Patent Reform Passes

H.R. 1249, the Leahy-Smith America Invents Act, passed the House today with broad bipartisan support. The Senate passed its version of the bill (S. 23) on March 8th by a vote of 95 to 5.

The House and Senate will now conference to attempt to work out differences between the bills and then a final vote on a compromise bill will have to take place (likely in the Senate). The final version will include a first-to-file regime but will not likely provide the USPTO with any guarantee of full funding.  

The litigation involving the interpretation of the many new provisions of the Bill will occupy Patently-O posts for at least the next decade.

213 thoughts on “Patent Reform Passes

  1. Ned,

    Why are you bringing up mercantilism or exclusive access to resources?

    We are talking about vital resources and the tight-knit nature of the world today (and the US spot in that tight-knit neighborhood).

    The US considered the entire western hemisphere its own backyard more than 100 years ago. There can be no doubt that today the backyard of the entire world is substantially smaller (in the political sense) than the western hemisphere of 100 years ago.

    You seem to want to start arguing on a tangent – can we stick to the conversation we already have?

  2. Ned,

    Please move the goal posts back.

    Oil was a mere example and is not to be taken as the only vital interest – even in that, “exclusive” is an incorrect application of the domino theory. It is plain error to attempt to take the conversation in that direction.

    The Big Stick is brandished for at least two other reasons, which do fall into the evolved view from more than one hundred years ago that NOW our own backyard is the entire world.

  3. Oil.

    Merchantilism?

    Exclusive access to resources?

    Domino effect?

    Teddy, this kind of thinking is only true in this sense: that if the oil of a particular field were captured by hostile powers we would be cut off — somewhat as Japan was cut off by the Allied boycott just prior to Pearl Harbor.

    This kind of thinking is justified if it is in fact true. But, demonstrably, it is not true as oil is fungible and the market is global. Take Iran, for example. They can refuse to sell to us, and they do. But does that make any difference at all? No. Why? Because they do have to sell it; and when they do, it adds to the world supply because the market for oil is a world market. There is no merchantilism anymore.

    Moreover, to enforce an actual embargo against the US would require naval power to block shipping lanes. Now if someone were to do that, that would be an act of war justifying a response.

  4. All or nothing – what a nice gamble.

    At least this way the poison pills that destruct this bill will mean that “patent reform” will be back on the table sooner rather than later and the Congress can once again imbibe from the largess of the special interest lobbyists.

  5. Everyone knew not to mess with other countries’ vital interests or else. Wars happen when nations forget those simple principles.

    On the contrary Ned, this is exactly what leads to the “world policeman” syndrome. As I directly indicated, the world is our own backyard. We were involved in the Middle East precisely because someone was messing with our country’s vital interests (oil). You are correct about the “sphere of influence,” but incorrect about the size of the sphere.

    Your position fails because the sphere has become the sphere of the entire world. Isolationism cannot work and the “Speak Softly and Carry a Big Stick” will only work if you are actually willing to use the Big Stick. If others realize that the Big Stick is only a Big Show, you will get walked on Big Time.

  6. Sarah, the governor of NJ for one.

    Regarding Palin, unless you are a republican who really does not want Sarah representing the party, she would be the very best candidate to face Barak. The best. What fun!!!!

  7. Yes and no.

    First, we need to learn from our mistakes.

    Second, if you want to get out of a hole, you need to stop digging.

    Once upon a time, there was a school of thought about spheres of influence. Everyone knew not to mess with other countries’ vital interests or else. Wars happen when nations forget those simple principles.

    Being a world policman is going to get us into a lot of trouble. It already has.

    We need leaders who avoid unnecessary wars. We need leaders who keep the peace and who always keep the vital interests of the United States in mind before we do anything to provoke conflicts.

  8. Also, only a small percentage of U.S. applications are now witheld from publication.

    This is interesting, as it has come up several times. Do you have a cite to this information or is it a “gut-feel” type of thing? Just how small is this small? Is this small when considering only those apps not seeking related patents outside of the US (because this does make a difference in the discusssion)?

  9. Just as Perot messed up the republican side, Palin can only further mess up the republican side.

    I agree that there is no republican in the field today that can win. None. I am curious as to just who in your mind are these republican heavy hitters that have not yet hit the fray (other than Palin).

  10. Ned,

    Those wanting harminization would argue that the whole world is your own backyard – the world has shrunk since Teddy’s day.

    Using this reasoning, the US should be involved in its own backyard – which now coincides with the rest of the world.

    Hindsight is a wonderful thing to use to say that we should not have been involved – rather like counting angels dancing on the tip of a pin – but would you not agree that isolationism is an impossibility in the internet era?

  11. Paul, do you know how the PTO is going to prevent two different entities from obtaining patents on the same essentially invention? It seems to me that the new bill is set up to prevent the PTO from doing that or even making the inquiry.

    For example, the first-to-file has received his patent and the second-to-file “proves” prior public disclosure when rejected over the first-to-file’s patent. It seems to me that PTO has to issue the second to file’s patent.

    If the first to file’s patent application is still pending, on what basis can they deny him a patent if the prior public disclosure of the second-to-file is not a citable reference?

  12. Big, one really has to ask why we simply didn’t adopt the EPC with all its case law if our objective was “harmonization?”

    Perhaps the powers behind the bill never really wanted harmonization?

  13. Teddy, you have a point there.

    I think we actually have an interest in keeping powers from elsewhere out of our back yard: Spain for example, at the time of Teddy.

    In contrast, look what happens if you poke your nose into someone else’s back yard? England protected Poland and look what happened. We went North of the 38th parallel and got Chinese intervention for our reward.

    Kuwait, IMHO, was a huge mistake for us. That was not a US ally and our intervention got us involved in a region where we generally are not welcome.

    And, just for good measure, Vietnam was a debacle because we were once again messing in China’s backyard.

  14. As long as there are no provisions to ban software, business methods, or remove processes as a separate category in the patent statute how much harm could there be? Of course lack of any such provisions will only encourage the pre-emption as the new dissection non sense by the Anti- patent crowd. But thats the price of progress!

