Patent Reform Act of 2007

On April 18, 2007, bipartisan legislators in both the Senate and House of Representatives introduced sweeping patent reform measures in legislation termed the Patent Reform Act of 2007. The reform measures include the following provisions: 

  • First-to-file rights and elimination of interference proceedings;
  • Reform to make it easier to file a patent application without the inventor’s cooperation;
  • Limitation of damages to only the economic value of the improvement as compared to the prior-art;
  • Specific limitations on when damages may be trebled for willfulness;
  • Post-grant opposition proceedings with a reduction in the litigation estoppel effect;
  • Limitations on patent venue;
  • Authority to the PTO director to create further regulations.

Although couched in terms of the importance of patents and patent quality. The thrust of many of the measures are clearly directed at “limiting litigation abuses.”  Although a detailed analysis has not been completed, the two versions appear virtually identical.

Legislative Documents:

Congressional Players:

  • The Senate version was introduced by Senators Leahy, Hatch, Schumar, and Cornyn
  • The House version was introduced by Representatives Berman, Smith, Conyers, Coble, Boucher, Godlatte, Zoe Lofgren, Issa, Schiff, Cannon, and Jackson-Lee

Lobbying Players:

  • www.innovationalliance.net (Tech Companies who want strong patents)
  • www.ipo.org (Industry group — Formerly supported strong IP rights — now a consensus builder)
  • www.phrma.org (Big Pharma: Strong patent rights)
  • www.patentsmatter.com
  • www.patentfairness.org (“Over-broad patent grants stifle future innovators, while unjustified lawsuits that aim to extort settlements”)
  • www.aipla.org (Group of lawyers who are, for the most part, unwilling to take a stand)
  • www.bsa.org (Microsoft, Apple, HP — all supporting dramatic patent reform that curbs litigation in favor of the more genteel cross-licensing).

Who is writing about patent reform:

News:

Patently-O plans to publish a couple of well written editorials on patent reform within the next two weeks. Feel free to submit yours to dcrouch@gmail.com.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

81 thoughts on “Patent Reform Act of 2007

  1. The Patent Reform Act of 2007 prevents a small entity from defending his rights as a patent holder given by the Constitution.
    Due to the extreme costs of litigation, his representation must be on contingency (if he can still get it)and after he splits “a fair royalty” between expenses and representative, his share will not be a fair royalty.
    If cost of infringement is only “a fair royalty” no company will ever consider taking a license from him because (1) they may never be caught; (2) If caught, he can keep the small entity in litigation long enough to break them; (3) even if they lose the dcase, they will pay no more than “a reasonable royalty”.

  2. “This requires setting up a new tribunal or greatly expanding what we have. It makes a patent just a piece of paper, not because it challenges bad patents, but because it can and will be used by the wealthy to harrass the less affluent.”

    Mr. Cohen, having less experience than you, I agree with your comments completely. However, having seen first hand the invalidity rate of asserted patents in the last 20 or so years, I believe we need some kind of easily-had redress for wrongly issued patents and/or some weakening of the presumption of validity. And I don’t believe we can continue pretending that a patent issued today should have the same presumption of validity that a patent issued in the 1970s or 1980s had because such a continued presumption would not correctly reflect the incontrovertible change in reality that we have seen in and are facing today with the USPTO.

    Just my opinion. Thank you for your post.

  3. I have been a patent attorney for over 40 years and have represented some of the worlds largest companies and now-a-days represent individuals and small companies. I have the following comments about the new statute.
    FIRST TO FILE
    The first to invent standard is the jewel in the crowm of our patent system. It is so ultimately fair, the first inventor should get the patent, that it hardly seems to bear comment. That other countries use first to file does not give it merit. In fact there is no disharmony between our system and the other countries; their inventors have the right to our law here, and our inventors have the right to their law, there. Interferences are a red herring. They are very few and usually are settled by an agreement that divides up the rights depending on the outcome. The real benefit to first to file is the ability to avoid a reference if its effective date is after the date of invention. That is a common procedure called “swearing behind a reference”
    MANDATORY PUBLICATION
    The basic exchange for a patent is publication of the invention, so the inventor no longer has the option to keep it secret. With the mandatory publication, the deal is undone. This is a very unfair condition.
    OPPOSITIONS
    This requires setting up a new tribunal or greatly expanding what we have. It makes a patent just a piece of paper, not because it challenges bad patents, but because it can and will be used by the wealthy to harrass the less affluent.
    IN GENERAL
    The new statute is the attempt by the wealthy big corporations to give them a big advantage. It simply cuts the lower (economically) players out. The corporations can file “first” at many times during the evolution of a product while the little guy cant afford it, he has to wait until the product is very far along in development. The big guy wins. SDimilarly all the other terms, such as limitations on injunctions, disfavor the individual and small companys. The big company can elect to have a litigation, which is too expensive for the little guy, and then just pay what they would have payed in the first place, no risk of injunction.
    There’s more, but the whole thing is about money, who can spend the most to get the law changed.

  4. I’m a software developer, and I have two questions about the language of the bill that I would like to see the assembled attorneys address.

    1. What does “described in printed material” mean? The software profession today tends to publish mostly online. Would an idea that is written up in an internal company Wiki, for example, be consider “described in printed material”?

    2. How do we expect the courts to interpret “obvious to one skilled in the art”. The biggest complaint among my colleagues, as expressed by SoftwareGuy above, is that patents are being granted for software techniques that seem, to us, to be obvious. They may not seem obvious to patent attorneys or patent examiners, who are probably not “skilled in the art”. What is the objective test, or is there one, for obviousness? And if there is none, how can patent law be based on so subjective a concept?

  5. Tom, please get a patent attorney — ask the best patent attorney you can find to take your matter to heart and help.

    There are more nuances to patenting then can be learned in an inventor’s lifetime. There is no profession more trying then a patent attorney’s, and no profession as risky as an inventor’s.

  6. Tom, I’ve read and understood all of your posts. I respect that you’re determined to go at this by yourself. However, please respect that in my experience, I have found that to be a bad idea. I have been involved in cases where people did not seek out the help of an experienced patent attorney, and we beat them flat out in summary judgement (and they’ve been out of money before an appeal was possible). Additionally, I know you’re not going to get into a 112 fight before a patent issues; as a patent attorney should, I’m already thinking ahead to post issuance enforcement and the enabled and claimed scope of any patent issued claiming priority to the provisional already on file.

    Stating the Obvious, I realize the book is not “as seen on TV.” I guess plain text doesn’t show sarcasm as well as I assumed (warning, sarcasm again). The “No but I stayed at a Holiday Inn Express” comment was more analogous. I’ve always thought that if something was worth doing, it was worth doing right, and if you don’t know what right is, how do you expect to do it right?

