The Leahy-Smith America Invents Act, also known as the latest version of the patent reform bill, was signed into law on Friday by President Barack Obama.
Among the major changes in the legislation is turning the US patent system into a first-to-file patent system as opposed to a first-to-invent system. The US Patent and Trademark Office's current use of the first-to-invent system awards a patent based on the conception of the invention, not necessarily when it is filed. The first-to-file system, as the name suggests, awards a patent to the first person who files for it.
Proponents, including technology companies like Microsoft, Google and Apple have rallied for the first-to-file system, saying it makes the US intellectual property system more competitive with those in foreign countries. However, smaller businesses have said the change in filing standards puts them at a disadvantage.
For more on this ZDNet UK-selected story, see Patent overhaul signed into law by Obama on CNET News.
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Talkback
Oh dear! This means prior art goes out of the window. I foresee more litigation/protection, not less, and the big boys winning big.
It would be nice if it were otherwise.
I have thought about this first to file versus first to invent issue. The first to invent inventor that sits on his hands without making his useful invention public and waits for someone else to file a patent covering the invention should not be able to extort some kind of settlement out of the person that innocently filed the patent. Typically cutting himself in on the ownership rights and royalties by proving he invented it years earlier. I think the first to file is a much more progressive way to handle patents. The patent holder is still somewhat of a hostage to the original inventor if the invention was made public over a year prior to the filing of the patent. Therefore there is a statutory bar on patenting it and the validity is certainly questionable and well as the enforceability of it if the public use is known. It begs the question that: Is the original inventor a member of the public himself. If so, then only the original inventor can really get a patent on the invention because any other disclosure of use of the invention would likely exist over a year before the filing of the patent application. If the original inventor did make it public and waited 366 days, then he himself would be barred from patenting it as well. To do so would be fraud on the patent office.
So the way I look at this is that the patents should be filed by the original inventor within the first year and hopefully as soon as he can do it. If he waits he risks losing sole rights to it, assuming it is issued. If someone else patents it first, my guess is that they will have to pay the inventor off or possibly have their patent invalidated by prior use or disclosure.
The other question is how did the patent filer become aware of the invention in the first place? If there was any kind of collaboration or theft of intellectual property, that is another whole can of worms. There are plenty of unethical, lying cheats around these days. I have read that patent litigation can run into several million dollars per case and span over four or five years. This all should make the money grubbing bar members happy and of course fat!
The moral of this story is: Don't sit on your hands or your behind until you get your patent application filed!
Actually this bill creates Prior Use Rights, which were only allowed in a very limited number of circumstances prior to this bill. As long as someone can show that they used an infringing item for at least one year prior to the patent origination date, that person can continue using the item indefinitely. That right to use can even be transferred to another person if it is part of the transfer of an entire business, and can be expanded to be used in other factories owned and operated by the same owner.
TrueInventor is also correct that an inventor should file as soon as possible. There are new rules allowing people a year from the initial filing date to complete the patent process, so there is no waiting around until you can fund the patent filing before actually doing so and hoping that someone who has more detailed and accurate notes describing the invention does not swoop in and file before you. With the old system, big firms and companies had the advantage of knowing exactly what was needed for a patent to accepted, while small inventors struggled to meet the demanding requirements. This new system makes it easier for inventors to file as soon as possible and be successful in their filings.
The new system also cracks down on Ex Parte filings which has historically only hurt small inventors. Companies could previously file as many ex parte claims against a patent until the small inventor could no longer afford the fees and give up on their patent.
This bill drastically helps out small inventors and stream lines are currently overburdened system.
So what ever happened to the statutory bar on public use of the invention over a year prior to the patent application filing?
Is that bar nullified for all other members of the public that have not pre-invented and used it without patenting it?
Sounds like a way to prevent a legally barred patent from being stricken down by the statutory bar, so the entire world can not use it freely when they should be able to. It all depends on if was used in the public domain in other than purely experimental use which is well documented. Even using it internally in a company without major employee safeguards in place could easily be construed as public use. If it is used out in the open space in public, it is all over based upon a statutory bar. Attempting to enforce such a patent is also somewhat perilous if it is shown that such public use was concealed by anyone involved with the invention.
I have seen some recent patents of inventions that are almost identical to long expired patents without proper disclosures of prior art. I a matter of an hour or two I could find expired patents on the same thing. So patents are being used by large corporations as a means of harassment and preventing competition from small business that simply can't afford to nullify a patent in the legal process.
So now it appears prior use exceptions by others in the public domain and re-patenting of worldly established free art is another big invasion of the public's rights to use free art in favor of the big companies that have the resources to play the game and that which monetarily bars 99.999% ( maybe a few more nines are appropriate) of the public from contesting invalid and fraudulently obtained patents. This is understandable when one considers who controls the legislative process in this country, "big corporations".
We will see what the courts have to say about each of the clauses in this law and I am sure it will be absolutely clear 40 years from now, tens of billions of dollars in legal costs later! ( Just kidding!)
TrueInventor
This certainly doesn't help the situation with software patents at all. In fact, this may do the opposite and cause software patents to be filed at an even more rapid pace than they are today. And, the more software patents that are filed and approved, the more grounds for lawsuits as we have today. Be on the lookout for politicians who support the abolition of software patents altogether.