  15. And, after you rush to file a crappy application, it will get hung up in endless post grant review because of all the problems with the spec.

  16. Perhaps someone has already asked the question, but is anyone able to point me to copies of the bills actually passed by the House and Senate?

    Thus far all I have ever seen are the bills as originally presented, and references to amendments that were approved, but the texts of which are nowhere to be found.

  17. Bruce, yes, the new legislations derivation proceedings have several problems, but it’s not going to make much difference. There have been many years of relatively few derivation cases in the interference system. They are both uncommon and tough to win if you were not the first to file. Unlike Perry Mason, poeple who steal inventions do not usually confess to it, and insist under oath that they independently invented it. Also, only a small percentage of U.S. applications are now witheld from publication. Also, the present 135(b)(2) late claiming bar date for a derrivation or any other interference is easy to miss also.

  18. Why doesn’t “Congress” just stick to trying ruin the quality of social and economic life in America for the majority of its productive citizens through gay marriage and through other useless initiatives like universal healthcare that nobody wants rather than ruining America’s hope for a bright economic future. Recently, it was revealed that America has slipped behind India in output. I’m sure Mr. Chopra is thrilled. No wonder he is fully behind “America Invents”. No one, who does not have an anti-American business/innovation agenda, has yet to make a compelling case why this particular reform is necessary and how it will address anything that has been the traditional excuse for reform (e.g. poor examination possibly leading to “bad patents”).

  19. Talk softly. Carry a big stick, and mind our own business. Why not try it for awhile?

    Except the gentleman that created teh slogan thought that “our own business” was everything in the western hemisphere.

  20. Bruce, I saw a first draft of this legislation at a board meeting of the AIPLA about ten years ago. You do know who was doing the draft, don’t you?

    I suspect we will hear a lot from Bob in the coming months as he tells us all what the legislation means.

  21. anon, no fundamental disagreement. Wisdom is hindsight, but we are in this fix in large measure because we like to meddle in the affairs of others. Had we not thrown back Saddam from Kuwait in ’91, our forces would not be involved in the ME at all. That mistake lead to both al Quaeda and to the problem of Saddam, which in turn lead to 9/11 and to Afghanistan and Iraq. Our support for the creation of Israel also might have been a mistake. Getting involved in both WWI and WWII probably were mistakes, although, we had no choice with the Japanese in WWII. They attacked us. Had we not intervened in WWI, the parties would have soon settled with a stable compromise. There probably would not have been a WWII. Had we not backed England and France, they would have been forced to settled with Germany in ’39 and there would probably have been no general war in Europe and no genocide of Jews and Gypsies.

    Now once again we are supporting European wars, this time getting us involved in a civil war in Libya and supporting revolutions across the land. How crazy can we get? Just wait until that madman in Tripoli lands a nuke on Obama’s house.

    Talk softly. Carry a big stick, and mind our own business. Why not try it for awhile?

    Washington was right, not only for his time when England fought it out with Napoleon, but for all time.

  22. File early. File often. And if you aren’t going to foreign file, always request non-publication.

  23. Keep in mind that that quintessential American company, IBM, from which Director Kappos came, and was apparently lobbying for this legislation before he left for the USPTO, apparently now has only approximately 1/4 of its worldwide employees in the U.S., and more employees in India than in the U.S. Not surprisingly, IBM was one of the lead companies pushing for the legislation.

  24. Actually, the reality is that the derivation proceedings are essentially worthless. They were either designed that way, or very badly designed.

    The two most obvious problems are with non-publication and accelerated or fast-track examination. You have a year from publication to request a derivation proceeding, and if the app never publishes, or issues before publication, you are SOL.

    But more importantly, unless you are checking publication of applications very carefully, you are going to miss the deadline. Most often, I don’t find out about competing/derived applications until cited against my applications, most often years after publication. By then, you are SOL.

    That assumes that you can find enough evidence without access to discovery to make a substantial case before filing the request, because, of course, discovery is only available AFTER the USPTO has granted the request.

  25. The problem is that by the time that you saw it on TV, the deals had already been struck, and it was going to pass. Remember a week or so ago, when it was pulled back? Apparently, the proponents (21st Century Alliance) were doing the whipping and didn’t have the numbers. And, didn’t until they finally dropped the prohibition on fee diversion.

    But before that? Amazingly non-transparent. The few hearings were completely stacked in favor of the bill, and opponents were never given a chance to point out the obvious problems with it. And, indeed, it appears that the proponents wrote it, and threw it to Rep. Smith to run with. They also threw around tens of millions of dollars in lobbying.

    That is the part that wasn’t transparent.

  26. All I can say is that the American people deserve the government that they have. You are spied on 24/7 by the intelligence agencies, your Fed Gov. is running guns to the Mexican Drug cartels so our police can be murdered so they can justify taking our weapons from our homes. You are groped and prodded and treated just like cattle all for want to exercise your fundamental right to interstate travel. The women and children are molested at the airports by people who just before would have been lucky to get a job at MacDonalds. The police agencies murder, rape and steal from your fellow citizens on a daily basis. I can provide a link to each and every story. Using its monopoly power over the monetary system it has allowed a financial cartel to come to power and literally take all your property and the value thereof and transfer it to foreign governments and then lie to you about it. It tortures and murders criminal suspects, terrorist suspects, holds them without bail or access to the court system. I ask you, seriously, I ask you, can it not be said that the Crown of 18th Century England treated the colonists then better than the Federal Government treats its citizens today? These are some points to ponder.
    And this one world government, Mexico is in complete insurrection. The recognized civilian government has virtually no control over the country outside of the cities. Ireland, Spain, Portugal, Greece and in full scale revolt. The despotic regimes that we have fostered for nearly 50 years have finally seen their day of reckoning in the Middle East.

  27. “Nah. Much better to “push more of the work back to the client in a ‘pre-engangement’ mode.”"

    Sounds like the attorney equivalent of the Dudas reign of TERROR to me!!!!

  28. It appears that there are only circle jerks posting on this thread (School’s out and Rebecca Black in particular – who the hel_L says “lulz”?.

