Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

The Leahy-Smith "America Invents Act" H.R. 1249, was passed by the U.S. Senate on September 8, 2011 and because the House of Representatives passed identical legislation on June 23, the bill will go directly to President Barack Obama to be signed into law.

Senator Patrick Leahy (D-Vt.),Chairman, Senate Judiciary Committee, commented on the final passage of "The Leahy-Smith America Invents Act",

“The America Invents Act is a true jobs bill at a time when we need it the most. After six long years of debate spanning three Congresses and two administrations, it is finally set to become law. This is bipartisan, commonsense legislation that will spur the innovation that drives the American economy.”

Prior to the final vote, the Senate voted to reject or table all amendments, avoiding the need to send the bill back to the House for consideration. This vote means that the final text of the new law is that found in H.R. 1249 as passed by the House on June 23, 2011.

The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades. Here is a checklist of a few key changes:

1. Establishing a first-to-file system,
2. Eliminating the ability for anyone to file False marking lawsuit;
3. Filing by other than inventor for corporations to file Oath and declaration;
4. Eliminating the Best mode requirement;
5. Eliminating interference proceedings,
6. Expanding prior user rights as a defense to infringement, and
7. Creating new USPTO proceedings for post-grant review.

While many provisions of the law will not take effect for at least one year after the date of enactment, several key provisions have an immediate effect:

Immediate Provisions of the Leahy-Smith America Invents Act

The effective date of the law will be at the end of the 1-year period beginning on the date of the enactment of the Act (once President Obama signs the bill ) and shall apply to any patent issued on or after that date, however the following provisions will take immediate effect and are applicable to pending proceedings:

• False Marking

Changes to 35 U.S.C. § 292 will eliminate qui tam actions for false marking suits. Under the new law, only the U.S. government can sue for statutory damages, although persons who have suffered a "competitive injury" from false marking can bring a civil action for damages "adequate to compensate for the injury."

The new law also provides that marking with an expired patent is not a violation of the statute. This means that virtually all pending false marking suits will need to be dismissed once the law is enacted.

• Defense to infringement

A defense can be raised in a patent infringement case based on prior commercial use if the commercial use that would otherwise infringe a claimed invention occurred one year before the filing date of the application of the patent. This will only apply to new patents from the date of the enactment. 35 U.S.C. § 273

• Joinder of Defendant

The new law will limit the circumstances for joinder of defendants in patent infringement cases.35 U.S.C. § 299

• Best mode no longer a Defense

A failure to describe the "best mode" to make or use the invention in a patent application will not be a basis for invalidating a patent or ruling a patent unenforceable. 35 U.S.C. 282(3). This will be applicable to new cases only.

• Reexamination

For new requests for reexamination, the standard for reexamination will change from "a substantial new question of patentability" to "a reasonable likelihood that the requestor would prevail" with respect to at least one of the challenged claims

For pending or subsequent Board appeal in an ex parte reexamination proceeding, such Board decisions may be appealed only to the Federal Circuit, not a district court.

• Patent Application

For pending applications, patents will not be granted to "tax strategy patents" or to claims encompassing human organisms.

Effective 10 days after enactment:

• Fees raised: a 15-percent surcharge will be added to all patent-related fees, including patent maintenance fees.
• The USPTO will be authorized to proceed with its "Track I" program for fee-based prioritized examination, and to charge a $4,800 fee for large entities ($2,400 for small entities).

Effective in 1 year after enactment:

New Post-Grant Review Procedures

The Act creates two different procedures for third-party initiated post-grant review:

• Post-Grant Review:

Under a new Chapter 32 (35 U.S.C. § 321. Post-grant review), there will be a nine-month window for challenging a patent on any ground, including 35 U.S.C. § 112. Chapter 32 takes effect in one year.

• Inter Partes Review:

Under a new Chapter 31, patents can be challenged on the basis of patents or printed publications only, after the window for post-grant review has passed. Chapter 31 takes effect in one year. Review may be granted upon a showing that the petitioner has a reasonable likelihood in prevailing that at least one of the challenged claims is patentable.

• First-to-File Provisions

Changes to 35 U.S.C. § 102 is the attempt to bring the United States closer to the rest of the world and a first-to-file system. It makes it more important to file an application as soon as possible.

As the law exists now there is a one-year grace period for any publication, sale or use in public of the product. But the new law will only retain a limited one-year grace period for filing an application after a public disclosure made by the inventor or somehow through the inventor. If the disclosure was made from somebody other than the inventor then the inventor will not be able to get a patent. The new version of § 102 will apply to applications with priority claims that fall 18 months after the date of enactment.

