PATENT REFORM: House IP Subcommittee Prepares Sweeping Patent Law Changes

The attached legislative proposal was prepared by the House Subcommittee on Intellectual Property chaired by Congressman Lamar Smith (R Tex).  Although the proposal is merely a discussion draft at this point, it is expected that a parallel Bill will be introduced within the next few days.  The Senate’s newly formed Subcommittee on Intellectual Property is scheduled to hold a hearing on the patent system April [25th].  It is quite possible that this proposal will serve as an agenda for the Senate hearings.

The proposed legislation includes changes to:

Over the past year, the AIPLA, IPO, Microsoft, and others have all been beating the patent reform drum — each with a separate agenda.  This proposal appears to be an amalgamation of all the proposals — with enough controversial points to get most everyone up in arms. 

Over the next few weeks, Marcus Thymian, Jennifer Swartz, and I will discuss the various sections of the proposal in a series of posts.

19 thoughts on “PATENT REFORM: House IP Subcommittee Prepares Sweeping Patent Law Changes

  1. 19

    Patent Reform Bill Shopped

    The House Subcommittee on Intellectual Property circulated a discussion draft a Patent Reform Bill. Since it’s just a draft, it’s not worth over-analyzing at this point but it is interesting to get a glimpse at the topics that may be…

  2. 18

    The PTP Patent Reform Library

    This post contains the PTP Patent Reform Library as of June 8, 2005. A .pdf of The Patent Act of 2005 is available for viewing and downloading in the Legislative Materials section Background Information The following resources are considered by ma…

  3. 17

    The PTP Patent Reform Library

    This post contains the PTP Patent Reform Library as of June 8, 2005. A .pdf of The Patent Act of 2005 is available for viewing and downloading in the Legislative Materials section Background Information The following resources are considered by ma…

  4. 16

    By flipping over to First-to-file you will create a freepass for big business to stomp on the little guy. I’m involved in intellectual property issues almost daily, and what many are overlooking is the need for the little guy to stick his inventions out there in public use BEFORE filing. So often it is not known if an invention is worth protecting, so a period of market testing must be administered. Essentially, with this new law, many inventors will be forced to take even higher risks by capitalizing protections that are often not needed. Meanwhile, big business can sit back and cherry-pick ripoffs, with their team of patent lawyers who can write patents effectively boundaring enough to knock the little guy out of the picture.

    Also, by making the laws more vague and with less teeth that will obviously benefit big business. How many of you small inventors can afford court with Microsoft? As it is now there are far too few protections for “small business.” There is no protection from big business leveraging power by use of the courts.

  5. 15

    The “Overruling Microsoft v. Eolas — component must be tangible” language wouldn’t affect software patents at all. When you install software on a computer you _are_ physically combining that software with the computer, so, under the statute language, software _is_ tangible.

  6. 14

    Dennis, I don’t think Charles was saying he (or his company) should be granted a monopoly, just that they shouldn’t be precluded from using his invention because someone else filed on it.

    However, many of his concerns should still be taken care of, so long as the company actually uses the invention in a product, and is able to document it. Then if they are ever sued, they should be able to show “use” of the invention, which should invaldate the patent under 102(b).

    I also have trouble with the term “known” in the proposed patent changes to 102(b) instead of “used” as it currently reads. What is the purpose for the change? How is “known” to be interpreted? How does someone prove that an invention was “known”?

  7. 13

    “Overruling Microsoft v. Eolas — component must be tangible” would this be considered retrospective and therefore not enforcable in this case?

  8. 12

    first-to-file versus first-to-invent is a rather large issue in Idaho, where Philo Farnsworth wrote out the description of CRT scanning on his High School science teacher’s chalkboard a few years before actually filing for a patent. It was the HS teacher’s testimony that finally gave the patent to Farnsworth, despite a Russian inventor’s patenting a nonworking “iconoscope” in 1923 (Zworykin). Zworykin was FTF, but Farnsworth had the first working model and was FTI. Under the new scheme of FTF, I don’t see how the Public would have gotten any part of the bargain, since Farnsworth would have been shut out and Zworykin would have been making more nonworking models for his new employer, RCA, which had a vested interest in the failure of TV.

  9. 11

    Charles, Thanks for your comment. I agree that there are some issues with first-to-file systems. But, one of the major reasons for the patent system is to advance the level of technology that is available to the public. When you file a patent application, you tell the public exactly how to make and use the invention — in return, you get a limited monopoly for a term of years. When you strategically hide your invention and delay filing an application, the public does not get access to the invention. If the inventor does not hold up his end of the bargain, why should the public be willing to grant a monopoly?

  10. 10

    The change from first-to-invent to first-to-file concerns me substantially, if I’m not misunderstanding its impact. Allow me to explain:

    I’m a software developer. I’ve come up with a reasonable number of arguably patentable inventions, which my employers have chosen not to patent, partially on account of my indifference towards such action and partially on account of budgetary constraints. (These inventions were related to supportive technologies, but not to our core business; we’re much more aggressive there).