    Sorry PatProcAtty, you will have to go elsewhere for a conversation on the merits.

  29. “…wouldn’t it make more sense to simply inform your client about the risks inherent to delay, communicate a realistic schedule to him, and then meet your commitments once he accepts the schedule and acknowledges the risks?”

    Nah. Much better to “push more of the work back to the client in a ‘pre-engangement’ mode.”

    Lulz

    Keep pushing, Mr. Hardworking. You’re gonna push your clients right into the arms of your competitors.

  30. You know Alun, you obviously like Obama, probably over any republican.

    But, just for laughs and a whole lot of fun, I’d like to see Sarah Palin get the republican nomination. Regardless of what you think of her intelligence and education, she has the charisma to win in a landslide. Even Howard Dean cautions against the complacent assumption that there is no way that Palin could win.

    I don’t know much about the rest of the field to have an opinion one way or the other. I myself am have a libertarian bent, and find myself agreeing with much of what Ron Paul has to say. But he doesn’t have a chance.

    Just on looks and charisma, my first impressions tell me there is no republican in the field today that can win. None. I think the heavy hitters are yet to join the fray.

  31. Wouldn’t it be even more prudent to simply refuse to do any work for your clients at all?

    On the other hand, since malpractice requires a failure to follow professional standards and not just some action or failure to act that causes harm to your client, wouldn’t it make more sense to simply inform your client about the risks inherent to delay, communicate a realistic schedule to him, and then meet your commitments once he accepts the schedule and acknowledges the risks?

  32. I remember when Bush Sr. had a 90% approval rating one year before the election. He was a lock. Mainstream democrats took a pass, including Kennedy, Mondale and others. An obscure governor from the South got the democrat nomination. And then all hell broke lose when the real nutcase, Ross Perot, through his hat into the ring and scuttled Bush’s chances.

  33. Obama has his faults, but he is looking good for reelection.

    He is a shoe-in, a guaranteed lock.

  34. Ned,

    I wish that I dealt with more in house people like you that demanded such thoroughness.

    That is simply not the case (and I would daresay that this is more typical rather than less).

    Would it be nice? Yes.

    Is this realistic? No.

    Again, as I posted above at 3:49 PM, our practice is different. It is merely prudent to be more cautious than not.

  35. If you disagree with this legislation, contact the AIPLA immediately — they have more sway with Congress/White House than we do individually.

    American Intellectual Property Law Association
    241 18th Street South, Suite 700 • Arlington, VA • 22202 | T: (703) 415-0780 • F: (703) 415-0786 • aipla@aipla.org

  36. Nutcase = no grip on reality, aka the tea party
    Loser = certain not to be elected

    I think once you eliminate the above that leaves you with perhaps Pawlenty and a couple of Mormons, the latter identified as such only because the GOP evangelical wing mostly say they won’t vote for one. I have nothing against them myself. And one of the aforesaid Mormons invented Obama’s healthcare plan, which, strange-to-tell, counts against him in the GOP primary.

    Obama has his faults, but he is looking good for reelection.

  37. You know there’s already case law saying that everything admitted under 102 is also prior art under 103. It is well settled that such precedents carry over if nothing in a new statute specifically says otherwise.

  38. Patrick,

    As you and I are good friends, we both know that the British thought our actions were likewise illegal.

    And I am pretty sure that we regarded what we did with more respect than “Yeah, well, after you win you can dress it up as fancy as you like.”

    This is hardly the same calibre of speech from the man that said “Is life so dear, or peace so sweet, as to be purchased at the price of chains and slavery? Forbid it, Almighty God! I know not what course others may take; but as for me, Give me Liberty, or give me Death!

    And while your name was not among those that put out there front and center, I trust that you also believe that whenever any form of government becomes destructive to the ends of our unalienable rights, that it is the right of the people to alter or to abolish the government, and to institute new government, laying its foundation on such principles and organizing its powers in such form, as to them shall seem most likely to effect their safety and happiness.

  39. Define nutcase. Define loser.

    When you say “losers,” is it because you think the cannot win?

    Was Ronald Reagan a nutcase loser?

    Was Anthony Weiner a nutcase loser?

  40. “Is that a fair exchange, our poor clients for your good ones?”

    Based on your paranoia about being sued for being one day late, it would appear that you only have poor clients.

    “We will take those.”

    Right, because there’s nothing that a “good” client likes to hear more than the kind of “can do” attitude that you exhibit.

    Lulz

  41. Hard, in house, I had a requirement for a disclosure of a written description adequate to support a filing date that we could file as a provisional application. I would often give lectures to the engineers on what was necessary for this purpose. I or one of my staff would review incoming disclosures for sufficiency, and would simply return them if they were not up to snuff.

    If we accepted a disclosure, we filed it as a provisional, assigned it to an attorney or firm to draft and file as a non provisional or PCT, and gave them a year to do it.

    Now, wouldn’t it be nice to do this in private practice as well?

  42. If you don’t have the time to prosecute apps, how is it you have time to look like a fool by rambling on the internets?

  43. Blackacre

    A major muronic glitch of this act and the 1952 debacle is that there is no linking clause between 102 and 103 that says explicitly that prior art as defined by 102 is the same prior art for 103. How much effort would that clause have required? 30 seconds? Well, I just did it in 15.

    This is true.

    Boy, have I got a wacko candidate for you: Herman Cain. He doesn’t like to read either and will limit ALL legislation to 3 pages.

    A ridiculous buffoon, competing for the Clown Candidate title along with Bachmann, Santorum, Ron Paul and Gingrich. Has there ever been a longer and deeper parade of certifiable nxtcase losers than this year’s lineup of Republican Presidential candidates?

  44. Ned,

    We will definitely have to disagree on this point.

    I will not succumb to such a negative reference for secrecy as that is still very much a (in my mind – correctly) given part of the Quid Pro Quo exchange, and one I heartily recommend to all our non-foreign filing clients.

    I would further argue that for a great number of people who recognize the historical context of the Quid Pro Quo that more would agree with me than disagree.

