BACKLOG WORSE!
patent reform act 2007 bad for inventors is bad for america. First to file concept was created to get patents into the correct name instead of the wrong name in its present form it gets rid of 1/2 of a way to commit patent fraud and establishes 2 more ways on top of the 3or 4 already existing.
patent reform act 2007 bad for inventors is bad for america. First to file concept was created to get patents into the correct name instead of the wrong name in its present form it gets rid of 1/2 of a way to commit patent fraud and establishes 2 more ways on top of the 3or 4 already existing.
patent reform act 2007 deals inventors more atrotices. the present system is bad enough just look patents are stolen by intellectual material hold ups and deaththreats and intimidation and threat of wrongful prosecution extortion attempts and every dirty thick in the book. the actual inventor in each instance never sees a dime for all his injenious abilities. thieves and profeteers steal it all. In addition to these personal attricities there are legal ones such as forming clans of liars to run originally stolen inventions back into time to create new double stolen inventions. Employees at work are forced into lifetime invention agreements as a condition of employment steeling there incentive to invent in violation of slavery abolition rights. inventors intellectual material rights stop at 1 year allowing the theft of there intellectual materials. If an original inventors development team is not progressing fast enough the invention is awarded to another team with no compensation for the intellectual materials. many more inventions are accidently disclosed in conversations or created and then never paid for or were created in national or humanitarian need and then never rewarded or acknoledged. The reform act does nothing to correct any of these situatio ns except first to file but this legislation allows up to one year discussion time before filing the patent allowing individuals to claim theft of invention in this time period. the only way to correct this is by starting patent office post deadline filing days where nobody can claim theft unless they can produce that same idea on the same day from locked lockers.
Applicant Quality submission Act Talk about a fraud attempt. Before filing you must complete a complete study of revelant prior art. This will allow any one who wants to steal your patentable idea to see what it is by computer hacking and connecting the dots.
Whats missing from 2007 reform act. It does nothing to establish inventor security when dealing with billion dollar ideas why would security not be the first concern in establishing a integretious patent system. Patents are stolen then corruptly horse traded. The system has never recognized the theory of master inventor creating all major invention or even considered or investigated.This has allowed the thefts of all or nearly all intellectual materials that have been applied for since 1790. Another factor is that pataent review boards are controlled by inventors who certantly would not be impartial to the master inventor who they stole intellectual materials from. another problem with first to file changes is the theftors will simply change tactics to accusing intellectual material thefts when the master inventor files first. Post deadline filing days must accompany first to file in order to establish integrity. this way if they are unable to identify the invention stolen they cannot claim this.
please see http://www.piausa.org/ for a different/opposing view on patent reform
Please see the proposals for reformation of the patent reform act of 2007/2008/2009 and discover the amazing true history of invention conception since 1790.
http://www.worldsonlyinventorofsignificancearguably.com