By Matthew Burr

On Tuesday, March 3, 2009 the “Patent Reform Act of 2009” was introduced in Congress. This is the latest effort to pass this legislation, which has been knocking around Washington for years, into law. The 2008 version died in the Senate last year. It is thought by many observers to have a better chance of becoming law this time around.  In fact the bill was approved on April 2, 2009, in a 15-4 vote of the Senate Judiciary Committee. The bill now moves to the Senate floor.

With the prospect of eventual passage of the bill, let’s take a look at it and see what we’re in for.

The Bill has two overriding objectives. The first is to amend the existing patent statute (Title 35 of the United States Code) to bring it closer into harmony with worldwide patent practices. The second and more controversial objective is to address concerns about patent litigation and so-called “patent trolls,” which are outfits that do not produce any goods or services but instead own patents and then sue for infringement on those patents.

One of the most significant changes relating to the first objective of harmonizing US patent practice with the rest of the world is the change to a first to file system. This means that if there is a dispute between two or more inventors, who all claim the same invention in separate patent applications, the winner who gets the patent is the one who filed his patent application first.

Currently, if there is a dispute about who was the first to make an invention, the winner goes to the first to invent the invention. This means that, at least theoretically, someone who files a patent application after some else has filed for the same invention could prevail and be issued the patent over the first filer. 

As you can imagine, it is very complicated to determine whether someone made an invention before someone else.  It requires showing, in a formal proceeding called an “interference,” when the invention was conceived, when it was reduced to practice and whether diligence was exhibited between conception and reduction to practice.

The advantage of the current first to invent system is that it can benefit individual inventors or small companies that might not be sophisticated about patents. 

The advantage of the first to file system is that it provides a measure of certainty to the patenting process and thus makes the decision about whether to spend the money for a patent easier.

Among the disadvantages of the first to invent system are that some uncertainty is inherent and the interference proceeding is difficult and expensive.

Among the disadvantages of the first to file system is that it creates a race to the mailbox and favors (typically) large, sophisticated applicants who have the resources to file more regularly file applications.

As much as my personal sympathies are to champion individual inventors, you would think I would not favor the change to the first to file system. However, I do favor the change. I think the mechanism of the interference for determining the first inventor was appropriate before the information revolution of the World Wide Web, but it is now archaic. The web makes information easily available to almost everyone and levels the playing field substantially between sophisticated patentees and novices. Interferences have become so rare and are such an arcane practice area for attorneys that I think they will not be much missed.

I also think harmonizing our practices with the rest of the world is worth the reasonable trade off of the loss of the interference.

In my next posts I will look at the controversial litigation reform provisions that go after the patent trolls. 

In subsequent posts I plan to discuss the changes that will allow patents to be issued to corporations or other entities rather than to the inventor (will this change pass constitutional muster?) and I will also discuss the so-called patent opposition procedure.

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