    To those saying inventors can draft patent applications; yes, they obviously can. However, a patent that only covers a couple of embodiments is not as valuable as one that covers the entire idea. This is where an outside contractor (patent attorney) can really help the inventor by thinking of alternative embodiments, broadening the scope of the invention, and staking a claim to all aspects of the invention. This is usually hard to do for an inventor that is caught up in bringing their embodiments to market. Also, it’s important to set up claims so that potential infringers include competitors and those who attempt to design around the patent, not just those who practice your embodiments such as potential customers. There are numerous reasons to retain a patent attorney, these are just a few that come to mind.

  7. Drafting a patent application which will become an issued patent is surely an art when its future is relegated to be possibly torn apart or invalidated in a Federal Court(if it has value). I would like to pick some patent attorney’s brains on this site in relation to claims drafting( don’t know if you will give up any of your secrets), but here goes. If one’s invention performs a function in a different and improved method operendus therefore requiring an embodiment in a new and unobvious form or shape to perform that function in a different or improved method, should one’s first independent claim state that new method thereby making a broad claim and therein describing the embodiments themselves that perform the function? If one’s first independent claim is in method terminology, is one’s patent considered a method patent – or method patent with embodiment? This may be a Patents 101 question, but I’m only a lowly inventor-how would I know without asking. Thank you to anyone that prolificates.

  8. I am not sure I know what the “essence” is. When I draft, I am trying to cover something DIFFERENT from what the inventor thinks (best mode) his invention is. What I want to COVER, with a valid claim and an enabling disclosure, is what big bad ugly corporate man will be doing, ten years down the line, with all his powerful resources, to “steal” the inventive concept while staying outide the literal recitation of a “best mode” sort of amateur-drafted claim. I find that quite difficult. I’m still learning after 30+ years. So, understanding the “essence” is necessary, I suppose, but not really sufficient.

  9. A patent attorney should be skilled at creating a good legal document. An inventor should be skilled in the technology associated with his invention. The skills are complementary and both persons play a key role in the patenting process. Many inventors are so focused on getting a patent through the PTO that they forget that the true value of a patent relies upon what happens after the patent is issued. The value of a patent depends very much upon the strength and breadth of the claims.

    A patent is primarily a legal document that describes technical subject matter. Oftentimes winning or losing an infringement case may turn on one word, for example, is transverse the same as perpendicular? It is difficult enough for an attorney to ensure that the words in the patent will survive a lawsuit. I cannot imagine how an inventor, who does not make his living by being a legal wordsmith, can properly draft an application that has a high probability of surviving a lawsuit.

    The “Patent it Yourself” book is valuable for teaching an inventor how the process works, which allows them to have meaningful discussions with their attorney. But, the book does a disservice by fostering the idea that a person with no skill in drafting patent applications can do it themselves. On the other hand, if someone wants a patent and they do not contemplate ever having to enforce that patent, then, sure, patent it yourself may be a viable option.

    Small guy is right when he says “understanding the essence is what really matters when drafting independent as well as dependent claims.” If the attorney does not understand the essence of the invention, then the inventor needs to find another attorney, quickly.

  10. Dear Stating_the_Obvious,

    You are obviously a skilled patent attorney, but I think that you are a bit overestimating the importance of your profession…
    I’ll tell you what: no patent attorney can understand the essense of the invention better than the inventor does.
    And understanding the essense is what really matters when drafting independent as well as dependent claims.

    “Patent It Yourself” is an excellent book. I would recommend it to any inventor filing his first patent application. But he would still need to pay to a patent attorney to avoid costly mistakes.
    In other words, if you apply for a patent not just to hang it on the wall but to sue some large corporation on the future, better spend those 10 grand to make your patent claims bullet-proof..

  11. Mark:

    “Patent It Yourself” is not something sold on television, although the title is one might expect to see during a late night television infomercial. It’s a book by David Pressman and published by Nolo press. (Coincidentally, the PatentlyO blog has posted a link to this book at Amazon.com for several weeks now.)

    I have seen attorneys give copies of this book to clients in the past, and I read it a few months ago just to see whether it had value. My conclusion was that it would be somewhat useful for giving clients some context to the patent drafting process. But I think that an attorney-drafted brochure or other publications are likely to be more effective and less expensive for that purpose.

    More importantly, I have serious issues with the goal of this book: to persuade the readers to prepare and file a patent application with little or no attorney involvement. For example, I have occasionally seen persons that wanted to draft their patent applications themselves and have their attorney merely draft the claims. I analogize this to a person making and packing their own parachute, but allowing their skydiving instructor to fly the plane. Sometimes, paying for expertise (whether expertise in manufacturing a parachute or drafting a patent application) is well worth the cost.

  12. Mark, I never said I was going to get in a fight with anybody until I have my patent granted-hopefully not even then- you’ve read both of my posts and didn’t comprehend either one- let’s work on that-okay.

  13. Thanks, Stating the Obvious. I am not entirely familiar with ‘As Seen on TV’ stuff. I just missed the abbreviation. We usually just call them provisionals.

    That said, I agree with you guys. I wouldn’t want to get into a 112 battle based on a provisional with no claims with a large corporation. It’s not that their lawyers are better or more insightful, it’s that they can afford to drag everything out. It doesn’t sound like a big deal until you’re bankrupt and they end up with what they consider a relatively cheap IP acquisition.

  14. Tom,

    With all due respect, slow down…

    Patent game is a slow and long game – if your invention is not going to be obsolete in a few years you should think 10-15 years ahead.

    “million dollar” invention is not worth patenting – there must be at least 100 mil at stake to make it interesting for contingency lawyers.

    And in the aftermath of the EBay decision your “famous Italian patent troll”
    might not be able to reach a favorable settlement with the infringer couse there are no more injunctions for non-practicing patent holders.

    I don’t know your situation, but if Plan-A fails your best bet might be to find investors and start manufacturing and selling it yourself.
    Hm, maybe you can wait a little bit until the infringing company cranks up their production line and promotes your invention to the masses..
    And then you can step in and kick them out, with the court-ordered injunction…
    Forget damages – injunction is the only thing that really hurts

  15. Thanks for the kind words, Mr.StO-and I have not discounted the notion of going to a patent attorney to write my RPA- or at least oversee, if they do such a thing.

  16. Mr. Barniak: All kidding aside, I wish you well and hope to see your hand tool at my local hardware store soon.

  17. In an effort to drag us up onto the sidewalk: Mr. Barniak, I think the thrust of the advice is that your provisional must “uber-comply” with 112. This is especially true because you fear Big Corp. will steal your invention and you likely will then file a utility with priority claim, expedite it, and assert the resultant patent. Big Corp. will most certainly compare the patent claims against the provisional’s specification, aiming to destroy your priority claim wherever possible.

    I’ve met some very savvy inventors and a few who could draft a pretty good application. But it’s certainly not the norm, and those are applications generally contemplated to live “ordinary lives”. Here, we’re talking about an application that will likely be asserted and will definitely be scrubbed hard. Higher stakes and higher odds of rigorous scrutiny militate for a savvy inventor and a patent attorney, working together on the application.