• Derivation Proceedings

Changes to 35 U.S.C. § 135 will add derivation proceedings to replace current interference proceedings. Derivation proceedings determine whether the inventor named in an earlier-filed application derived the claimed invention from the inventor named in a later-filed application without authorization.

A Derivation petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim.

Derivation proceedings will apply to applications with priority claims that fall 18 months after the date of enactment. Interference proceedings will continue to be available to earlier applications under the "old" version of § 135.

USPTO practice changes

• Fee Setting Authority.

The USPTO has authority to adjust fees to "in the aggregate" recover the estimated costs of its activities.

• Prioritized examination.

Prioritized examination of a nonprovisional application for an original utility or plant patent can be obtained for technologies important to American competitiveness. This has a hefty $4800 fee.

• Additional USPTO facilities.

Establishes additional USPTO satellite offices.

• Third-party submission of prior art.

Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

• Pro Bono Program

The Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

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For the second day in a row, (Senate Session, Part I and Senate Session, Part 2) Senator Patrick Leahy (D-VT) stood on the floor of the Senate and argued for the Senate to pass S. 23, now named the "Invent America Act."

In Tuesday's Senate session Senator Mark Kirk (R-IL), joined by Senator Mark Pryor (D-AR), introduced an amendment (S.AMDT.123) to provide a fast lane for small businesses within the USPTO.

Senator Leahy, while yielding to permit these amendments to be entered, insisted in each instance that the Manager's Amendment be the amendment under consideration by the Senate at all times.

Several amendments were approved, including the authorization of three more satellite offices over the next three years, the creation of an ombudsman to assist small businesses with patenting, a requirement that the PTO prioritize examination of applications “important to the national economy competitiveness” such as green or clean energy technology, and authorization for the PTO to charge small entity fees for Track I prioritized examination.

The bipartisan Leahy-Grassley-Kyl managers’ amendment to S. 23, the America Invents Act, makes the following changes to the Committee-reported bill:

• Change the short title of the legislation to “The America Invents Act” (currently pending as Leahy Am. SA 114)
• Correct the fee setting section to avoid any potential “blue slip” issues (currently pending as Leahy Am. SA 114)  BACKGROUND: Revenue raising legislation must begin in the House of Representatives. This provision will address any possible concerns that the bill as originally drafted could lead to so-called blue slip concerns regarding its origin.
• Provide a 50 percent reduction in application and search fees for small entities requesting accelerated patent examination at the U.S. Patent and Trademark Office (USPTO) (currently pending as Bennet Am. SA 116) BACKGROUND: The USPTO recently created a “fast track” process to allow applicants to pay an additional fee to cover the cost of having examiners work overtime on certain applications. This provision will ensure that small businesses and inventors receive a 50 percent reduction in the fee.
• End fee diversion at the U.S. Patent and Trademark Office; establish a revolving fund to ensure that funds collected by the USPTO can be used at the USPTO  BACKGROUND: This provision will benefit users of the patent system who expect the money they pay in fees to be used for patent services and operations, and will benefit the patent office, which is completely user-funded, by allowing the USPTO to budget for the future.
• Create a pilot program to review the validity of business method patents BACKGROUND: Many business method patents are of dubious validity because they are not truly inventive. This provision will create a temporary, limited proceeding at the USPTO to challenge business method patents.
• Strike provisions related to damages and venue (currently pending as Bennet Am. SA 118)  BACKGROUND: These provisions as currently drafted do not make substantive changes to existing law. The current damages provisions establish a gatekeeper role for the court, but do not change the actual legal standard for awarding damages. The current venue provisions codify recent circuit court decisions, provide useful clarity, but make no meaningful change to applicable law. Striking these provisions will address recent concerns of the high tech community, and address concerns of certain Members of the House.
• Change the definition of a “micro entity” BACKGROUND: This provision will provide more clarity and increase the income threshold.
• Technical changes BACKGROUND: This provision makes minor modifications to effective dates, federal jurisdiction and residency requirements of Federal Circuit judges.

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The latest patent reform bill entitled “The Patent Reform Act of 2011" (PDF) , will be introduced to Congress by Sen. Patrick Leahy (D-VT), chairman of the Judiciary Committee, on Jan. 25, 2011. Could this be the year it becomes law? The Judiciary Committee has introduced patent reform bills to Congress every year since 2006.