  45. Hard, “Under our current law, we allow for provisional applications with a wide variety of detail because we often chain a succession of provisionals for a nonprovisional filing. It is not so much an issue now with the ability to swear back. That option will no longer be available.

    The point here is to push the quality higher for everything. This should not be such a radical concept for you to understand.”

    I hope you abandon the prior provisionals prior to filing the new one, that of course, includes all the content of the abandoned provisional.

    If you do not know why I say this, I will not explain. You figure it out.

  46. Ned,

    unreviewed by you of course” is not an acceptable practice.

    Not even under current law.

    have the client agree that it is sufficient to support an effective filing date

    The client is not the expert on determining sufficiency.

    Do you practice such that you hamstring yourself as to what you can later claim by so blindly accepting and filing provisional applications? I certainly hope that is not your practice.

  47. Hard, that is your opinion only. A submarine patent operates in secret, surfacing to torpedo ships of commerce. Lemelson’s patents not only had old priority dates, they were secret.

  48. You need to increase the level of completeness and quality of the provisional applications you’re drafting because of the possible passage of this bill? What are you drafting and filing under our current law?

    Under our current law, we allow for provisional applications with a wide variety of detail because we often chain a succession of provisionals for a nonprovisional filing. It is not so much an issue now with the ability to swear back. That option will no longer be available.

    The point here is to push the quality higher for everything. This should not be such a radical concept for you to understand.

    So if you’re 3 days away from the non-provisional due date and the client has some material to add, you’re gonna tell them what? They’re SOL?

    No. We will tell them that added material will be covered in a separate provisional and, if then possible, incorporated into the nonprovisional. It is not a matter that the client will be SOL. It will be a matter of controlling the expectation of the client such that added material “runs its own clock.”

    The point here is to control the process. This should not be such a radical concept for you to understand

    BTW, you do advise your clients that material added to the non-provisional doesn’t get priority to the provisional filing date, right?

    If that added material cannot find the proper support, of course.

    Why are you asking such a basic question?

    Huh? That doesn’t necessarily follow. Acting quickly will minimize your exposure to claims of not acting quickly enough.

    If I have to explain to you how the one is directly linked to the other then you are in the wrong business (maybe that is why you are asking such basic questions).

  49. Hard, why don’t you file the client’s disclosure, unreviewed by you of course, as a provisional on the day you get it and have the client agree that it is sufficient to support an effective filing date for an eventual non provisional, and that on this basis the client does not require you to file a non provisional for one year.

  50. lftsyc,

    Are we planning to be less responsive? Not at all. We are planning to be appropriately responsive and to innoculate ourselves prudently.

    Those very clients that you do manage to take from us are the same that will be suing you for being one day late on filing. You will be so busy defending against malpractice claims that any good clients you have will leave you. We will take those.

    Is that a fair exchange, our poor clients for your good ones? Most likely not. But that is the exchange that you are now bartering for.

    Good luck with that.

  51. MaxDrei,

    “submarines” is not the correct term, as that term applies to applications in the pre-(term from issue)-to-(term from earliest claimed priority) period.

  52. “This is slated to affect both provisional and nonprovisional applications, and further, the level of completeness and quality for provisional applications will be increased so as to both make sure that adequate enablement support is present for possible future nonprovisional filings…”

    You need to increase the level of completeness and quality of the provisional applications you’re drafting because of the possible passage of this bill? What are you drafting and filing under our current law?

    “…and to make sure that our ability to file a nonprovisional quickly is not impeded (we will not let the client spring surprises on us after an engagement is started).”

    So if you’re 3 days away from the non-provisional due date and the client has some material to add, you’re gonna tell them what? They’re SOL?

    BTW, you do advise your clients that material added to the non-provisional doesn’t get priority to the provisional filing date, right?

    “More detail and less exceptions for incomplete disclosure forms will mimize our exposure to claims of not acting quickly enough.”

    Huh? That doesn’t necessarily follow. Acting quickly will minimize your exposure to claims of not acting quickly enough.

  53. If so, I’m going to recommend this to all my clients but only if they pay me to fly off and physically do this.

  54. Yeah, well, after you win you can dress it up as fancy as you like. In the meantime, however, it’s illegal. See 18 U.S.C. s. 2385.

  55. You’re planning to be less responsive to your clients to avoid claims that you weren’t responsive enough.

    …works for Congress

  56. Black Acura TL with illegal Florida plate WP993 (ironically in a University of Baltimore School of Law frame) is parked on Ballenger today.

  57. Awesome! You’re planning to be less responsive to your clients to avoid claims that you weren’t responsive enough.

    I’m sure your soon-to-be-ex-clients are going to be thrilled with that plan.

  58. Try it. You might like it.

    Depreciating, pomp@SS, off-point and obfuscatory…

    Yes, that is IANAE.

    Welcome back IANAE (September cannot arrive quickly enough).

  59. “Whose application are you going to write first: Microsoft or Smith Software Development?”

    How do you decide which to write first under our current law? If you’re diligently drafting your clients’ applications, the change to FTF shouldn’t affect you that much.

    Try it. You might like it.

  60. When, in the course of human events, it becomes necessary for one people to dissolve the political bands which have connected them with one another, and to assume among the powers of the earth, the new separate and equal station to which the laws of nature and of nature’s God entitle them, a decent respect to the opinions of mankind requires that they should declare the causes which impel them to the dissolution of the existing political structure.

  61. Sorry EG, that I did not make myself clear. I’ll try again.

    Big Corp already plays to FtF rules. So no splurge there then.

    Therefore, if there is to be a splurge, it must be Little David who is going to provide it. And Little David always asks for non-publication, no? How many new submarines are launched into the USPTO ether, per year, up to now?

  62. We have discussed possible changes in our office due to the very real threat of increased malpractice claims of not responding quickly enough.

    While we have not finalized those discussions, one idea receiving a majority of support is to push more of the work back to the client in a “pre-engangement” mode. By this, I mean that new requirements for invention disclosure forms will be drafted so that the turn-around time from when we accept the engagement to when we file will be minimized. More detail and less exceptions for incomplete disclosure forms will mimize our exposure to claims of not acting quickly enough.

