IPO on Patent Reform: Congressional Reform is Moving Forward

The IPO disagrees with my conclusions that substantive patent reform will not pass this year:

TO:  ALL IPO MEMBERS
FROM:  Herb Wamsley, IPO Executive Director
RE:  Plans of House Leadership to Pass the Patent Reform Bill Next Week

IPO has confirmed today that the House Democratic leadership has scheduled a vote of the full House of Representatives on patent reform bill H.R. 1908 for next week.
The House Rules Committee, which is controlled by the leadership, has scheduled a meeting for 3:00 p.m. on Thursday, September 8, to set the rules for debate on the House floor, which means the bill will not come to a vote until after that time.
IPO understands that House IP subcommittee chairman Howard Berman (D-CA) plans to offer an amendment to the bill, but information on the content is not available.
We urge all IPO members to become engaged in the legislative debate.

19 thoughts on “IPO on Patent Reform: Congressional Reform is Moving Forward

  1. 19

    Allowing “the owner to file and prosecute” is what I have seen going on in USA, all my long career. Surely nobody thinks any of that is anything NEW, do they? Difficult therefore to estimate what the “downside” of it is. Like, what’s the downside of breathing air?

  2. 18

    ” I cannot see a single down-side to allowing the owner of the invention to file and prosecute patent applications. ”

    There aren’t any. And it’s not unconstitutional to allow them to file. I hope the law gets fixed a.s.a.p.

  3. 17

    “The Founding Fathers were *much* smarter than we are, and probably more hard working and selfless too.”

    Yeah. That’s why they freed the slaves.

  4. 16

    “Would the quality of the applications suffer” when the writer in F2I USA is facing a F2F deadline? Nobody who has worked in journalism would pose that question. Nobody who has had to prosecute at the EPO claims written in USA would come to the idea of posing such a question. And who are these “poor” patent attorneys? Contradiction in terms, no?Thank you Zoom, best laugh I have had all day.

  5. 15

    I don’t see how a first to file system would be unconstitutional, but I agree completely with Mr. T when he says that Congress (legislatively) and the PTO (administratively) are creating tremendous problems. I almost feel like Congress will do less harm this time than the PTO.

  6. 14

    What about the poor patent attorneys and agents who will be under a gun in a F2F system to finish the applications? Would the quality of the applications suffer?

  7. 13

    Companies as we know them scarcely existed at the time the constitution was written. I’m not sure at what exact point English law changed, but it was around this time, and before the Companies Acts were passed each new company had to be formed by it’s own act of parliament.

    Of course, in the US companies are incorporated in an individual state, but I’m not sure what the exact situation was in the years before the constitution was written, except that it may have been different in each state. I expect that under British rule it would have been necessary for the Parliament in London to pass a bill to form each company that wanted to do business in one of the colonies, so there must have been very few.

    It isn’t that the founding fathers were more or less clever than we are. Undoubtedly they were clever people, but so are patent agents and attorneys. It’s simply that they couldn’t take complete account of the future, no matter how much they tried.

  8. 12

    BabelBoy, it seems like your quarrel is with the Founding Fathers, not with me or me. And it seems like “ease” may be coloring your perspective of what is right (…and that’s not wrong necessarily, but it can put you on perilous ground I think).

    The Founding Fathers were *much* smarter than we are, and probably more hard working and selfless too. Don’t be so quick to discount when they say “inventors”, or to discount the other nuances of the Constitution. Did they mean companies? They were fully aware that the rights could have been secured to companies.

    Think about what’s best for the country. Do companies have enough power already, or is their power truly lacking? Would it necessarily be wise to give Microsoft or IBM more? Would that be good for competition and the progress of the useful arts? Yes? Perhaps in one case no? Perhaps in both cases no? (History has shown us with the railroads, steel, the telephone system, computers, space technology, etc. that monopolies *do* play a very important role in the progress of the useful arts, but there are other examples where monopolies have hindered progress, even in those same fields.)

    In one respect all we’re talking about is the transfer of wealth.

  9. 11

    Dear Babel,

    I don’t see your point, except you are true to your pen name.

    “Amendment II: A well regulated Militia, being necessary to the security of a free State, the right of the people to keep and bear Arms, shall not be infringed.”

    Clear as a bell, “militia.” The extent of the “Arms” to be borne has given rise to debate, as it should.

    Coincidentally, I’m drafting my “Arms” invention, which I expect to file as a provisional, so my blogging time is limited. Please consider yourself lucky, as should other babblers.

  10. 10

    To clarify, and perhaps dignify, my unnecessarily acerbic rejoinder to “me”, I see the F2F issue as completely separate from whether or not an assignee should have a right to file. The F2F issue is strictly a temporal one — when two individuals independently invent, the first to the PTO gets the patent. Any contests over F2F would be resolved with reference to a calendar or a clock.

    “Real anon” points out that “inventor” is understood in F2F — as “first inventor to file.” That’s the way I was reading F2F, too. However, if section 118 is amended, the proper phrase would be “first applicant to file,” but the temporal issue doesn’t change.