  18. I can see that you’re a very witty Einstein caliber genius there, Mr. StO. I’m sure that because you are a patent attorney, all lay people that write their own patents are cannon fodder for a few jokes -good for you-enjoy. Fact of the matter is I’ve invented the proverbial million-dollar hand tool. I would not make a statement like this if it wasn’t true- I’m not a bloviater. And when you buy it -hopefully in about a year, along with millions of backyard mechanics and pros alike, I’ll take your money with a sly smile, Mr. StO.

    Now to the advantages or disadvantages of disclosing to a manufacturer in patent pending status- a grey area for sure. I chose to go this route because I have to get a reasonable cost evaluation and viablity standpoint from a real tool company perspective. Do they think my hand tool invention will fly- most definitely. Are they impressed- yes. Cost to manufacture- ongoing evaluation-hand forged steel with mechanicals- means tooling and new dies. What kind of deal are we going to do- don’t know-maybe a collaboration of sorts. Will this company just brush me aside and go into production of my tool invention without me- don’t know-but I would’nt advise it. Basically, I’ve put my faith in the U.S. patent system – I’m a gambler and life is a gamble anyway- you could go to school at 9 and come out on a slab at noon- you gotta go for the gusto…in a proactive manner, of course – that means a signed confidentiality agreement( taken to another room to be signed, by the way- think it was signed by the floor sweeper?) and of course i record all emails concerning my product. I look at it this way- there is no logical reason this company should want to rip me off- its a win win for both parties- whether they build it for me to market or we work a deal whereas their stamp is forged on it- everybody makes money. Now-plan B… if for some ungodly reason this company decides to circunvent me, I will get the nastiest,meanest, patent trolliest, cuban cigar crunching, patent infringement hating fee-contingent patent lawyer i can find- maybe that famous Italian patent troll lawyer who drives a different Lexus to his office(love that story- StO’s hero)each day of the week. He can have 60% of the take- i don’t care- i certainly will have a good case- after my patent is issued, of course. In the meanwhile, I will work on my RPA(que StO) and have it in the USPTO’s hands within 2 months. I actually have my first independent claim written- broad,but not overly- and least restictive- just like I’ve learned from this Patently-O site- and I’m going to pay for the accelerated exam also- whatever the cost is, it will be worth it. Hey, I’m just an American inventor with the million dollar invention trying to better promote the progress and make a little money too- is that too much to ask? There’s always Plan C- the novel…Inventing in America- Beware, My Story. Maybe next year at Amazon.

  19. *** fade to commercial ***

    Person 1: I just wrote my own patent application.

    Person 2: Have you ever read a legal decision regarding claim construction, novelty, obviousness, written description, enablement, literal infringement or the doctrine of equivalents?

    Person 1: No. But I *did* stay at a Holiday Inn Express last night.

  20. Very funny- the laser eye surgery crack from someone. To Mark P.- yes, of course I filed a PPA and yes, I wrote it myself. Patent attorneys are not the only people in the world that can write a spec. description submitted with good drawings and the description and operation of those drawing embodiments- I chose not to include any claims (optional).If the filing date is the most important aspect to be gained from the PPA- I do at least have that. And to anyone wondering… Is it patentable? Of course it is- i’m not a total idiot- my invention is totally ‘out of the box’ thinking – with little relative prior art to refer to. Maybe this is an abstract way of looking at it but possibly one has more protection in a deterence factorance because my ‘trade secret partner’ does not know my future claims- hell, I don’t even know my future claims. Its going to be interesting.

  21. MM,

    I agree with you…I read the post as meaning that preparing the ppa can be done via sending in anything and paying the very small fee.

    I do not believe small inventors think that just because it costs 100 to file a ppa that costs 10000 to draft, that is a good deal.

  22. “I think that anyone who counsels another that a provisional at the cost of 100 bucks is going to save their hide is reckless.”

    I know that many people here don’t bother to actually READ what people write but this is ridiculous. The $100 in the earlier comment referred to the filing fee, not the cost of preparing the document itself.

  23. I think that anyone who counsels another that a provisional at the cost of 100 bucks is going to save their hide is reckless.

    A provisional needs to be be just as detailed as a regular for it to have any value. That means careful drafting and the assistance of a professional.

  24. Mr. Barniak said that he had the “filing receipt of PPA was in my hands” — “PPA” being the abbreviation that Nolo’s “Patent It Yourself” uses for a provisional patent application.

    I wonder, if Nolo published a book entitled “Laser Eye Surgery Yourself,” people would be as eager to take a laser to their own eyes.

  25. Tom, you seem somewhat sophisticated business wise; why have you not already filed at least a provisional? You can get that on file for 100 dollars (or thereabouts without checking the current fee structure). I strongly reccomend doing more than an NDA to protect your invention as it sounds like you’re a small business making a play with some pretty deep pockets. There’s no reason that you can’t get a patent attorney to file a provisional for 5000 or so including a couple of independent claims. To me anyway, that’s relatively cheap insurance.

  26. Someone is quoting articles from the National Review to make a point about a Democratic Senator? That’s damn funny.

    Pat Leahy is so “liberal” that he voted to pass the fundy propaganda tool known as the “Partial Birth Abortion Ban”. He’s a regular pot-smoking hippie, all right.

    “Let’s call this the “Death of Capitalism” Bill…”

    Great idea! Maybe that genius Jonah Goldberg can promote the idea of trying the authors of the bill for treason.

  27. “Let’s call this the “Death of Capitalism” Bill…”

    Well, capitalism by itself is OK if it is regulated by the government.
    If it’s left alone some ugly monsters (aka monopolies) inevitably rise and eventually swallow all smaller competitors to rule the world.
    This bill comes very close to allowing big tech corps tresspass on each and every technological idea patented by small entities, be it an independent inventor or startup company.
    Notice that there is no need for injunctive provision in this bill – the SCOTUS already did the hard work for them…

    2007 Patent Bill + SCOTUS Ebay decision = death of independent invention in America

    Amen…

  28. Tom: The earliest possible filing date with an application that has the best possible written description and enablement of the invention has been (and always will be) important. This is true whether the application is a provisional or utility patent application under the current laws or the proposed laws.

  29. Just a few snippets on the person who is scheming to “reform” our great patent system:

    “By Consensus – A Consensus Of Hill Republicans – Pat Leahy Is The Meanest, Most Partisan, Most Ruthless Democrat In The Senate.” (Jay Nordlinger, “The ‘Nastiest’ Democrat: Sen. Patrick Leahy, Republican Nightmare,” National Review, 7/9/01)

    *
    “Republicans, To A Man, Swear That They Would Take Ted Kennedy, Christopher Dodd, Joe Biden, John Kerry — Any Famously Partisan Democrat Over Leahy.” (Jay Nordlinger, “The ‘Nastiest’ Democrat: Sen. Patrick Leahy, Republican Nightmare,” National Review, 7/9/01)

    “[B]eneath His Quiet Demeanor…[Leahy] Is Liberal, He’s Angry, And He’s Armed.” (Lindsay Sobel, “Tough D,” The American Prospect, 1/18/01)