A bipartisan group of Senators, including Senate Judiciary Committee Members Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah) and Chuck Grassley (R-Iowa), will introduce patent reform legislation when the Senate returns to session next week.

Sen. Leahy plans to introduce the bill on the Committee’s first day of executive business, and has scheduled a mark-up session for Thursday, January 27, 2011.  I think he will try to fast track the bill again without permitting hearings or debate.

“This will be the first piece of legislation considered by the Judiciary Committee this year, and I hope the Senate will act promptly on this job-creating bill. Action by Congress can no longer be delayed. ..[t]he Patent Reform Act will keep America in its longstanding position at the pinnacle of innovation” Sen. Patrick Leahy (D-VT)

If the bill is legislated into law it will make the first significant changes to the nation’s patent system in nearly 60 years. But based upon the past 4 years that is a big “IF.”

Sen. Leahy notes that the bill “mirrors key improvements” to the legislation announced last March as the “Manager’s Amendment.” The Senate Judiciary Committee has held eight hearings in the last three Congresses examining the need for patent reform.

The Senate Judiciary Committee approved patent reform legislation in 2009. In September 2010 , 25 Senators joined together to urge Senate Majority Leader Harry Reid (D-Nev.) to schedule floor time to consider the legislation but it never made it to the Senate floor.

What’s in the Bill? The bill provides these specific provisions:

• Sec. 1. Short title; table of contents.
• Sec. 2. First inventor to file.
• Sec. 3. Inventor’s oath or declaration.
• Sec. 4. Damages.
• Sec. 5. Post-grant review proceedings.
• Sec. 6. Patent Trial and Appeal Board.
• Sec. 7. Preissuance submissions by third parties.
• Sec. 8. Venue.
• Sec. 9. Fee setting authority.
• Sec. 10. Supplemental examination.
• Sec. 11. Residency of Federal Circuit judges.
• Sec. 12. Micro entity defined.
• Sec. 13. Funding agreements.
• Sec. 14. Tax strategies deemed within the prior art.
• Sec. 15. Best mode requirement.
• Sec. 16. Technical amendments.
• Sec. 17. Effective date; rule of construction.

Although I have reviewed most of this before in my post Patent Reform Act of 2010: An Overview and the bill is "nearly identical" to the Manager's Amendment of S. 515 (PDF) from the 111th Congress (It includes similar or identical provisions on venue, best mode, false marking, and easing the residency requirements for Federal Circuit judges.) I’d like to highlight some of the major changes contained in the bill:

• “First-inventor-to-file” system: Under the current law, it doesn’t matter who’s the first person to file a patent application, the United States has a “first person to invent” system.

Currently there is a statutory 102B bar that says if the invention was published, offered for sale or used in public more than one year before an application for a patent then everyone is barred from filing a patent application on that invention. But all that will change.

The new bill proposes to change the law so that any disclosure before the effective filing date will be a bar. However there is an exception to the bar, it will allow a one year grace period for disclosures by the inventor or someone who obtained the disclosure from the inventor.

The proposed change:

A person shall be entitled to a patent unless— ‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing date of the claimed invention; …

‘‘(b) EXCEPTIONS.— ‘‘…A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention— if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• False marking: False marking cases will only be allowed if filed by persons who have actually been harmed by the alleged misconduct. False marking cases would also include a statute of limitations that limits the time to file such cases to 10 years after the alleged misconduct or 1 year after the plaintiff in such an action became aware of the alleged misconduct.
• Damages: Change of the procedure for determining damages. The district court judges will have more control over evidence and jury instructions on as it relates to Damages.

The damages portion of the bill is considered by many as a "grand compromise" achieved by Senators Leahy, Dianne Feinstein (D-CA), and then-Senator Arlen Spector (D-PA). 

Senator Leahy states on his web page the new law will establish a “ rigorous gate keeping role for the court, pursuant to which judges will assess the legal basis for the specific damages theories and jury instructions sought by the parties. The gate keeping provisions will ensure consistency, uniformity, and fairness in the way that courts administer patent damages law."

The proposed new law states:

“The court shall identify the methodologies and factors that are relevant to the determination of damages, and the court or jury shall consider only those methodologies and factors relevant to making such determination.'

