Patent Reform: A Big Idea in Congress

The Senate has passed and the House of Representatives is considering a new patent bill. While many past bills have been unsuccessfully proposed in recent years, most experts believe that this bill (S.23, called the Patent Reform Act of 2011 or the America Invents Act) will pass. It won approval in the Senate by a wide margin, but is being bitterly contested by many independent inventors. We will report any passage and the final previsions here, but the current bill would do the following:

1. The present First-To-Invent (FTI) system will be changed to a First-To-File (FTF) system. Under the proposed FTF system, the first person to file a patent application would get the patent, even if another person actually invented and built the invention and documented it first. However if an earlier inventor can prove that the first filer derived the invention from the earlier inventor, then the PTO can award the patent to the earlier inventor.

2. The present one-year grace period -- which allows anyone to file a patent application up to a year after the invention is on sale, sold, published, or used commercially -- would be eliminated. However if an inventor discloses an invention, they can still file a valid application up to a year after the disclosure.

3. If two inventors file on different dates, the PTO can reject the application of the later filer, even while the first application is still pending. The PTO can use the first application against the second even if the second is not identical to the first, so long as the second is obvious over the first.

The above provisions will make it important to file first. The motto, file early and file often applies.

4. The PTO may retain and keep all fees that it collects.

5. A post-grant review provision where the patentee can take part would enable anyone to challenge the validity of any patent on any ground up to nine months after issuance. Also an inter-parties review would be permitted nine months after grant or after post-grant review, but only on the basis of prior publications, including patents.