    “Leahy Honed His Skills As A Leading Liberal Hit Man During The Confirmation Hearings For U.S. Supreme Court Nominees Robert Bork And Clarence Thomas.” (Mark R. Levin, “Nominated While Federalist,” National Review Online, 5/14/01)

    “Even Fellow Democrats Claim He Has Been Imperious, Hypersensitive, And A Pain To Work With.” (Michael Crowley, “Personal Time,” The New Republic, 11/19/01)

  30. Now comes the hard part. Extensive lobbying, PR and “planted publications” attacks and counter-attacks, before and after the Committee markup sessions, in which telling the truth will not be a high priority for some of the participants. [Even for the relatively few who will actually read and understand all of this legislation and its significance.] I predict it will prove an even more vicious PR/lobbying battle than we experienced during the legislative battles over the 1999 patent reform legislation [the last amendments to that bill were made the last night before passage in the House]. Why? Because it will be assumed that this legislation could impact, in several different ways, billions of dollars in patent litigation fees and recoveries over many years. Also, as noted before, the odds of some version of this Bill be being finally enacted this term (after nearly three years of prior bills and prior Congressional hearings) are considered quite high. Publicly exposing the lies and missinformation that will be spread about these Bills should be high on the professional duties of all patent attorneys.

  31. The fellow travelers sponsoring this bill would make Marx proud. Leahy from Vermont? Schumer from N.Y.? Call it “bi-partisan” all you want, but when guys like Schumer are standing around, you just know there’s a political agenda somewhere nearby.

    I hope this reform bill falls flat on its face.

    UGH.

  32. Anyone care to articulate if the PPA will be a more important legal instrument of protection if this reform act is passed. In the last 3 weeks I disclosed a truly innovative tool product invention of mine( after filing receipt of PPA was in my hands) to a mid-sized tool company- they are interested, to what degree, I do not know. This company signed a non-disclosure agreement prepared by my attorney(corporate-they deal with non-disclosures),in effect, we now have a trade secret between us while we decipher manufacturing cost of my tool invention. In my mind, a trade secret could only work if the 2 parties are on the same page- that is, they want to keep it a secret for/so the surprise factor of exclusitivity when it hits the market. I have gambled by putting myself out there-hope it is the right decision- putting faith in a PPA, trade secret agreement and the inherent integrity of an American company. If I get ripped off, I’ll write a book about the exploits- it will be a best seller. Maybe I’ll title it…Invention in America, The Real Story.

  33. Dennis and John, thanks for the feedback. Perhaps I muddied my point. I read SG’s first long paragraph and came away feeling that he had something of a “patents are evil, software should be public domain” bias. I also focused in on the word *patentability*, which I see as different from the “first and original inventor” language. It may be splitting hairs to some, but I don’t see the two as identical.

    My view also may be colored by experience in business method patents. While I enjoyed the software guys and their incredibly fertile minds, they were easily the inventors most likely to tell me what they’d done was not patentable. Many times, though, they viewed the “invention” far more broadly than the claims spoke — e.g. a word processor, when the actual claimed invention was a novel aspect of the word processor or the word processor as a part of a much larger and unique software solution to a problem.

    Ultimately, of course I listen to my inventors when they speak to patentability, novelty, and obviousness. But … I make sure they’re using those terms in their legal sense and application. If the inventor has strong evidence that the contemplated invention is indeed anticipated or obvious (in view of art he can produce or that can at least be verified), I’d certainly listen to that — I don’t want to waste my client’s money. But a more vague “oh, that can’t be patentable” statement, especially when applied to an overbroad view of the invention, should not deter a filing. Those are near the extremes, and I’m sure SG falls somewhere between them. My sense was that he was nearer the latter; my apologies, SoftwareGuy, if I stuffed words into your mouth.

  34. “The oath or declaration does include a statement that the declarant ‘believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.’ 37 CFR 1.63(a)(4).”

    Dennis, that statement sidesteps a substantial portion of Clive’s argument, in that it is not a declaration that the applicant believes that the claims are patentable. Original inventor means that the individual believes that he or she did not copy the invention from another. First inventor means that the individual is not aware of another having invented the same invention. Both go to the novelty requirement under sec. 102, and do not reach the nonobviousness requirement under sec. 103.

    You properly corrected Clive’s statement that “it has nothing to do with whether or not you think the invention is patentable,” but you neglected to address SoftwareGuy’s statement that “Well, I know the patents are bogus, because the things I ‘invented’ are obvious or already done before [so I refuse to sign the declaration].” ‘Knowing’ that the invention is obvious is not an excuse for refusing to sign the declaration, and would constitute a breach of any well-drafted employment agreement.

    SoftwareGuy,

    “I did what I got paid for — wrote software that’s making money for the company.” No, you got paid for writing software and complying with all the other the mumbo jumbo. If you want to be principled about this issue, it’s your responsibility to get those portions of the contract removed before you agree to become an employee, at the risk of losing the offer, rather than trying to reneg on your commitments after the fact.

  35. “it s pure fantasy or even delirium to always oppose the inventors to the big companies(the villains)”

    Unfortunately, it is NOT a fantasy – it’s an ugly reality that we (small garage inventors) have to confront.
    Had I known beforehand about this shitty patent bussiness I would not have filed for a patent protection.
    At least now I can tell the truth to all other suckers like me out there:
    From now on, Trade Secrets rule ! And to hell with “promoting the progress..”

  36. metoo wrote”For example, individuals often cannot afford to file immediately after the develop something. Instead, it may take them awhile to further develop”
    the fee for a provisionnal(ie any type of memo written by the inventor itself) is $130 or so!instead of blaming big companies and always complaining about the poor inventors ,just give individuals the right to file their own provisionnal applications at the uspto at no fee for individuals.
    it s pure fantasy or even delirium to always oppose the inventors to the big companies(the villains);most of the time inventors who refuse to assign their inventions eventhough they have executed an agreement to do so are upset by something and use this refusal as a leverage to get somehing else beyond the initial agreement

  37. “” The way I’m interpreting this, a person can not obtain a patent if the invention was described
    in a printed publication that is less than one year old. However, certain exceptions are listed, one
    being, of course, that the invention may be patented through disclosures made by the inventor
    or joint inventor.
    The exception that seems most interesting is “others who obtained the subject matter
    disclosed directly or indirectly from the inventor or a joint inventor.”

    I think the intention here is that employers, who obtain the invention from employees, may
    file for a patent. The way this is worded, it seems to allow someone to “steal” the invention
    (say by reading a printed publication) and still apply for a patent. There no mention of the “others”
    being assignees. “”

    anon – I think that you have construed this exactly backwards. The intent appears more to be that, if someone “steals” an invention (by industrial espionage / competitive intelligence / whatever means) and files for a patent or just publishes it to prevent patenting, their malfeasance will not prevent a diligent true inventor from obtaining patent protection.

  38. “ Limitation of damages to only the economic value of the improvement as compared to the prior-art”

    Arguendo:

    (A) A lone inventor patented an Improved Collision Avoidance, ICA, system for a car that could be incorporated into a car on a production line for $50.