    This is slated to affect both provisional and nonprovisional applications, and further, the level of completeness and quality for provisional applications will be increased so as to both make sure that adequate enablement support is present for possible future nonprovisional filings and to make sure that our ability to file a nonprovisional quickly is not impeded (we will not let the client spring surprises on us after an engagement is started).

  63. I give up. If only one of our General or Admirals could come to the rescue of the American people from the wholesale destruction of the Constitutional Republic by the Congressional and Executive Branches.

  64. Symptom: “Personally, as both an inventor and patent lawyer, I would gladly see small entity filing fees go to $1000 if it meant getting rid of the brain ded and the non-Engleesh speaking examiners who cost my clients thousands, and thousands.

    Cure: Kill the patient.

  65. MD,

    No, that “splurge” has nothing to do with Section 122 non-publication requests. It has to do having to deal with those first to file provisions that go into effect and provide a “grace provision” for the applicant so poorly drafted (see comment above about “publicly disclosed”) that it will take years of litigation to sort out, and no guarantee that that litigation reaches the correct answer. The only way to avoid having to deal with this uncertainty is file BEFORE these first file provisions with the nebluous “grace period” take effect. Like AC also said above, many individuals and small businesses only care about the US market (that’s big enough for them); those David’s often don’t have the wherewithall to market in Europe, Asia, etc., only large multinational corporations (e.g., the Goliaths like Microsoft) have that ability. And guess who pushed these piece of bilge?

  66. Mr. Duffy, boy have I got a Tea Party Candidate for you! Her name is Michele Bachman. Bio here:

    link to something-stinks.com

    Duffy:
    “The later choice—diverting the fees elsewhere—will surely meet with enormous opposition from inventors who, having paid inflated fees supposedly to fund the patent system, will rightly not want to see the money being diverted elsewhere.”

    Oooo. . .K. So what’s new? Inventors have been doubled taxed in the US for decades and I have not seen a whole lot of opposition. Why don’t we just keep it quiet so they won’t realize what suckers they are.

    Personally, as both an inventor and patent lawyer, I would gladly see small entity filing fees go to $1000 if it meant getting rid of the brain ded and the non-Engleesh speaking examiners who cost my clients thousands, and thousands.

    Duffy:
    “The last time that Congress re-codified the entirety of U.S. patent law, the resulting act—the famous and still in force Patent Act of 1952—occupied only 24 pages in the U.S. Statutes at Large.”

    Man, you got a lot of chutzpah to use the Patent Act of 1952 as a paragon of legislative virtue. That piece of cr.ap started gumming up the system before Graham ever plowed his first furrow.

    The substantive prior art-related problem is that HR 1292 will make life a bit easier when it comes to deciphering 102 but it doesn’t do anything to help understand 103 or the USSCt’s contorted interpretations of 103.

    As to the 1 year grace period, while it’s broadened and simplified as to 102, it appears to me that the grace period only applies to 102, and not to 103 because the exception paragraph is a sub-paragraph of 102.

    A major muronic glitch of this act and the 1952 debacle is that there is no linking clause between 102 and 103 that says explicitly that prior art as defined by 102 is the same prior art for 103. How much effort would that clause have required? 30 seconds? Well, I just did it in 15.

    Duffy:
    “. . . the 140-page patent reform legislation looks positively puny when compared to the 904-page “Patient Protection and Affordable Care Act” of 2010″

    Boy, have I got a wacko candidate for you: Herman Cain. He doesn’t like to read either and will limit ALL legislation to 3 pages. See Jon Stewart’s recent commentary as reported by Chris Wallace.

    .

  67. That’s twice you’ve thrown out something TOTALLY irrelevant to the discussion at hand.

    I really hope you’re missing the point intentionally. It’d be a pretty sad commentary if you were seriously trying to add to the discussion.

  68. we the people are no match for the well-financed lobbyists with their large bri…, er, um, donations.

  69. Citizens are no match for the well-financed lobbyists with their large bri…, er, um, donations.

  70. This is a terrible idea, and I fear that the congressmen who voted for it have no idea how it will impact invention. Just because the title says “America Invents Act,” doesn’t mean that’s what the act actually will achieve.

    Ron Paul 2012.

  71. “Whose application are you going to write first: Microsoft or Smith Software Development?”

    I hope you cleared any potential conflicts before you write either of them.

  72. I have non voting representative in the House or Senate. I live in DC (at the bottom of the Potomac River).

  73. Many times Cy. But I must confess, only ever on business, to confer with patent attorneys (outside counsel and in house) for international corporations. The conversations I have on those visits are a bit different from those I have on these threads.

  74. Yes, we have. That’s why this is a giveaway to the institutional clients and established big businesses.

    Whose application are you going to write first: Microsoft or Smith Software Development?

  75. Did the blue LED case get reported in the USA?

    Yes, Max. We have multi-national corporations over here, too.

    Have you ever actually been to the United States, Max?

  76. Fine though individual inventors are, I suspect that employee inventors do more to nurture and maintain full employment (and the general welfare)in the society in which they live.

    Your suspicions would be completely wrong – at least in the US, where the employee inventors do far less to nurture and maintain full employment (and the general welfare) in the society in which they live than the “individual inventors” (the distinction of which is the topic here).

    This is not a new thought and has been given in response to your teasing again and again and again.

    Drink the water already.

  77. Has anyone given thought to how this change will affect a patent prosecution practice? Under the first to invent rule, an invention’s date is fixed by the inventor’s actions. While there are certain advantages to filing first, for the most part patent application preparation can proceed at a reasonable pace (e.g., FIFO docket management). However, under a first-to-file rule, clients will be in a hurry to get applications prepared and filed since the important date for the application has not yet been set. Therefore, I fear that patent preparations will now be under the gun of increased client time pressures!

  78. No apology needed. Funny, isn’t it. Over here, it is said that there is one way to draft for the world except for the USA, and a different way, exclusively for the USA. So, I agree with you, drafting to meet both those two systems is hard. Too hard for me anyway.

