Patent Overhaul Bill Passes in US Senate

The Senate voted yesterday to make significant changes to the patent process, switching from a “first-to-invent” to a “first-to-file” system. From the NYT:

The Senate easily passed a bill on Tuesday that would overhaul the nation’s patent system, giving the Patent and Trademark Office more flexibility to control its own financing and changing the system to one that rewards the first inventor to file a valid application.

The change in the application system was favored by the large technology and pharmaceutical companies, which argued that it would put the United States in sync with other national patent offices around the world and make it easier to settle disputes about who has the right to a certain innovation.

Many smaller companies and inventors opposed the change, however, arguing that it favored companies that could hire legions of lawyers to quickly file applications for new permutations in manufacturing or product design.

and more from the AP (via Google):

To meet the concerns of independent inventors and small businesses that first-to-file would give the edge to corporations with the resources to file quickly and often, the bill gives a one-year grace period to protect academics and other inventors who disclose their inventions before filing for a patent.

The legislation has garnered a broad spectrum of support from pharmaceutical companies, large corporations such as IBM and Motorola, academic groups such as the Association of American Universities, and labor groups including the AFL-CIO.

The main opposition has come from small-scale inventors leery of the first-to-file system and high-tech companies opposed to provisions in the bill dealing with patent reviews.

And finally, patent attorney Scott Nyman has written an in-depth series of articles about the 2011 bill. He explains:

Under the present U.S. ‘first-to-invent” system, an inventor may claim priority after having satisfied two conditions: 1) conception and invention, and 2) reduction to practice. Once an inventor has diligently reduced his invention to practice, such as by building a prototype or filing a provisional application, the inventor may use the date on which the invention was conceived as his priority date. In a contest of priority, called an interference proceeding, an inventor that believes he or she should have priority may request an administrative hearing before a panel of judges on the Board of Patent Appeals and Interferences. In these proceedings, a second applicant must overcome the presumption that the first applicant to file was also the first to invent.  Due to the amount of evidence and time involved with swearing behind prior art in interference proceedings, or proving that they conceived the invention first, costs and legal fees can add up very quickly.

In non-U.S. “first-to-file” systems, the first applicant to file a patent applicant will have priority over all subsequent applicants, regardless of who conceived the invention first. That’s it.

As proposed in the Patent Reform Act of 2011, patent applicants will now be given an “effective filing date,” from which priority will be judged, with consideration to whether prior art was available before that date. This “effective filing date” will also be used to determine whether the invention would be obvious to those in the art through a combination of prior art references.

So, what do you think? Will this new system hurt small, independent inventors by giving priority to bigger companies? What difficulties might this present to something like open-source hardware and software?

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  1. First-to-X matters less to me than trivial patents. The cat toy patent illustrates this. It wasn’t an invention. It was an observation: cats chase laser spots. It is a crazy world when some guy gets to “own” that.

    I think “you can roast coffee in a hot air popper” is about as trivial. Or “an alarm clock with separate times for each day of the week.”

  2. What comes to mind is a company like Sony filing a Patent on the Arduino and suing everyone out of existence for infringement. Or, how about a company that files patents on the more popular existing open source hardware projects just to collect the royalties. Is there something in the bill to stop this type of abuse from happening?

    It will be interesting to see what happens. It might mean that we will need to file patents on all of our open source projects if there indications within the one year grace period that it will become popular.

  3. Don Lancaster ( has some choice things to say about patents and why they are a waste of money. All a patent does is grant a person a right to sue in case of infringement- if the infringer is sufficiently large and the patent holder is small, it’s probable that the profit from infringement will exceed the cost of settling, making infringement a sound business practice for large companies and patent defense an impossible cost for smaller companies.

    The only hope for smaller companies is to be first to market and milk it for all it’s worth before larger companies start stealing market share, then hit the market with a new innovation, leaving larger and less nimble companies perpetually playing catch up.

    My big concern here is that it sounds like this is going to eliminate the idea of prior art- I can make an open source product, publish it, then Sony (or whomever) could come along, take my work, patent it, and sue me for patent infringement. Because I didn’t patent my work, I have no rights. In practice that won’t happen very often- big companies don’t care about ideas with less than 8-digit potential, and patent trolls are after money which they are unlikely to squeeze out of basement inventors in a profitable proportion to their costs. But it will happen (unless I’m misunderstanding the new system).

  4. I don’t like this change. This will hurt the opensource and free innovations as they are currently protected from stilling by the current legislation. The change will allow anybody else to patent an innovation from a free product and then stop the product or ask for royalty without actually to invent anything.

  5. …it means that now I can go file my patent on the Do-Loop.