    (B) Patent Pirate CarMaker Co. ripped off the inventor and incorporated ICA into its new models and did not offer ICA as an add-on for older models.

    (C) Car buyers flock to CarMaker’s showrooms and buy the new models in droves — allegedly because of the new ICA safety feature, but not provable — and the profit per new model to CarMaker is $5000.

    Question:
    If lone inventor sues CarMaker and prevails, what damages would he be entitled to under the Patent Reform Act of 2007?

    Of course, after the eBay debacle, he’s not entitled to an injunction, so he’d be stuck (pun intended) with the limitation imposed under the Patent Reform Act of 2007.

  39. Could someone please interpret the Senate and House versions of 102(a)(1)(B) for me?

    102. Conditons for Patentability: novelty
    (a) NOVELTY: Prior Art – a patent for a claimed invention may not be obtained if –
    (1) the claimed invention was patented, described in a printed publication, or in public us or on sale –
    (B)one year or less before the effective filing date of the claimed invention, other than through
    disclosures made by the inventor or a joint inventor or by others who obtained the subject
    matter disclosed directly or indirectly from the inventor or a joint inventor

    The way I’m interpreting this, a person can not obtain a patent if the invention was described
    in a printed publication that is less than one year old. However, certain exceptions are listed, one
    being, of course, that the invention may be patented through disclosures made by the inventor
    or joint inventor.
    The exception that seems most interesting is “others who obtained the subject matter
    disclosed directly or indirectly from the inventor or a joint inventor.”

    I think the intention here is that employers, who obtain the invention from employees, may
    file for a patent. The way this is worded, it seems to allow someone to “steal” the invention
    (say by reading a printed publication) and still apply for a patent. There no mention of the “others”
    being assignees.

    I’m sure there is wording elsewhere that precludes this scenario. Is it clear what “obtained” means?

  40. Specifications written in USA, for USA, are multiple times as lengthy as cases drafted in ROW for ROW protection. Yet ROW courts seldom find ROW cases insufficient. Writers above are obsessed with industrial giants ripping off small inventors. I see the villain elsewhere. It suits US lawyers to have mega documents, so they can charge their corporate clients more. “First to File” is alleged to screw the little guy because he can’t file as fast as Goliath. Well, all over the rest of the world, little guy can file quicker than Goliath, and his brief enabling disclosure to the PTO will see him/her through, in triumph over all the later-filed cases from Goliath. Goliath will be filing later, because he’s got more formal procedures to work through, before he is all set to file. There’s just one snag in all of this: how are the US Courts going to transition to the ROW position, that a brief specification still meets the legal requirement for a sufficient disclosure. Till then, small guy will continue to lose out, but to the legal system, not the corporations.

  41. Mr. Roethel, I would say that an invention can be “original” by multiple inventors. Each
    one could make the invention without any knowledge of the others and so each would
    be “original”. Then it comes down to who did it “first”

  42. Clive, I agree with Dennis with an explanation. (Remember “guilty with an explanation” from traffic court?) The specification contains “disclosure”; the claims are the “inventions.” In the theoretical world, the attorney drafts claims and then reviews them with the inventor(s) to ensure that each claim recites “what the applicant regards as his invention.” As long as the inventor has a good faith belief that he is the original and first inventor, he can sign the declaration (oath).

    The specification is either then created or reviewed to ensure that it contains the necessary 112, first paragraph support for the claims (inventions).

    BTW, can anyone enlighten me as to the distinction between “original” and “first” since the statute seems to require both?

    On a broader note, these type of items and the discussions related thereto are why I read this blog. Thanks to Dennis and those that participate. I learn more here in two months than in the many years of boring CLE seminars.

  43. Clive, The oath or declaration does include a statement that the declarant “believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.” 37 CFR 1.63(a)(4).

    This is a subjective test and based on the belief of the inventor — if the inventor does not believe himself to be the “original and first inventor” then he should not sign the oath.

  44. Regarding: Sec. 11. Regulatory Authority.
    —-
    The Director is granted rulemaking authority “to carry out the provisions of this title or any other law applicable” to the PTO or that is necessary to govern the operation and organization of the office.
    —-
    The PTO has never had general rulemaking authority. The current power is described as “[t]he Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant.” That’s pretty limited by comparison to other agencies.

    The proposed legislation seems to give USPTO the full ability to interpret their own laws–like say, EPA or FDA. So this would give them a much more expansive ability to figure out new ways to make the patent system more effective and try them out, within the bounds of 35 USC. It also gives them Chevron/Mead deference for their interpretive moves.

    This is in line with the move of USPTO into the fold of Administrative Law foreshadowed by Zurko.

    Maybe with this sweeping grant of authority, the Fed Circuit will be forced to grant USPTO more deference in post-grant opposition appeals.

  45. SoftwareGuy, I’d like to correct a few points. First, the declaration you’d sign (or not) merely affirms that you reviewed the application, you are an inventor of the invention disclosed/claimed, no one else was improperly added or omitted, and a couple other administrative things. (See 37 CFR 1.63.) It has nothing to do with whether or not you think the invention is patentable.

    Second, 37 CFR 1.47 already exists, wherein the company can proceed without your cooperation. Personally, I’ve been through that process (petitioning to advance the application without inventor signature) more than once, and I never found it that onerous. Either way, the fact remains that your employer already has the power to proceed without your cooperation.

    Third, I’d point out that you signed that “mumbo jumbo”. Do you sign things without reading them? (Even if so, it’s still binding.) The fact that your new employer has an assignment-of-invention clause in your employment agreement should have sent up a flare that they would at least consider filing patent applications. As an in-house attorney, I’d say that your pay probably reflected in part that aspect of your employment. When you took that job, you became complicit in the activity you decry.

    What can you do? Don’t work for companies that seek patent or copyright protection for their software.

  46. you don’t exactly describe the players accurately— 21st Century, AIPLA, IPO, are all shills for the pharma position — any differences are just optics.

  47. So I’m a software guy who doesn’t think software patents are a good thing. If I go to work for a company to write them software, I end up signing a bunch of mumbo jumbo. I write them some great software, which they’re totally happy with, but they try to file patents on the software. Well, I know the patents are bogus, because the things I “invented” are obvious or already done before, and I refuse to sign. I did what I got paid for — wrote software that’s making money for the company. But they want to screw up my profession and my society by getting a monopoly license to the ideas that are floating around the industry.

    Under this proposed law, the company could just sign without me, certifying that I’m under an assignment contract, and the patent will issue? How can I, as the actual inventor, make my opposition to the patent known to the Patent Office? Do I even find out that they’re trying to patent it? Do I ever get notified? Or do I have to stumble across the patent on the web to discover that my work has been used to fleece the public?

  48. I am not a lawyer – I am just an agent.
    It sees to me thatthat the “proposed rules” (i.e. USPTO limiting continuations, etc) are illegal – i.e. you need congress to change that.

    Does Sec. 11 affect anything (see below) – i.e. is this a legislative hint that the Director can do ‘what he wants’ without getting slapped down in court ???

    Lawyers out there – please provide an answer.

