June 13, 2005
Patent Reform Act of 2005 Introduced
The Patent Reform Act of 2005 has been introduced. The bill itself is fairly complicated. Rep. Lamar Smith's press release summarizes the key features:
"· Provides that the right to a patent will be awarded to the first inventor to file for a patent who provides an adequate disclosure for a claimed invention;
· Simplifies the process by which an applicant takes an oath governing the particulars of an invention and the identity of the rightful inventor;
· Deletes the “best mode” requirement from §112 of the Patent Act, which lists certain “specifications” that an inventor must set forth in an application;
· Codifies the law related to inequitable conduct in connection with patent proceedings before the PTO;
· Clarifies the rights of an inventor to damages for patent infringement;
· Authorizes courts with jurisdiction over patent cases to grant injunctions in accordance with the principles of equity to prevent the violation of patent rights;
· Authorizes the PTO to limit by regulation the circumstances in which patent applicants may file a continuation and still be entitled to priority date of the parent application;
· Expands the 18 month publication feature to all applications;
· Creates a new post−grant opposition system;
· Allows third-party submission of prior art within six months after the date of publication of the patent application."
While I don't think this law represents a wholesale reform to patent law (which might not be a bad thing), this law certainly would represent a major tuning of current patent law. I'm still trying to grok the particulars, but everything I've seen suggests that most of these proposals are meritorious and would significantly improve existing law. I think we should give positive strokes when due (especially given how much legislator-bashing I do on this blog!), so I'm hopeful that we can encourage Smith and others to see a version of this reform through adoption.
Posted by Eric at June 13, 2005 09:33 AM | Patents
What will the 3rd party post grant oppositions do to small businesses and single inventors though? Large companies can use this as a means to drive the patent and costs into the ground. Second, the same concern goes for the patent infringment damages - how does this affect the small time inventor?
Finally, what is the impact on all currently granted patents? Many of these patents have been applied for based on the current system, which may or may not be correct, but to change the rules after the fact on current patents changes the entire cost-benefit formula in some cases.
I will be interested in your thoughts about this. These are concerns that I specifically have about the changes I cited.
Posted by: BenB at June 15, 2005 10:24 PM
These are great questions, and I'm not sure I know the answer to all of them. Let's focus on the post-grant oppositions, though. Unquestionably these have the potential to permit some nuisance oppositions. On the other hand, these oppositions may meaningfully open up a new and lower-cost way to correct PTO mistakes. This has a number of benefits, including better patent-busting of patent that need to be busted. This benefits the entire industry by cleaning out a disruptive but inappropriately issued patent, as opposed to settlements which just benefit the settling parties.
This isn't to say that we can get these benefits cost-free. There will be winners and losers of any change to the patent system. Further, there are details that need to be worked out. However, we should not allow these challenges to deter us from pursuing something that, on balance, is better social policy. And I think better oppositions would help more than it hurts.
Posted by: Eric Goldman at June 16, 2005 09:24 AM
I agree with many of the changes in principle, however my primary concern is that of the average person for which this system was implemented to protect. If the current patents somehow get enveloped by these rules, that 30,000 dollars in legal fees a small business paid could then be useless. If the current rules are applied, and say a company like Microsoft is infringing, will they simply file and file until the small business or individual is spent out of the loop? The latest episode with the Excel/ Access inventor displays an example.
With regards to the damages and injunctions, if that is curtailed, then what is the point of investing in developing inventions as a small business or single inventor? Again, not to beat Microsoft, but a large company could simply file items to slow the process, drive up the costs and then in the end, know there are no real penalties to "borrowing" from another's invention.
In all of these cases, it seems to, at least potentially, reverse things to big business which is not something to be applauded. Gone will be the days of someone coming up with a unique idea or invention to get it out into the world.
I also find this to be somewhat suspect because of all the areas of patent whining, the area which complains the most seems to be the computer/ software technology area. Industries such as medical devices, bio technology, medication etc. live with this system and make it work. To me, that points to the suspect probability that this boils down to specific companies complaining about having to pay out fees, all the while patenting absurd items, perhaps to purposefully poison the system (such as the “IsNot” patent filed for by MSFT).
I think we need the system to protect true inventors, and that means reform, but the certain limits dscussed are, to me, troubling.
Posted by: BenB at June 16, 2005 02:50 PM
I tend to agree with you here, especially with injunctions. To beat up on Microsoft just a bit more, what is preventing them from entering a market currently protected by the patent. Currently, such acts would lead to a permanent injunction upon a finding of infringement. As it stands in HR 2795, the small inventor (patent holder) could be forced to give Microsoft a license if he/she was in the process of securing funding and had yet to start production.
I also find it odd that the term "bad patent" is frequently used, but not defined. When looking a bit deeper, the term appears to be used to describe any patent that is found to be invalid. Quite circular if you ask me.
Finally, if Congress REALLY wanted to make a difference in the cost of patent litigation they would have introduced a provision to require the inventor is include a glossary of terms in the patent application. Such a requirement would push Markman hearings to only the rarest of cases.
Posted by: Chris at July 15, 2005 10:31 AM