  6. I’ve been through lots of patent litigation as an employee inventor, including lawsuits involving priority of invention. Personally my heart is very much with the individual inventor, so I hate to see First to Invent go away. However, to make it stick, you have to prove in court that you were first to ‘conceive’ the invention, and first to ‘reduce it to practice’. (These are legal terms and I’m not a lawyer, get your own legal advice, etc.)

    Proving conception is especially hard since it’s ultimately about what was in your mind. Long story short, making First to Invent actually prevail can be a very expensive process. Easily millions of dollars, not to mention major stress, time not spent inventing and engineering, etc.

    First to File may be better in practice just because it’s clear. Naturally First to File also favors corporations which can afford to file patents liberally. In any case it’s obvious to me, like anything else involving the US Congress, that big business generally gets its way.

    All a patent does is give you the right to sue someone. If you expect to attract serious venture capital investment and build a major company, then patents can be very valuable. If not, then maybe not.

  7. When a person, business or other entity uses a patent it does not own and does not have permission to use, that�s patent infringement. Patent owners are entitled to compensation for the use of their patented inventions, but it is up to the patent owner to pursue justice through civil litigation.

  8. When a person, business or other entity uses a patent it does not own and does not have permission to use, that�s <a href="">patent infringement</a>. Patent owners are entitled to compensation for the use of their patented inventions, but it is up to the patent owner to pursue justice through civil litigation.

  9. First to file adds legal certainty as to the date from when the patent is valid. First to invent could, in some circumstances, be used as a "torpedo" that is "fired" after someone else filed (and got a patent) and then the "first to invent" desires to sue or issue a cease and desist order (US specific).
    For the situation addressed by K Scharf, the key point is "he chose to market the product", most "first to file" patent systems have something called "prior use". If proven, the person without the patent can usually continue to produce once a valid receipt (or other proof of public availability) is produced.
    For the situation addressed by Steve, Sony (or whomever) cannot have a patent on something that has been in the public use before the filing (in particular sold, and open source hardware and software). If they do have a patent, it cannot be enforced and it’s probably a not valid patent.
    For the situation addressed by Mike H, "this is going to eliminate the idea of prior art", no!, it is going to establish at the time of publication/filing exactly what is prior-art (published or made public before the date of filing). The first to invent could, after an alleged infringer filed a patent, appear with his "invention" as prior-art, the both the Patent Office and the alleged infringer would "look silly", the first because it granted a patent that shouldn’t (because he was not aware of the prior-art), the second because he payed for a (thought) good patent. Also "Because I didn’t patent my work, I have no rights", this is a miss conception, depending on the country. The solution is to publish (could be a blog), or market the invention as soon as possible (see above).
    "The change will allow anybody else to patent an innovation from a Regarding the point of Delian Delchev, "free product and then stop the product or ask for royalty without actually to invent anything", again, if it is a product and you can produce a receipt you have protection, if it is open source it must be published (by definition) and you cannot get a patent on it.
    Finally, regarding the DO..LOOP.. it would be a computer program, as such not patentable (in europe at least), and even if it would FORTRAN had it…
    If the patent office has enough information (access to prior-art), silly patents are not usually granted.
    To sum up… the disclaimer,I have no idea how patent systems work, the above is just an series of "allegations", I could be wrong. If someone asks me I did write this comment, I’ll deny, it was my cat…

  10. @K Scharf:

    I would hope that under the new law anyone trying to file for a patent on an idea that was already in product use but not patented would be denied a patent.

    If the new product is in production (i.e. publicly disclosed), that establishes prior art, making any subsequent patents invalid.

    The current law allows you one year from the time of public disclosure to file a patent. You can (easily and cheaply) buy yourself another year by filing an informal “provisional patent”.

    I’d be very curious to know how the new law handles the public disclosure issue. Does the date of public disclosure become the effective filing date, or is it strictly when the USPTO gets the patent?

    [IANAL, but if I get a chance, I’ll ask the real lawyers at the day job to see if they know.]

  11. I can’t believe you U.S. folk didn’t oppose this, whenever they try to change the patent system over here (Europe), usually lobbied by large business, European opensource folk and activists rally against them mostly overturning any such changes. Its a constant battle that raises its head every few years as big biz keeps pushing it, especially for ridiculous ideas such as software patents. I can’t see how the changes that have been made to the U.S. system help anyone other than the large businesses file more patents more efficiently, it adds to their game of the system.


  12. At first glance, I don’t think much about this. Patents reside on a somewhat higher plane of existence than individual hobbyist inventors these days. It feels something like watching titans battle in the skies overhead while us mere mortals are relegated to watch the spectacle unfold from here on the ground floor.

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