    Sec. 11. Regulatory Authority.

    The Director is granted rulemaking authority “to carry out the provisions of this title or any other law applicable” to the PTO or that is necessary to govern the operation and organization of the office

  49. Leahy-Hatch / Berman-Smith
    The Patent Reform Act Of 2007
    Section-By-Section

    Sec. 1. Short Title; Table of Contents. This Act may be cited as the Patent Reform Act of 2007.

    Sec. 2. Reference to Title 35, United States Code. All references to sections are to title 35, United States Code.

    Sec. 3. Right of the First Inventor to File.

    In general. — The United States stands alone among Nations that grant patents in giving priority for a patent to the first inventor, as opposed to the first to file a patent application for a claimed invention. The result is a lack of international consistency, and a complex and costly system in the United States to determine inventors’ rights. The United States Patent Office (“USPTO”) currently uses an interference proceeding to determine which party was first to “invent” the claimed invention, where competing claims arise. The determination is intensely fact-specific and costly to resolve. By contrast, a first-to-file system injects needed clarity and certainty into the system.

    This section converts the United States’ patent system into a first-to-file system, giving priority to the earlier-filed application for a claimed invention. Interference proceedings are replaced with a derivation proceeding to determine whether the applicant of an earlier-filed application was not the proper applicant for the claimed invention – such a proceeding will be faster and less expensive than were interference proceedings. This section also encourages the sharing of information by providing a grace period for publicly disclosing the subject matter of the claimed invention, without losing priority.

    Specifically, this section makes the following amendments to implement the first-to-file system:

    Subsection (a). – § 100 is amended to include definitions for terms necessary for the conversion to first-to-file.

    Subsections (b) & (c). – § 102 is replaced and § 103 is amended, as follows. A patent may not issue for a claimed invention if the invention was patented, described in printed material, or in public use (1) more than a year before the filing date or (2) anytime prior to the filing date if not through disclosure by the inventor or joint inventor.

    A patent also may not be issued if the claimed invention was described in a patent or patent application by another inventor filed prior to the filing date of the claimed invention. A grace period is provided for an inventor or joint inventor that discloses the subject matter of the claimed invention.

    Further, an exception is made for claiming an invention if the subject matter previously disclosed was obtained directly or indirectly from the inventor or joint invention or if the subject matter was owned by the same person or subject to an obligation of assignment to the same person.

    The CREATE Act is preserved by including an exception for subject matter of a claimed invention made by parties to a joint research agreement.

    Subsections (d) & (e). – § 104 (requirements for inventions made abroad) and § 157 (statutory invention registration) are repealed, as part of the transition to first-to-file.

    Subsection (f). – Amends § 120 related to filing dates to conform with the CREATE Act.

    Subsection (g). – Makes various conforming amendments for first-to-file transition.

    Subsections (h), (i) & (j). – Repeals the interference proceeding authorized in § 291 and creates a new “derivation proceeding” in § 135(a), designed to determine the inventor with the right to file an application on a claimed invention. An applicant requesting a derivation proceeding must set forth the basis for finding that an earlier applicant derived the claimed invention and without authorization filed an application claiming such invention. The request must be filed within 12 months of the date of first publication of an application for a claim that is substantially the same as the claimed invention. The party making the request (1) must have filed an application not later than 18 months after the effective filing date of the opposing application or patent and (2) must not have filed an application, within one year of the earliest effective filing date of the application, containing a claim that is substantially the same as the invention claimed in the earlier filing application. The Patent Trial and Appeal Board (the “Board”) shall determine the right to patent and issue a final decision thereon. Decisions of the Board, in general, may be appealed to the Federal Circuit.

    Sec. 4. Inventor’s Oath or Declaration.

    In general. — The section streamlines the requirement that the inventor submit an oath as part of a patent application.

    An applicant may submit a substitute statement in lieu of the inventor’s oath in certain circumstances, including if the inventor is unable or unwilling to make the oath. Failure to comply with the requirements of this section will not be a basis for invalidity or unenforceability of the patent if the failure is remedied by a supplemental and corrected statement.

    An assignee of an invention, or a person who otherwise shows sufficient proprietary interest, may file an application for the patent.

    Sec. 5. Remedies for Infringement and Affirmative Defenses Thereto.

    Relationship of Damages to Improvements over the Prior Art.— As products have become more complex, often involving hundreds or even thousands of patented aspects, litigation has not reliably produced damages awards in infringement cases that correspond to the value of the infringed patent. This section, therefore, preserves the current rule that mandates that a damages award shall not be less than a “reasonable royalty” for the infringed patent, and further requires the court to conduct an analysis to ensure that, when a “reasonable royalty” is the award, it reflects only the economic value of the patent’s “specific contribution over the prior art”, i.e. the truly new “thing” that the patent reflects. The court also has to identify the factors that will be considered in determining a reasonable royalty, ensuring that the record is clear on what the judge or jury looked at in awarding damages. The court must also consider any non-exclusive marketplace licensing of the invention, if there is such a history, in determining a reasonable royalty. Finally, the court is instructed to consider any other relevant law, which is included to ensure that the significant body of judge-made law on the topic of damages awards in infringement cases is preserved.

    Willful infringement.— A willful infringer of a patent is liable for treble damages. The current definition of willful infringement, however, perversely discourages parties from reviewing issued patents to determine whether a patent exists. This section provides that a court may only find willful infringement if the patent owner shows, by clear and convincing evidence, that (1) the infringer, after receiving written notice from the patentee, performed one of the acts of infringement, (2) the infringer intentionally copied the patented invention with knowledge that it was patented, or (3) after having been found by a court to have infringed a patent, the infringer engaged in conduct that again infringed on the same patent. An allegation of willfulness is subject to a “good faith” defense.

    Prior user rights.— The defense to infringement for patents involving a “method of doing or conducting business” based on the alleged infringer’s having reduced the subject matter to practice one year prior to the filing date is amended to apply to all patents and require only that the subject matter be commercially used (or substantial preparations be made for commercial use) prior to the effective filing date of the claimed invention.

    Sec. 6. Post-Grant Procedures.

    In general.— After a patent issues, a party seeking to challenge the validity and enforceability of the patent has two avenues under current law: by reexamination proceeding at the USPTO or by litigation in federal district court. The former is used sparingly and is considered not very effective; the latter, district court litigation, is unwieldy and expensive. This section therefore creates a new, post-grant review that provides an effective and efficient system for considering challenges to the validity of patents. Addressing concerns that a post-grant review procedure could be abused by cancellation petitioners, this section requires the Director to prescribe rules for abuse of discovery or improper use of the proceeding. In addition, it bars successive petitions in either the first or second window, and prohibits a party from reasserting claims in court that it raised in post-grant review.

    Reexamination procedures.— Amends the reexamination procedures of § 303(a) to provide that, within three months of a request for reexamination of a patent by the patent owner, or at any time on the Director’s own initiative, the Director may determine whether a substantial new question of patentability is raised by patents discovered by him or cited by any other person.