    And I agree with you, Europe does not cherish its individual inventors enough. Employee inventors are better off of course, in those countries (notably Japan, Korea, China) that have adopted the notions of the German Employee-Inventor Act that had its origins in the 1920′s. Did the blue LED case get reported in the USA?

    Fine though individual inventors are, I suspect that employee inventors do more to nurture and maintain full employment (and the general welfare)in the society in which they live.

  79. Max, I apologize if I have scratched your sore spot. My reference to world class is that it has to meet the standards of the US, the EPO, JPO, etc. etc. Despite the efforts at harmonizaton, there are still differences and slip ups are easy. Creating an application that suffices in all of these jurisdictions before you know if the invention has any commercial merit takes the game outside of the scope of the individual inventor.

    We Americans think individual inventors are GOOD thing. Or at least that is our tradition, that, it seems, the big corporations of the USA would like to make a historic relic, like Model T’s.

  80. Re: “..if someone stole your idea and patented it, you (and everyone else) will only have recourse if you yourself also filed an application.”

    1. Yes you will not be able to use the new “derivation” system without ever having filed a patent application yourself, but that is also true of all present interferences.
    2. You will still have ways to invalidate or render uninforceable a stolen-invention patent, including incorrect inventorship, inequitable conduct, fraud, etc..
    3. You may also have a “prior user” defense, if the Senate adopts this part of the House Bill.

    P.S. It’s now too late to still be complaining about most of this patent reform legislation. It’s now time to learn to live with it, and to point out ambiguities and drafting errors that will need a subsequent undisputed “technical corrections bill,” just as we did for the 1999 patent reform legislation. [Just as with the 1999 legislation, attempts to get Congressional attention to such drafting errors in advance has been frustrating.]

  81. Even as more than half of my income is litigation, I say, yes. It’s terrible.

    Arguing over patent infringement, claim interpretation, and damages is one thing. Arguing/litigating over these craptastic changes is an entirely different matter.

  82. conviently, he’s a “technology officer” and not a patent attorney. It’s good that he has no idea what he’s talking about I suppose.

    Because if he understood what he was supporting, he’d be pretty embarassed.

  83. Ah, there’s the point Cowboy. What, in this context, is “world class”? The rest of the world has had to put up with being told, for half a century now, that only Americans know how to write real patent applications, and that anything written anywhere else in the world is lightweight blow-away rubbish that, within the USA, would fall at the first hurdle. So, how much then is it going to cost, to write a “world class” patent application?

    But I take your point, about Catch 22, the financiers. That is the strongest reason in support of FtI, I agree.

    That said, I’m just a teenzy-weenzy bit sceptical about disclosing anything at all to a “financier” without a NDA and before I have protected my own precious property by filing at the PTO. But maybe I do these “financiers” an injustice, and should trust them more than I do? Am I doing them wrong? What do you say?

  84. I don’t care anymore. I will still make money and I will avoid (US) voters for which I have to be responsive to. I will still make money. Don’t care. Anymore

  85. TMWW,

    I do not know if this made it in:

    AMENDMENT TO H.R. 1249, AS REPORTED
    OFFERED BY Ms. WATERS OF CALIFORNIA

    Page 139, insert the following after line 12 and redesignate succeeding sections (and conform the table of contents) accordingly:

    SEC. 29. SEVERABILITY.
    If any provision of this Act or amendment made by this Act, or the: application of a provision or amendment to any person Or circumstance, is held to be unconstitutional, the remainder of this Act .and amendments made by this Act, and the application of the provisions and amendment to any person or circumstance, shall not be affected by the holding.

  86. Nope, I am not saying that the folks that have had their invention on the market for years are entitled to start the patent process. My point was a response to yours about widespread knowledge of what the standards for patentability are, or more accurately ignorance of the standards for patentability, whether it is ftf or fti.

    Yes, many of them have financing problems. But that problem is exacerbated if we add to that the cost burden that they have to file a world-class patent application before they ever offer the invention for sale or go talk to financiers who routinely refuse to sign confidentiality agreements?

  87. These clients of yours, Cowboy. Are they the ones in Catch 22, that can’t get going because they lack finance, and lack finance because they lack a patent? Or are they ones who have told the public about their innovation, have started to cash in on their innovation and then it suddenly dawns on them that perhaps as the next step they should patent their money-maker.

    Why should we give these latter people, belatedly, a 20 year monopoly? For what? Just so you earn a crust? Where’s the public policy justification?

  88. There is more truth to your statement than the first glance provides.

    Even though the following link is related to a different form of IP, the trend is clear. From link to ipkitten.blogspot.com :

    Analysts say they expect 500 to 1,000 domain suffixes, mostly for companies and products looking to stamp their mark on web addresses, but also for cities and generic names such as .bank or .hotel. Websites can now be categorised by subjects such as industry, geography and ethnicity – as well as using Arabic, Chinese and other scripts [this should be fun, says Merpel, who wonders how quickly Western Kats will learn to identify the main ones, for good or ill]. …it will also now be possible to have website names entirely in Mandarin or Cyrillic or any other script, which will ease the problem of reading and writing addresses for the majority of people who do not use the Roman alphabet.

    I have also read that the Chinese will likely add more users of the internet in the next few years than the existing population of the United States.

    The long march continues.

  89. Max, as a US attorney representing Americans, I can tell you that lots of them are focussed solely on the US market. I tell them about the need for early filing to secure rights in foreign countries and, of course, the associated costs, and they say no thank you, the US is enough market for me. Why must they play by European rules?

    As for the the idea of “Race to the Patent Office” spreading through society, it ain’t gonna happen. We’ve had the one year on sale bar in this country for decades and virtually all people new to the patent system are surprised when I tell them about it. Some clients even say, “The invention has proven itself in the market for several years, so that proves that it warrants patenting.”

  90. MaxDrei:
    Your statement is correct, except that your presupposition is wrong. You presuppose that international corporations represent America’s interest. Look around boy. They don’t. In fact, when I say less government, or smaller government, I mean ALL government: civil, theological (churches), private (cartels) and even business (smaller corporations). You see the influence and size of government must shrink.