    I would hope that, in the future, I or my employer could not be stopped from using an invention which I created first, merely because we neglected to spend the money and time involved to patent said invention and so failed to be first-to-file.

    Frankly, I’m concerned that a substantial number of the discussions on this topic forget the inventors who create not for the economic benefit of a monopoly on the process, but rather simply to get a job done.

  11. 9

    Patent Reform Bill Tiptoes About the House

    The patent reform bill presently being reviewed in the house may be viewed here, courtesy of Patently-O. The bill is being greeted with some cynicism, as an amalgam of various agendas. To subscribers of Patnews, Greg Aharonian has already distributed…

  12. 8

    But my point was it was “inventive” when it was invented. If someone invents something that is non-obvious (at the time of invention), and the day before they file, a completely revolutionary prior art patent issues that doesn’t anticipate, but arguably makes the invention “obvious,” the inventor is screwed because the PTO published it this week instead of next. That doesn’t seem logical or right.

    You have to remember, half the purpose of patents is to reward innovation. In my opinion, changing the timing of obviousness can, in certain situations, end up hurting innovation because someone can make a new invention that satisfies all the patentability requirements at the time of invention, and then be invalidated the next day through no fault of the inventor.

  13. 7

    Patent Reform Bill Shopped

    The House Subcommittee on Intellectual Property circulated a discussion draft a Patent Reform Bill. Since it’s just a draft, it’s not worth over-analyzing at this point but it is interesting to get a glimpse at the topics that may be…

  14. 6

    If an invention becomes obvious before someone files for it, a potential patent applicant loses and all of society gains (by not having an obvious idea legally encumbered). There is no punishment involved here. It changes the theme of the law from “you might win a valuable monopoly on something that many people might have gotten” to “you only get a valuable monopoly on something that is really inventive”. That is in the best interest of society.

  15. 5

    You mentioned that the proposed statute changes expand the definition of prior art, but you did not mention that it also appears to limit (and in my mind, limit severely) what inventions will be deemed non-obvious by changing the time when obviousness is to be determined from “the time the invention is made” to “on the effective filing date of the claimed invention.”

    To me, this seems a remarkable change, because (if I remember by Patent Bar Review correctly) the original purpose of the obviousness limitation was to insure the inventor had gone through an “inventive step.” Although this inventive step is no longer required, it seems unfair to tell an inventor that when the invention was made there was no combination of prior art which makes the invention obvious, but in the interim period between invention and filing new prior art has sprung up. While I understand previous commentor’s perception of people “gaming the system,” it seems harsh to punish an inventor (or his assignee) for investing time into an invention that at the time was not obvious, and then to pull the rug out from under him.

  16. 4

    Draft patent reform bill circulated in support-shopping — don’t sweat the details just yet

    A draft patent reform bill is currently being circulated.  Last week, the bill was passed amongst interested people on a “Washington confidential” basis, but it appears to be freely available now.  I have decided not to make the d…

  17. 3

    It is ironic that abusers, predators on inventors run around accusing their victims of wrong doing.

    This bill is about protecting predatory company’s interests at the expense of job creation and our nation’s prosperity.

    Microsoft admits that they are spending a hundred million dollars a year fending off lawsuits where they are alleged to have taken others inventions without compensation. They are losing many of those cases.

    IBM talks about other companies hording patents while IBM is the largest company doing this. They have a lot of nerve to think that the right to use patents is exclusive to the biggest companies.

    This bill is not about “patent reform”, it is about crooked and/or lumbering dinosaurs using their huge economic clout to cement their positions.

    If this bill passes it will make America like Europe and Japan, it will ensure that upstart companies cannot prosper and kill what has made America stand tall.

    We invite those who value the American way to join us in delivering he message loud and clear that we will not tolerate this kind of power grab.

    Ronald J. Riley, President

    The Alliance for American Innovation, LLC.,

    Also President & Executive Director

  18. 2

    Thanks for pointing about the new legislation. Please feel free to spend more than a few weeks discussing it, particularly as the legislation gets changed in the legislative process.

    As for the previous commenter’s reply, “watering down inventor’s rights” sounds scary until you read the legislation and see that it is mostly attempting to wipe out rights for non-inventors who are able to game the patent system. Those non-inventors (large and small) are causing huge economic damage today. If Congress needs to slightly reduce the rights of inventors in order to prevent that economic damage, it is worth it for the good of American society.

  19. 1

    Half of this reform agenda seems to water down inventor’s rights. A patent system without teeth can only encourage use-it-now, catch-me-if-you-can business decisions, leading to even more litigation or fewer inventors. Or maybe big corporations will mount objections simply to massively inflate the small inventor’s costs and cast aspersions on the value of their IP – before enough capital is raised to compete. Beef up independent prior art checks to be sure, but granting a monopoly over one’s own invention isn’t worth a penny unless it can be confidently relied on and enforced. Can we expect any legal person to respect the intellectual property of others, with little risk of serious penalty if they don’t?

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