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Wednesday Mar 02, 2011

Patent Reform: Good for Innovation. Good for Small Business. Good for America

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Today I thought I would offer my thinking on a topic that is getting a lot of attention these days—patent reform. The 21st century, an undoubtedly technological one, demands a strong, clear and expedient patent system to ensure American competitiveness. Presently, that system is in immediate need of attention. That is why President Obama, Secretary Locke and I support Senate passage of S.23, the America Invents Act of 2011.

 

As outlined in our official Statement of Administration Policy released this week, the legislation updates our patent system by offering greater certainty about patent rights, lower fees for independent inventors and micro-entities and faster alternatives to expensive litigation. Moreover, it enables a financially stable USPTO that promotes growth for innovators in all industries and of all sizes.

 

I speak regularly with successful inventors, and they tell me exactly what they need to succeed: secure patent rights in order to access capital, hire employees, and build their companies. This demands a swift and efficient system that doesn't leave intellectual property clogged in the pipelines. S.23 would enable the USPTO to set its fees and recover the actual cost of the services we provide to inventors without costing the taxpayer a dime. By providing our Agency with adequate resources, delays will be minimized and high-quality examinations will be completed in a shorter amount of time. This will help to clear the patent backlog and allow innovators to move ideas to the marketplace more quickly.

 

By moving the United States to a First-Inventor-to-File (FITF) system, the bill establishes greater speed and certainty about property rights in the innovation marketplace, while also leveling the playing field for anyone seeking to participate in global commerce. While I recognize some have concerns about this switch, the reality is that the current First-to-Invent system is fraught with peril.  Under the current system, a host of objections can be raised in litigation that undermine a patentee’s rights. Such litigation is expensive and time consuming.

 

Passage of this legislation will also reduce the prohibitive cost of challenging issued patents by creating an in-house post-grant review process which will provide a faster and much cheaper alternative to costly and drawn-out litigation.

 

Enabling growth for industries of all sizes optimizes our ability to spur innovation, create new jobs, carve out new industries and enable new services to address social needs. 

 

In the past 50 years we have seen more technological advancements than at any point in history but with no comprehensive patent reform to keep up with the times. In this century, we can’t expect tomorrow’s economy to take root using yesterday’s infrastructure. In order to bring ideas to market—in order to get ideas to capture funding—we must adopt a system that is more efficient for all who use it.

 

By enacting this bill, we’ll be able to revitalize our economy, unleash American creativity and win the future by catalyzing new industries that keep us competitive for generations to come.

 

Thanks for your continued support of the USPTO.  As always, I’m interested to know what you think—in this case, about patent reform.

Comments:

To increase patent quality and take a bite out of the backlog, I submit that the process of examining patent claims should be reengineered. Last month Jeopardy! featured a man-machine showdown that piqued the public fancy. An IBM computer, Watson, beat out a couple of human champions. Coincidentally, Alexander Poltorak received notice that his U.S. Patent 7,904,453 for analyzing patent claim validity is to issue March 8th. I don’t know whether '453 is the solution, but isn’t it time that we provide to U.S. patent examiners a tool that presents an organized report of the prior art that’s most pertinent to each element of each claim under examination? In effect - an automated version of the Examination Support Document (“ESD”) that in 2007, the PTO had announced it would require many of us to generate. And cf. the current MPEP 708.02(a). See http://ht.ly/458wj for more on this.

Posted by Gerry Elman on March 03, 2011 at 01:12 AM EST #

It is imperative that Congress support implementation of computer-assisted patent examination. And there is good news from the House of Representatives. As reported Feb. 13th by The Hill, Rep. Bob Goodlatte (R-Va) said that the most likely focus of the House version of “patent reform” would be on “increasing the speed and quality of the patent process,” commenting further that the PTO “doesn’t use enough technology to ensure products are unique and worthy of a new patent, making the process slow and cumbersome.” It seems to me that Rep. Goodlatte is spot-on. Having come to government service from a career at IBM, you are uniquely qualified to lead us towards this beneficial transformation. Until the PTO provides a Watson-like analytical infrastructure for patent examiners, it seems to me that the whole patenting process will remain in jeopardy. In the legendary words of Alexander Graham Bell: “Watson, come here. I want you.”

Posted by Gerry Elman on March 03, 2011 at 01:13 AM EST #

S.23 increases the scope of invalidating activity in the U.S., i.e., it guts the one-year grace period. Under current law, on sale or public use activity only constitutes prior art if it occurs more than one year before the application filing date. The language of S.23 shows that no grace period would be allowed for pre-filing sales or use. The grace period language in the proposed bill only relates to disclosures. A person could be prevented from obtaining a U.S. patent, but a patent could still be obtained in other countries. In most foreign jurisdictions public use without enabling disclosure is not a disclosure that defeats the novelty requirement. Not so under S.23. It would create a condition that does not exist under those foreign patent systems - to the detriment of those seeking patent protection in the U.S. It would create an uneven playing field where inventors find that they are more likely to lose patent protection in the U.S. than elsewhere. This is progress?