  91. This “splurge” EG. Will they be of new applications that include a block on 18 month publication? If so, will they really be so numerous?

  92. Now you say it, Big. But look what abuse got hurled at me, when earlier this year I invited contemplation of the option of adopting the 30 year old, coherent, tried and tested EPC model that in the meantime ROW has adopted, and adopted because it has a thought-through solution to the issues you identify as deficiencies in this Bill. It’s not much use advocating it now though, is it?

    And still some pol last night was urging an amendment that would postpone the coming into force of the Bill till ROW harmonises to it. Unbelievable.

    How does that old Chinese curse go? May you be given what you ask for?

  93. As I’ve said before, H.R. 1249 (the so-called oxymoronic America Invents Act) is an utter sham. And I applaud Senator Tom Coburn for expressing his outrage at the complete and meaningless “watering down” of Section 22′s effort to end fee diversion. Addicts like Congressman Rogers and others can’t kick the habit of fee diversion, which is effectively a tax on innovation (yes, that awful “T” word). I frankly wish Coburn was my Senator instead of the two I currently have in Ohio, especially Sherrod Brown who is definitely anti-patent.

    I truly hope that we won’t rue this day, but I’m not optimistic at this point. My disgust over H.R. 1249, as well as S.23, is complete and thorough. This legislation is ill-considered, misguided, poorly drafted and adverse to the interests of small innovative American businesses that rely on patent rights to compete with the large multi-national corporations. In short, H.R. 1249, as well as S.23, are “job killers” for Americans. And how the USPTO is going to effectively handle post-grant oppositions while fee diversion continues is unanswered.

    I’m sure those of us who represent small innovative American businesses before the USPTO will figure out a way to cope with this oxymoronic legislation. But it won’t be easy or inexpensive. And get ready for the “filing splurge” which is likely to occur before the effective date of those first to file provisions.

  94. I don’t care anymore. I will still make money and I will avoid (US) clients for which I have to write new applications. I will still make money. Don’t care. Anymore

  95. The issue here was never first to file per se – so few interferences are declared every year that for all intents and purposes the USA is already a first-to-file jurisdiction. The issue is that this is a unique, previously untried version of first-to-file, in which (a) early publication of the invention can preserve rights in the USA but destroy them elsewhere, (b) earlier-filed-but-as-yet-unpublished applications can be cited against the inventive step of later-filed apps, (c) if someone stole your idea and patented it, you (and everyone else) will only have recourse if you yourself also filed an application. Most of us wouldn’t be complaining if the USA simply adopted the EPO system, but that’s not what happened here.

  96. That’s pretty scary stuff, Prog. Patently-O might become unpopular? Has anyone told Congress?

  97. As one speaker after another urged, yesterday, the future prosperity of the USA is dependent upon US inventors securing valid patent rights in other jurisdictions. As we are forever told, international corporations know this already, the global titans. But small business does not yet grasp its importance for the future, right? However, once the idea of a “Race to the Patent Office” spreads through society, filings will take place early enough. It might have saved Dr Palmaz for example, inventor of the stent.

    Chickens Little in these threads lament that they will have to file patent applications on the same day as their inventors tell them about their inventions, or else face a malpractice suit. No need to go that far. But every little degree of expedition will help. Unless of course all those politicians were wrong, and the only thing that will ever count is a US patent. Were they wrong? Based on my view here in Europe, I think not.

    Is that enough detail for you?

  98. “First to File will actually enhance the ability of the USA to compete in the world. You wait and see.”

    Explain …. in as great as detail as possible.

  99. How about failure by non-feasance, by simply tending to the more important things that Congress should focus their attention on; rather than pushing one more thing, like the massive health care bill debacle that nobody wants (waiver anyone?), that is likely to further frustrate any hope for economic recovery.

  100. OK. Fine with me. It deserves to die, doesn’t it? But what will be method of execution? Failure to agree on fee diversion? Are you serious?

  101. “Write to the senate? Write to the president?”

    Not sure if they can read complicated stuff like this.

  102. Prognosticator writes:

    “The only reason this site is popular at all is because the U.S. patent system is the only one that really has any teeth”

    This is wrong. Me, I read it for the laughs. And don’t worry Prog. First to File will actually enhance the ability of the USA to compete in the world. You wait and see.

  103. I found the C-Span coverage fascinating, and uplifting. Admirable transparency. Fine example to the world.

    For example, one gentlewoman proposed an amendment to make it statute law that the Commissioner shall send foreigners to the back of the queue for patents at the USPTO (this because in some countries their is prejudice against Americans). But no worries. In her amendment, the Commissioner would have to do something, if it turns out in the end that the provision offends International Conventions of which the USA is a member. Now what gentleman politician with voters watching his every move could vote against that amendment? Yet most did. Bravo.

  104. Aneesh Chopra loves this bill because quite exactly contrary to everything he has indicated, it will discourage small inventors, the backbone of true innovation, raise the specter of endless administrative challenges, and ultimately raise procurement costs (the most carefully considered costs) for companies. I would also bet that Mr. Chopra has a vested interest in this bill as it will likely further encourage more people to at least consider outsourcing everything to India.

    This is a very very BAD bill…

  105. “Inventing a Better Patent System
    Posted by Aneesh Chopra on June 21, 2011 at 9:08 PM EDT

    Congratulations to the House Judiciary Committee for its stewardship in ushering the bipartisan, bicameral, Leahy-Smith America Invents Act onto the Floor for full House consideration.

    Enactment of this bi-partisan patent reform legislation would advance an important component of the President’s Strategy for American Innovation. As such, we urge the House to pass H.R. 1249, as modified by the Manager’s Amendment, so this important job-creating legislation can be enacted.

    It is also crucial that final legislative action ensure that the US Patent and Trademark Office’s (USPTO’s) fee collections are made fully available to support the Nation’s patent and trademark system.