    Post-grant review procedures.—

    § 321.– Permits a person who is not the patent owner to file a “petition for cancellation” before the Patent Trial and Appeal Board based on any ground that might be raised under section 282(a)(2) and (3). The Director shall establish fees to be paid by the person requesting the proceeding.

    § 322.– The petition for cancellation can only be filed (1) within 12 months of the patent’s issue or reissue (known as the “first window”), or (2) if there is substantial reason to believe that the continued existence of the challenged claim is likely to cause the petitioner significant economic harm, the petitioner has received notice from the patent holder alleging infringement by the petition, or the patent owner consents to the proceeding in writing (known as the “second window”).

    § 323.– Certain procedures are required, including setting forth the basis for the petition.

    § 324.– Successive petitions under either the first or second window are prohibited, unless the patent owner consents in writing.

    § 325. – The Director may not institute a post-grant review proceeding unless the Director determines that the information presented provides sufficient grounds to proceed.

    § 326.– The Director shall establish rules and standards for post-grant review, which should result in a final decision within 12 months. Rules for discovery may, and sanctions for abuse of process shall, be prescribed by the Director.

    § 327.– The patent owner has a right to file a response to the cancellation petition and may include affidavits, declarations and any additional factual evidence and expert opinions on which the patent owner relies in support of the response.

    § 328.– The presumption of patent validity does not apply in post-grant review; burden of proof is preponderance of the evidence.

    § 329.– Patent owner may file one motion to amend the patent, or cancel or propose a substitute to any challenged patent claim, in response to a challenge, provided that the amendment may not enlarge the claim or introduce new matter.

    § 330.– The Board shall issue a final decision if the challenge is not otherwise dismissed.

    § 331.– If a final decision of the Board that is not timely appealed, the Director shall publish a certificate canceling any claim determined unpatentable.

    § 332.– The Director may determine rules relating to other ongoing proceedings.

    § 333.– A party against whom final judgment has been entered under 28 U.S.C. § 1338 may not file for post-grant review based on propositions that party could have raised in federal court.

    § 334.– A petitioning party whose petition with respect to any original or new claim of the patent is denied may not, based on any ground which the petitioner raised, pursue reexamination of such claims, interference of such claims, post-grant review of such claims, or assert the invalidity of such claims in any civil action under 28 U.S.C. § 1338.

    § 335. – A party dissatisfied with the final determination of the Director in a post-grant review may appeal the determinations under sections 141 through 144.

    Sec. 7. Definitions; Patent Trial and Appeal Board.

    The Board of Patent Appeals and Interferences is replaced with the new Patent Trial and Appeal Board. The Board is charged with reviewing adverse decisions of examiners upon applications and reexamination proceedings, determining priority and patentability, and presiding over the new post-grant review proceedings.

    Sec. 8. Study and Report on Reexamination Proceedings.

    The Director shall, not later than 3 years after the date of enactment, conduct a study on the effectiveness of the different forms of review under title 35, and submit a report to the House and Senate Judiciary Committees on the results of the study, along with any suggested amendments.

    Sec. 9. Submissions by Third Parties and Other Quality Enhancements.

    In general.— This section is designed to improve patent quality by creating a mechanism for third parties with knowledge of the subject matter of a claimed invention to submit relevant information about prior art to the USPTO.

    Subsection (a). – § 122(b)(2), which provides confidentiality to patent applications for an applicant who is not filing in another country, is repealed.

    Subsection (b). – Creates a mechanism in § 122 for third parties to submit timely, pre-issuance information relevant to the examination of the application.

    Sec. 10. Venue and Jurisdiction.

    In general.— This section addresses two litigation issues unique to the patent world. Subsection (a) deals with venue. A venue section specific to patent infringement cases exists in 28 U.S.C. § 1400(b). A change in the general venue provision, 28 U.S.C. § 1391, was later read into the patent venue provision. The result has been forum shopping, which this subsection addresses. Subsection (b) makes patent reform litigation more efficient by providing the Federal Circuit jurisdiction over interlocutory orders in what have become known as Markman orders, in which the district court construes claims of a patent. The contours of the claim are crucial to resolution of the patent litigation, and authorizing interlocutory appeals will add predictability at an earlier stage of litigation.

    Subsection (a). – The jurisdiction and venue provision for patent cases is amended to specify that any action brought related to patents, other than an action for declaratory judgment or seeking review of a decision of the Board, must be brought in the district where either party resides or where the defendant has committed acts of infringement and has a regular place of business. For purposes of this section, a corporation resides either where its principal place of business is located or where it is incorporated.

    Subsection (b). – The Federal Circuit is given jurisdiction over interlocutory orders regarding claim constructions.

    Sec. 11. Regulatory Authority.

    The Director is granted rulemaking authority “to carry out the provisions of this title or any other law applicable” to the PTO or that is necessary to govern the operation and organization of the office.

    Sec. 12. Technical Amendments.

    Sec. 13. Effective Date. Except as otherwise provided, this Act takes effect 12 months after the date of enactment and applies to any patent issued on or after that effective date.

  50. “This looks a lot like forced licensing”

    No, it looks a lot like a license to steal from small patent holders

  51. By the way, this part:

    “Limitation of damages to only the economic value of the improvement as compared to the prior-art;
    Specific limitations on when damages may be trebled for willfulness;
    Post-grant opposition proceedings with a reduction in the litigation estoppel effect;
    Limitations on patent venue;”

    This looks a lot like forced licensing. You may be challenged multiple times by the same entity based on invalidity, you may only sue in certain venues (which means slower and less friendly venues than ones currently available), the court will determine the economic value of your invention as a function of its improvement on the prior art, and you cannot get treble damages from someone knowingly stealing your invention.

    If that doesn’t say “settle or the court will dictate a settlement for you,” I’m not sure what does.

  52. First to file is an issue for small business. Companies like MS and HP will win that one consistently since they file anything and everything immediately upon conception. As previously stated, sometimes independents need to get some things in order. The other problem here is with patent attorney time. EVERYONE will want EVERYTHING filed immediately, like same day. That’s not possible, it’s going to lead to tons of malpractice hearings, and the price of patents will go way up. I don’t know of anyone willing to lower fees for high volumes of time sensitive work. Most RAISE rates for that kind of thing.

    You sign an obligation of assignment whenever you take up R&D work for a new company (otherwise you don’t get the job). It’s a fair agreement that says they’re paying you to develop (invent) things FOR THEM and as such, you must assign inventions made in the course and scope of your employment TO THEM.

    The issue usually raises its head when an inventor/engineer goes to work for a new company and moves. They can be nearly impossible to get a hold of. There is a process for declaring in abstentia, but making it easier would be nice. For example, if the other inventors (or an agent of the common assignee) need only certify that the co-inventor was subject to an obligation of assignment to the common assignee, then that would simplify things. There’s no downside here IF that is what the new proposal says.

  53. All this pussy-footing around with the gradual dismantling of the patent system stretched out over years, in such a way that only practitioners can see what’s going on…why doesn’t the legislature show some guts and just abolish the patent system altogether, generating headlines that anyone could understand (Screw the Constitution, Who Wants Patents? – not MY constituents).