Posted by Brian Fletcher on March 03, 2011 at 01:24 PM EST #

What steps are being taken within the in-house post-grant review system to make sure that parties cannot game the system to shoot down valid applications? One can imagine such a strategy being used to strip new inventions of patent protection.

Posted by Nickolaus Leggett on March 03, 2011 at 05:37 PM EST #

Think of an invention like a "baby." A first-to-file system means your baby has no rights until delivered into the hands of the USPTO. But your baby has been growing in the womb of innovation since conception. Suppose we have two women. "A" conceives first, followed by "B." But in order to obtain priority under the first-to-file system being proposed by Senate bill S.23, "B" takes drugs to induce premature delivery. Obviously, a first-to-file system is not healthy for inventions for the same reason premature delivery is not healthy for babies. I oppose passage of S.23 in the Senate because a first-to-file system will put pressure on inventors to delivery their inventions into the hands of the USPTO prematurely in order to obtain priority over inventors who follow the natural course of the invention process.

Posted by Eurica Califorrniaa on March 03, 2011 at 11:42 PM EST #

Any way to remove some of the more controversial amendments tagged on at the end. Especially the ban on Tax Patents (S.23, Sec. 14)? I am for strong patent rights, patent office control of its own funds, and improving patent quality. Improving patent quality is best accomplished by improving the number of examiners and improving examiner retention time, leading to more experienced examiners at the office. If we improve patent quality it may reduce some of the 3000 IBM patents issued each year, but the ones issued will be innovative and not obvious. Thanks, Mike

Posted by mike on March 04, 2011 at 02:56 PM EST #

There is an insoluble dilemma associated with the first-to-file program. If we allow continuation-in-part applications to retain priority (which S.23 does under 35 U.S.C. 120), then successive continuations-in-part will block out a huge swath of inventions conceived earlier by others but added as new matter by one with an earlier filed parent application. Accordingly, it would make sense for big players to keep a pool of parent applications "floating" around, to make sure that new inventions in the same general field are treated as new matter added to an application with first-to-file priority, rather than running the risk that someone else has already filed. Thus, the first-to-file system would hurt first time applicants and favor repeat applicants. On the other hand, if we do not allow continuation-in-part applications to retain priority, then a host of problems will arise as well. For example, technical defects in an application would open the door to someone who was not only second-to-conceive but also second-to-file. Exemplary technical defects include accidental omission of a drawing figure or failure to include the language "implemented by a computer" in a process claim to distinguish it from a mental process.

Posted by Eurica Califorrniaa on March 08, 2011 at 05:28 PM EST #

I have commercialized my own invention with sales in domestic and international markets. Thomas Edison was not exaggerating when he stated that inspiration is 1% inspiration and 99% perspiration. I would actually peg it at 0.1% inspiration (1/1000th) based on my experience. I can assure you that no one wishes to go through commercialization hell only to have someone else try to take away his profit when the latter has done nothing to deserve it. The FITF system rightly protects the first person to file, who then has the legal protection to pursue commercialization. Keep in mind too that first-to-market is not always an advantage. Those with more resources (e.g. corporations) can afford the IP attorney’s fees and get to market first. Yet if an invention is truly innovative, it would also require much more educating the market and time to acceptance. Independent inventors are an ingenious lot; they can always improve on existing products. Somehow the lack of financial resources for the typical independent inventor has a way of reaping later-to-market advantages especially when it comes to true innovations. This combined with the other logistics and cost advantages already posted in Director Kappos’ blog makes all the sense in the world to do the patent reform. This new system prevents someone from usurping any hard-earned benefits when he has not contributed to the effort. Once again, it's never the product but the business activities behind an invention that makes it successful.

Posted by Dick Liou on March 22, 2011 at 03:59 PM EDT #

Dear David, has the USPTO given any thought to whether any changes should be made to the guidelines for handling claims by applicants that a reference publication is the applicant's work which originated with him? I believe that the current guidance comes from In re Katz in which the applicant is a co-author. David Boundy has done a quite interesting article on how independent inventors have a need to make disclosure to VC's that could result in publication of their ideas by another author. Under current law such independent inventors could just swear behind the reference but, of course, S23 will remove that option. Thus the motivation to resort to the In re Katz approach is likely to significantly increase if S23 passes into law and to be used when the applicant is not a co-author.

Posted by Lawrence Pope on March 27, 2011 at 09:58 AM EDT #

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