The damages section of the bill also includes a sequencing provision. It states that “ Any party may request that a patent-infringement trial be sequenced so that the trier of fact (jury or judge) decides questions of the patent’s infringement and validity before the issues of damages and willful infringement are [decided]”

• Patent review: a person who is not the patent owner may file a petition to institute a review for a patent within 9 months of a patent’s issuance, and an inter partes proceeding before the USPTO after this time-frame.
• Preissuance submissions by third parties: Anyone can confidentially submit to the patent examiner during pendency of a patent application the following: prior art patents or publications, statements made by the patent applicant to the court or the USPTO. If you wanted to do this today you would have to do it within 2 months of publication (Good luck with that!)
• Willful infringement: The bill includes the changes to make pleading and proving intentional infringement with more specificity, including requirements of pre-suit notification and specificity in pleadings. I think a common sense proposed change is that the court can’t allow Punitive damages if it is “a close case” on the basis of infringement, validity or enforceability.
• Filing fee: additional fee of $400 for applications that are not filed electronically.

The proposed bill is 99 pages long. Could you get anyone to agree to everything contained in any 100 page document? At a first glance it appears to be very close to the previous bills. But even so, I plan on comparing the two and filing future posts on the subject. So sign up for an RSS feed on this blog or come back and check out the blog in the next week or so for updates.

If you have any questions on The Patent Reform Act of 2011 please comment below and I will do my best to respond with an answer.

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In an effort to push forward patent reform,  Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) posted a press release using the highly publicized Supreme Court decision in Bilski v. Kappos (.PDF) as a reason as to why reform is needed.

Bilski affirmed a Federal Circuit decision denying a patent for a process for hedging on energy commodities because it was deemed merely an abstract idea.  Here is what he said:

In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected. The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.

Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases. The Court’s decisions have moved in the direction of improving patent quality. While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress. The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.

I wonder what he meant about needlessly leaving the door open for business method patents? Does he  believe a business method is not a viable subject matter for a patent? Does he believe that if a patent application for a business method passes the machine-or-transformation test it shouldn't be allowed a patent?

I wish there was more substantive information in the press release. But I guess it's a political maneuver to use a well-publicized case to draw attention to his pet project, the Patent Reform Act of 2010. Still, with summer recess approaching, even with the publicity that Bilski has drawn is it possible that we will see anything in the way of progress on S.515 until the fall?

Other related posts:

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs. Kappos Decision

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

Patent Reform Act of 2010: An Overview

"Patent Reform Act of 2010" and "First Inventor to File" Rule Change

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Is the United States patent system broken and does it need to be fixed? Can our governmental leaders fix the patent system through legislation? Patent reform legislation has been introduced in each of past three Congresses and has yet to be ratified. Through the current Reform Act it is hoped that better patents are issued, patent rights will be enforced and the flow of technology advances our society for the good of us all. The argument over the many proposed changes appears to be getting closer to a conclusion.

Versions of the bill have been introduced in both the House and Senate (H.R. 1260 in the House, S.515(.PDF) in the Senate). The Senate Judiciary Committee has passed the bill and the House Judiciary Committee has held hearings on it. It will need to pass both committees and both chambers of Congress for it to be sent to the president.

The Obama administration has signaled support for a bipartisan patent reform agreement in the Senate. Senate Judiciary Committee Chairman Patrick Leahy (D-VT) recently came to agreement with Jeff Sessions (R-AL) regarding changes to the Patent Reform Act of 2009 (S. 515), increasing the chance that patent reform will actually happen.

In an April 20, 2010, letter addressed to both Senators Leahy and Sessions, Commerce Secretary Gary Locke pointed out that President Obama supports patent reform and would like to see the bill brought to the floor of the Senate and passed. Here is an excerpt from Locke’s letter:

The Obama Administration strongly supports your efforts to achieve such reforms and is committed to working with members of both houses of Congress to bring these efforts to fruition as you seek to bring a bill to the Senate floor. Regardless of any issues that remain under discussion, there is a consensus that a strong patent system, including an appropriately funded and well-functioning United States Patent and Trademark Office (USPTO), fosters innovation that drives economic growth and creates jobs.

Leahy’s procedural move is called a “hot line,” in which Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to proceed to the bill, substitute the new language, and consider it passed.“Hot line” is the term used for a request to Senators to agree to allow a bill or resolution to be considered approved by the Senate without debate. It is has been reported by Dan Friedman of the NationalJournal.com that Senator Leahy is seeking floor time for consideration of S. 515, and hopes it will be taken up by the full Senate prior to Memorial Day.

