President signs new patent legislation
Sep 19, 2011 1:01 PM, By Michael Grotticelli
The new legislation represents a change in the technology patent sector from a “first to invent” to a “first to file” system.
President Obama has signed “The America Invents Act,” a bill that includes the most substantial changes to the nation’s patent system in over 50 years.
It was a bill heavily supported by technology giants like Apple, Google and Microsoft. “The America Invents Act” will ensure that inventors large and small maintain the competitive edge that has put America at the pinnacle of global innovation,” said Sen. Patrick Leahy (D-Ver.), who sponsored the bill in the Senate.
The legislation represents the fourth attempt to introduce significant changes in U.S. patent law. Most importantly, it provides a transition from a “first to invent” to a “first to file” system. It has been referred as the first significant change to the U.S. patent system since 1952.
The new law modifies prior art definitions of the patent law. Acts and prior art that bar a patent will include public use, sales, publications and other disclosures available to the public as of the filing date. It also includes publications by the inventor within one year of filing whether or not a third party also files a patent application.
Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention are repealed, because priority will be determined based on filing date.
An administrative proceeding — called a “derivation” proceeding — is provided to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor.
The bill refers to the new regime as “First-Inventor-to-File (FITF).” This new regime operates differently than the FTI regime in the United States and the various FTF regimes in place in the rest of the world.
An analysis of the differences between FTI, FTF, the original FITF and the regime in the current bill was performed for some 200 different but typical fact patterns involving the actions and timing of two different inventors in terms of whether and how each would publish or file patent applications. The comparison demonstrates different outcomes that can occur under each of the four different regimes.
This bill does not clearly indicate how it will resolve the dispute between an invention, as in lab research note, prior to the enactment of this law, and a filed patent application after the enactment of this law.
A group of technology companies opposed the legislation. The group, which includes InterDigital, a company known for its wireless-related patents, said the measure didn’t go far enough in guaranteeing more funding for the patent office. The National Small Business Association has also asserted that the bill will “irreversibly damage” small-business owners and entrepreneurs.
Opponents say the new bill will grant patents to the first inventor to file an application, eliminating a time-intensive process used to determine who came up with an idea first.
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