    A strong patent system is vital to all types of innovators – whether they are hobbyists, small business entrepreneurs, or team members within large industrial enterprises. The time-limited market exclusivity allowed by patents helps businesses raise funds to create jobs, invest in research and development, and launch new cutting-edge products and services.

    At the same time, the disclosure requirements that accompany patent issuance ensure that others don’t waste time and resources reinventing the wheel but rather accelerate the Nation’s engine of ingenuity by taking inventions to the next level of sophistication and efficiency.

    We desperately need to revamp our Nation’s intellectual property system to meet the needs of today’s fast-moving global economy. Passage of the Leahy-Smith America Invents Act would help boost patent quality, reduce the backlog of patent applications, and cut costs for American companies. The legislation will provide greater certainty and consistency for innovators’ rights, reduce legal costs that often hinder small businesses as they develop their products, and make it easier for innovators to bring their inventions to the global marketplace.

    I am hopeful that the President will have the opportunity to sign this historic legislation this year, which would help unlock the potential of U.S. inventors to help America create quality jobs and out-innovate, out-educate, and out-build the rest of the world.

    Aneesh Chopra is the U.S. Chief Technology Officer”

    link to whitehouse.gov

  106. The litigation involving the interpretation of the many new provisions of the Bill will occupy Patently-O posts for at least the next decade.

    Nice wishful thinking Dennis. You may want to take a cold shower.

    If this monstosity passes, no one will care anymore about toothless patents and PatentlyO readership, along with U.S. innovation, will fall to 0. The only reason this site is popular at all is because the U.S. patent system is the only one that really has any teeth. Patent “reform” will change that in a hurry. Are you aware of any EPO, JPO, SIPO, or other non-U.S. patent blogs that are popular? Didn’t think so.

  107. Ned:
    It will be tossed. I have too many false marking cases that I am betting on. I think I can keep this thing hung up for at least 7 years. That will keep the old one in effect, unless there provisions can be severed. I am looking at a an attack on of the provisons to prevent the new False Marking provision from going into effect. I don’t know if I am good enough to fight the entire Congress. I am not sure it is wise. However, I am considering it.

  108. Did anyone see a severability clause it the act? Do they add that during conference?

  109. Just for example, if I go to the darkest forests of New Guinea and hand a native a description of my invention in an obscure language, photographing the transaction with a picture of today’s edition of the local weather report, have I disclosed my invention such that I can reserve a filing date? Do I have to leave it with him. Can I then put it back in my briefcase and keep it secret?

    Because if your average patent attorney can’t advise you about this typical real world issue off the top of his/her head in five seconds, the bill must be a total piece of sxxt that will destroy America as we know it.

  110. Just for example, if I go to the darkest forests of New Guinea and hand a native a description of my invention in an obscure language, photographing the transaction with a picture of today’s edition of the local weather report, have I disclosed my invention such that I can reserve a filing date? Do I have to leave it with him. Can I then put it back in my briefcase and keep it secret?

  111. irapatentgeek said
    You won’t need to learn mandarin. By my count a thermonuclear conflict will occur with China no later than 2018 and possibly as soon as 2015. The first encounter will be fleet to fleet in the South China sea. Our allies will be involved, we will have to come to their aid. China will nuke our naval base in Singapore. This will result in a small scale tactical reprisal. Russia will posture then back down and India and Pakistan will go at it. Suddenly Fukushima won’t look that bad any more. We will then maintain our preeiminance as we have always done. Just ask any American Indian :) There’s politics and then there’s reality. Look at it this way, overpopulation will no longer be an issue.

  112. Senate passed it 95-5, and here’s what Leahy had to say about the House bill:

    “THE HOUSE-PASSED BILL DIFFERS SLIGHTLY FROM WHAT THE SENATE APPROVED OVERWHELMINGLY IN MARCH, BUT THE CORE REFORMS ARE CONSISTENT. JUST AS THE SENATE DID WHEN IT PASSED THE AMERICA INVENTS ACT IN A SIGNIFICANT 95-5 VOTE, WE SHOULD COME TOGETHER AND APPROVE THIS BILL ONCE AGAIN, AND SEND IT TO THE PRESIDENT’S DESK TO BE SIGNED INTO LAW. AMERICA IS THE GLOBAL LEADER IN INVENTION AND INNOVATION. IF WE ARE TO MAINTAIN THAT POSITION, WE MUST HAVE A SYSTEM THAT COMPETES IN THE GLOBAL MARKETPLACE. THE AMERICA INVENTS ACT WILL PROVIDE THE SYSTEM AMERICA NEEDS TO WIN THE FUTURE THROUGH INNOVATION.”

    Unless Obama succumbs to lung cancer before he has a chance to sign it, this thing will sail through the senate and become law.

  113. “The litigation involving the interpretation of the many new provisions of the Bill will occupy Patently-O posts for at least the next decade.”

    The changed bill still needs to pass the Senate (unlikely in its current form?), so don’t get too excited about that litigation yet!

  114. Nice to know you’re happy, but I wasn’t worried about being employed for the next 10 years. I am, however, worried about the development of new drugs and new technologies slowing significantly. This is classic crappy legislation that benefits a few deep-pocketed donors at the expense of just about everyone else. But since the ill effects of this bill – jobs *not* created, innovations *not* commercialized – isn’t something that can be readily perceived by voters, let alone quantified, not one of the dunderheads behind this (see link to clerk.house.gov for a list of the guilty, as well as the reasonable) will be held accountable.

  115. “The litigation involving the interpretation of the many new provisions of the Bill will occupy Patently-O posts for at least the next decade.”
    DENNIS – But I thought this would ‘streamline’ and ‘harmonize’ and ‘reduce uncertainty for inventors’ (since we get rid of the 200 interferences a year). Now you saying that this might actually INCREASE uncertainty.

  116. The litigation involving the interpretation of the many new provisions of the Bill will occupy Patently-O posts for at least the next decade.

    Too funny.

  117. I thank you Mr. Crouch for the indication that there will be at least a decade of work for patent attorneys. I must thank the Congress for the passage of what will become known as the PATENT ATTORNEYS’ FULL EMPLOYMENT ACT OF 2011

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