Some of the proposed changes to current law are outlined below:

• First Inventor-To-File: The U.S. currently uses a "first-to-invent" system, which seeks to determine which applicant actually invented it first. The proposed reform would grant a priority of a right to the inventor who first-filed a patent application. Currently an inventor has a one-year grace period to file a patent application from the time the invention is used in public, published or offered for sale. This change would eliminate the one-year grace period unless the inventor was the "first-filer."
• False Marking: The proposed reform would eliminate the right of "any person" to file a false marking claim. Claims would be limited to individuals who have "suffered a competitive injury." This change would apply to apply to all cases, without exception, pending on or after the date of the enactment of this Act.
• Damages: The Patent Reform Act of 2010 attempts to address allegations that awards in patent cases are at times unfair and inconsistent. The Act proposes that courts be required to "identify the methodologies and factors that are relevant to the determination of damages, and the court or jury shall consider only those methodologies and factors relevant to making such determination." In other words, juries will only be allowed to award damages if the contentions are supported by substantial evidence. Each party would be required to "state, in writing and with particularity, the methodologies and factors the parties propose for instruction to the jury in determining damages … specifying the relevant underlying legal and factual bases for their assertions." This approach looks to strike a balance between the rights of patentees and accused infringers. However, as this approach does not actually limit damage awards, it remains to be seen how much this will affect a jury’s determination of damages.
• Trial: Right to split trial into segments: damages; infringement; validity; and willfulness.
• Willful Infringement: Under the current law, if it is determined that an accused infringer willfully infringed on another’s patent, "the court may increase the damages up to three times the amount found or assessed" (see S. 515 – Patent Reform Act 2009). Understandably, willful infringement was asserted in a majority of cases, and was found in many of them. This led to a number of unforeseen consequences. For instance, since one defense to willful infringement is reliance on an opinion from a patent attorney that there was no infringement, a number of lawyers were charging outrageous amounts (in excess of $100,000) for these opinions. In other cases, it was found that some businesses deliberately avoided learning about patents in order to avoid willful infringement claims. This completely goes against the whole purpose of the patent system, which is to promote science and useful arts. As a result, the Patent Reform Act of 2010 attempts to fix the willful infringement doctrine by increasing the standard for finding it. The 2010 Act proposes that, in order to be found “willful,” you must be found to be “objectively reckless” by clear and convincing evidence. It would also be made clear in the statute that knowledge alone is not enough to establish willfulness, and that any close cases should ere against a willfulness finding. This approach strikes a nice balance by making it much more difficult to assert willful infringement without getting rid of the doctrine all together.
• Pre-Issuance Submissions of Prior Art by Third Parties: The statute would expand the time frame for third-party submissions and allow third-parties to submit references and a statement regarding the relevance of the reference to patentability during examination of a patent application. This provision will benefit the public, the Patent Office, and inventors by giving the public additional time and the ability to make arguments to the Office; the Office more thoroughly examines an application in the first instance thereby decreasing potential reexamination proceedings; and the inventor is granted a patent which has been more thoroughly examined thereby decreasing the likelihood that the patent will later be invalidated through a novelty/nonobviousness argument.
• Litigation Venue: Patent cases could be transferred for the convenience of the parties to venues clearly more convenient than the venue in which the civil action is pending.
• Federal Circuit Judicial Residency:  Federal Circuit Judges would no longer be required to live in the Washington, DC area.
• Micro-Entity: A new type of entity defined as a "micro entity" for an inventor that has not been named on 5 or more previously filed patent applications would qualify for reduced fees.
• Best Mode Requirement: The Best Mode requirement would no longer be an invalidity defense and it cannot serve as a basis for holding a patent unenforceable. If the bill is made into law it will result in: Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; this change favors the inventor over the infringer because it will make it harder to invalidate a patent.
• Inequitable Conduct: Currently, when applying for a patent, the patentee is required to supply to the Patent Office any information deemed relevant to the invention’s patentability. If you intentionally mislead the Patent Office at this time, you are guilty of inequitable conduct, and the penalty is unenforceability of your patent. While that appears to be fair, it turns out that because of the penalty at stake, inequitable conduct is alleged in almost every major patent case. As a result, the Patent Reform Act of 2010 proposes to allow patent owners to request “supplemental examination” prior to litigation. During this time, the patent owner could submit relevant information to the Patent Office for consideration. Any patentee surviving this reexamination would be exempt from an allegation of inequitable conduct based on the initial examination process. However, a big question mark is the ability of the Patent Office to handle the changes created by this proposed law, including processing a host of new reexamination proceedings. With 750,000+ applications sitting in its backlog, can the USPTO afford to devote manpower to this?