  54. “To promote the progress of science and useful arts, by securing for limited times to . . . inventors the exclusive right to their . . . discoveries;”
    Whether these reforms are good for America or not is a difficult question. Either way, it seems an easier conclusion that the reforms are pushing against the constitutional mandate.

  55. Is there anything in the bill as to how first-to-file would be implemented? In other words, will it apply to new applications filed after a certain date? The only thing I saw related to this is a provision that, unless otherwise stated, the new law applies to all patents issuing 12 months after passage. That cannot possibly apply retroactively to applications currently pending.

  56. small guy wrote, “As soon as you invent the ‘thing’ they can kick you out and file for a patent putting e.g. their CEO’s name as a sole inventor.”

    I would expect that you would have to list the true inventors, even if the corporation is the applicant. I believe the reform relates to who can be an applicant, rather than who can be inventor.

  57. Interesting that changes/elimination of inequitable conduct & willfulness may not be part of this ‘sweeping’ reform bill. I was all over the inequitable conduct issue, but now I may have been obsoleted,

  58. “Have you ever tried NOT to sign those standard forms when you start your new job for a big tech company ?”

    I think most Americans would agree that a standard quid pro quo employee agreement is quite different from the “draconian” effort to “make you sign” something that you referred to you in your earlier comment.

    In Sweden or Switzerland they might have laws against such agreements. I doubt you’ll be seeing such laws in the United States, although I’d welcome them in a package which included universal health care and dismantled most of the American military.

  59. “That would be fraud on the PTO, and any resulting patent would be invalid.”

    Yes, and that kind of fraud will be committed all the time if inventor’s cooperation is not needed by their employers…
    Now go and try to invalidate their patent, being a small guy. Good luck with that…

  60. “Suppose you are employed by some big corp to work on some cool invention…
    As soon as you invent the “thing” they can kick you out and file for a patent putting e.g. their CEO’s name as a sole inventor.”

    Really, small guy? Where is that written in the existing law or in the proposed law?

    My guess is that the reform is trying to address the situations where a co-inventor, for one reason or another, decides to spoil a patent application by refusing to sign a declaration or some other formal paper. This actually happens. It’s a problem. You don’t need a tinfoil hat to understand why someone might attempt to propose some rules for addressing the problem.

  61. Actually, Malcolm,

    Have you ever tried NOT to sign those standard forms when you start your new job for a big tech company ?

  62. “Suppose you are employed by some big corp to work on some cool invention…
    As soon as you invent the “thing” they can kick you out and file for a patent putting e.g. their CEO’s name as a sole inventor.”

    That would be fraud on the PTO, and any resulting patent would be invalid.

  63. “But, of course, they own you in the first place by making you sign some draconian non-compete agreement.”

    Actually, small guy, contracts signed under duress are void by law in every state in the country.

  64. “individuals often cannot afford to file immediately after they develop something.”

    I recognize that metoo is not dedicated to pressing this argument. But I have yet to hear somebody explain why this information (assuming it’s true, which I have no reason to believe it is) is deemed significant in any debate about the institution of a first-to-file versus first-to-invent scheme.

    People or entities with less money are ALWAYS at a disadvantage relative to those with more money. It’s not news and unless there is some credible (i.e., non-anecdotal, sober) evidence that “independent inventors” will be truly disenfranchised by the changes in the law, the subject is not worth raising in a serious discussion of the impact of the proposed changes.

    Furthermore, the last time I checked, the cost of filing an application at the PTO and securing one’s priority date is the cost of a stamp.

  65. “Why exactly is reform to make it easier to file a patent application without the inventor’s cooperation an issue? Wouldn’t this be a bad thing?”

    Ha-Ha-Ha

    Suppose you are employed by some big corp to work on some cool invention…
    As soon as you invent the “thing” they can kick you out and file for a patent putting e.g. their CEO’s name as a sole inventor.

    But, of course, they own you in the first place by making you sign some draconian non-compete agreement.
    Gosh, I love this country
    And that poor, err… actually now very rich, inventor of the blue LEDs was complaining about Japan….

  66. Interferences rarely enter into the equation, especially for individual inventors. There just are not that many interferences, and they tend to occur more often in fields such as chemistry, biotech, etc. (i.e., areas less likely to include individual inventors). But, first-to-file does impact individual inventors more so than large corporations and the like. For example, individuals often cannot afford to file immediately after the develop something. Instead, it may take them awhile to further develop their invention, obtain funding, and perhaps even try to market it to some extent first. In contrast, large R&D focused corporations can afford to quickly file on every new development, no matter how small.

    Having said all of that, I think the harm from a first-to-file system has been somewhat overblown. It certainly adds additional certainty to the patenting process.

  67. “# First-to-file rights and …
    (begin sarcasm)
    Just taking a quick look at the reforms, I am glad to see they are trying to protect big corporations instead of inventors.
    (end sarcasm)
    Posted by: xeggbert | Apr 18, 2007 at 01:12 PM”

    The first-to-invent system currently in place may seem more friendly to the individual inventor, but in reality I don’t think many individuals have deep enough pockets to see an interference through to completion. I’d be curious to see some statistics regarding the types of entities involved in interferences, and their respective sucess rates.

  68. I’m sure members of Congress are tired of getting all of those phone calls from disgruntled constituents complaining about their patent filing nightmares when they can’t get an inventor to cooperate. Why else would they even bother an issue like that? 😉

  69. Why exactly is reform to make it easier to file a patent application without the inventor’s cooperation an issue? Wouldn’t this be a bad thing?

  70. # First-to-file rights and …
    # Reform to make it easier to file a patent application without the inventor’s cooperation;

    (begin sarcasm)
    Just taking a quick look at the reforms, I am glad to see they are trying to protect big corporations instead of inventors.
    (end sarcasm)

  71. My comments above were based on the “confidential” draft of the bill previously linked here. Let’s hope that the link was pulled because that draft does not reflect what is in the actual bill being introduced today.

  72. Wow – essentially unlimited (in time) post grant cancellation proceedings at the PTO, with discovery. And even if the cancellation petitioner loses, they are still allowed to challenge the validity of the patent in court or through another cancellation proceedings as long as it is based on any grounds not raised in the original cancellation proceeding. On top of that, if an infringer fails in challenging the validity of a claim in court, they can nevertheless file a cancellation proceeding as long as it is based on something they did not previously have “actual knowledge of.”

    Reading those last two together means that a cancellation petitioner can file a petition to cancel based only a portion of the invalidity arguments it has. If they lose the cancellation proceeding, they can still challenge the validity of the patent in an infringement action as long as it is based on grounds not raised during the cancellation proceeding. Even if they knew about the other grounds for invalidity at the time of the cancellation proceeding. Heck, in theory, they could even file another petition to cancel.

  73. Patent Reform means never having to say you’re sorry (for infringing).

    …I think it was Ryan O’Neil who first said that in “Love & Business Story”.

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