The Patent Reform Act of 2010 appears to balance the playing field for patentees in defending their patents.In the long run, the pressures of market competition will determine the fate of the patent system based on its performance. If the patent system fails, over time it will make the United States economically less competitive, and industry will demand change.

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The Patent Reform Act of 2010 was recently made public in the form of an (“Amendment to S. 515”). Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) spoke at an Executive Business meeting (webcast) February 25, 2010 about this amendment to the patent reform act.

Leahy stated, “When Senator Orrin Hatch (R-Utah) and I started this process several Congresses ago, along with Congress members  John Conyers Jr.,  Howard L. Berman, Lamar Smith and others in the House, we wanted to improve patent quality and the operations at the PTO, and address runaway damage awards that were harming innovation. We are close to a compromise that will address these issues. No one will think this a perfect bill, but we are close to a comprehensive patent reform bill that benefits all corners of the patent community.”

The 2010 amendment of the "Patent Reform Act" proposes a number of so-called improvements that are the subject of other LoTempioLaw blog posts (See the list below). This post is directed at the proposed change regarding First-Inventor-to-File.

First-Inventor-to-File

The proposed change does not call for a “First To File” system as some people mistakenly believe; it proposes a “First Inventor To File” system. Remember you cannot file a patent application in either system unless you are the inventor. Because two people can independently invent the same thing at different times there may be a race to the patent office by two inventors.

The current US system awards a patent to the inventor who is the first to invent regardless of whether the application was the first to be filed in the patent office for that invention. The new system will reward the inventor who wins the race to the USPTO and files the first application.

In the current US system, when two inventors seek a patent on the same invention the fact finder must determine who invented it first (it doesn’t matter who filled it first). The proposed “First Inventor To File” system will minimize Issues such as

• whether an inventor “abandoned, suppressed, or concealed” the invention
• “when was first conception,”
• “when was actual reduction to practice” and 
• “if the inventor used reasonable diligence coming to the patent office with the invention”

People now question if a first-inventor-to-file system is put in place will big business always beat the independent inventor to the patent office to file a patent application? Under Secretary of Commerce and USPTO Director David Kappos, says that there is a big misconception regarding “First Inventor To File.”

With the “First Inventor To File” system there is no risk of business beating the independent inventor to the patent office to file a patent application because the interloper is not an inventor. All filers have to sign an oath and declaration under penalty of criminal sanctions.“This leaves only the issue of simultaneous, non-collaborative invention—what we call interferences. The chances that a patent will be subject to interference based on a first to invent claim—that’s our current system—is .01%. In 2007—the most recent year for which we have statistics. The total number of interference cases for all applicants of all sizes that were decided based on a priority claim was seven! Of those seven decisions, only one involved a small or medium sized entity, and not a single one was won by an independent inventor who was the second to file. That means we already essentially have a first inventor to file system.”

Is this a naive view of the world? Or will non-inventors race to the office to file applications and basically say, hey prove I didn’t invent this invention. Will more litigation result because of this proposed change in the patent law? Or will the independent inventor just lose out on his/her invention because they won't have the wherewithal to fight it out in court even if he/she is the only true inventor?

The Professional Inventors Alliance USA viewpoint is that this provision will not guarantee that the actual inventor will be granted the patent.

"It creates conditions for very poor prior art, which is the existing knowledge of a similar innovation known to the general public. It burdens examiners with questionable applications by non-inventors. It creates a new malpractice liability for patent practitioners who may not beat another party to the patent office, thereby increasing the potential for litigation.

Kappos thinks the benefits will be reaped in the cost savings when filling internationally,

"... all other countries in the world use a “First Inventor to File” system. The change in the Patent Reform Bill will streamline the process for you to acquire patent rights and reduce your costs in seeking rights outside of the United States as you consider entering the global marketplace. This change will make it easier for you to “go global” with your invention."

Personally, I think this argument is much to do about nothing. I haven't heard many inventors consciously say I know it is a "first inventor system" so I don't care if somebody else files before me. I think that even with the system as it is now, inventors still believe that it's vitally important to be the first to file. Being the first to file always has its advantages. Even the patent office recognizes a patent application as a "constructive reduction to practice." I'm sure that if inventor observes an application pending in the United States Patent and Trademark Office for their invention he/she is less likely to go forward and file a second in line application regardless as to whether it's a “First Inventor to File” or a "First Inventor to Invent" system.

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