    With regards to the second issue, as one who recently joined a firm and now handles mostly corporate clients, I finally see what a pain in the a$$ the US system is with respect to not allowing the owner to file. This is dumber than retaining inches, quarts, and pounds. It’s almost as dumb as retaining F2I. It is a hassle for everyone(including the inventor employees who usually have no financial interest in the application), it generates unneeded controversy over who contributed to what claim, and it weakens patents by leaving inventorship traps lurking. I cannot see a single down-side to allowing the owner of the invention to file and prosecute patent applications. If there are contests over ownership, let the courts sort them out just like any other property contests. It’s none of the PTO’s business. Whether or not the proper inventors prosecuted the application should not determine the validity of the patent, it should only determine who gets the revenue.

    The doubts about the constitutionality of allowing non-inventor owners to apply for patents merely emphasize, again, the embarrassing point that the guys who wrote the US Constitution weren’t really as smart as we’ve been led to believe. (If you need more evidence of this, consider the 2nd Amendment, which, because of its enigmatic reference to militia, is written like a nightmare claim.)

    Babel Boy

  11. 9

    “In First to File Europe, any patent granted to a legal person other than the true owner is not just unenforceable. It’s invalid.”

    In the U.S. system (present), it’s not enough to be the “true owner” (as shown by the failed proposal to amend 35 USC 115), and such a system would very likely be held unconstitutional. (Our law does make limited exceptions in special cases where the inventor is unable or unwilling to file/sign the declaration.)

    The proposed amendment to 35 USC 118 is troublingly vague, but this is one of the rewards/liberties that big businesses (who license patent portfolios) have long desired and sought:

    “A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.’.”

    Here, it seems, a company is permitted to file an application if it can show 1) an assignment (or a lien or an equitable claim?) and 2) “appropriate[ness] to preserve the rights of the parties”. What does that (appropriateness) mean? And who is this “real party in interest”, if I might ask? Not the “inventors”, I trow.

  12. 8

    In First to File Europe, any patent granted to a legal person other than the true owner is not just unenforceable. It’s invalid. Period.

    Any patent application which, on the day it’s filed at the Patent Office, doesn’t enable its invention, gives no exclusive rights. Intelligent inventors don’t file till they’ve produced a written disclosure that enables skilled readers to practise, over the width of the claim. The myth that FtF results in non-enabling pat applns is just that, a myth.

    Promoting the useful arts needs more than just exclusive rights. It needs early publication of the enabling disclosure. First to File delivers. First to Invent doesn’t. The USA got to be the world’s greatest industrial power for reasons other than First to Invent. Europe’s First Inventor to File system (properly understood)is entirely in accordance with the US Constitution.

    (mind you, I’m not a US Constitutional Lawyer).

  13. 7

    I wrote this post on John Edwards blog about labor coming out against the patent reform bill, with links to and excerpts from letters sent by three unions explaining their concerns.

    link to blog.johnedwards.com

    With the issue of invalidating previous patents, the big tech corporations would greatly benefit as they have the advantage of resources to go after the independent inventors and tie them up and bleed them financially before they can get to market.

    The solution is to do the patents the right the first time, which has to do with given patent examiners the time and resources to do so. Patent examiners have an average of 19.2 hours to examine each patent. Given that fact, they still function fairly well, and most of the patents are solid, but it is like a “sweat shop for PhDs.” They love their work, but they are under tremendous pressure and poor working conditions, and there is very high attrition–for every two people they hire they lose one. And they are losing senior people who have experience and work more quickly and effectively. Having highly skilled and experienced patent examiners given enough time and resources to properly research is the solution to the “prior art” problem, so they can uncover the relevant prior art during examination. If the job is done right the first time, then you don’t need multiple opportunities for multiple parties to provide multiple prior art submissions to invalidate a patent.

    So the bill is trying to apply legislation to fix something that is actually a management and personnel problem. The patent system doesn’t need to be reformed, the patent office does.

  14. 6

    “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”

    A true “first to file” system (as it exists in many countries) that allows a company to run to the Patent Office and file a patent application on an invention it did not invent would almost certainly be unconstitutional.

    But I think a “first inventor to file” system (as set forth in H.R. 1908) would not be unconstitutional. It still rewards “inventors”.

    I suspect there were folks who said getting rid of the “model requirement” in 1880 (which was being used, in part, to prove inventorship) was “unconstitutional”, since folks could file patent applications on things they hadn’t yet actually invented, but we’ve survived o.k. since.

    (About 5 years ago, the USPTO tried to propose amendments to 35 U.S.C. § 115 to permit an assignee of the entire interest to file a patent application and sign the oath. Now that would have been unconstitutional in my mind, and I’m not quite sure how assignees have apparently already obtained that privilege with respect to trademarks.)

    And P.S. BabelBoy, some of the FItF-is-constitutional folks also believe the earth is only 6000 years old, approximately. :-)

  15. 5

    me is a very funny guy. He complains of short-sightedness of others in one breath and in the next he insists that FtF is unconstitutional.

    I think a lot of these FtF-is-unconstitutional folks also believe the earth is only 6000 years old. I’ve never heard a valid argument supporting either proposition, and yet they get a fair amount of traction in certain circles.

    Babel Boy

  16. 4

    This group is incredibly short-sighted if they really think this will help them long term. Too bad – both the legislative side and the administration is going to screw up innovation for decades to come.

    First to file is still, and always will be, unconstitutional.

  17. 3

    “Companies like Apple are motivated to push through changes to the patent system because reevaluation of some patents after they have been granted could help reduce legal costs.”

    What about filing reexaminations? Aren’t those reevaluations of patents? I’ve knocked out a few this way at mimimal cost. [But we all know why they do not.]

  18. 1

    Mr. Wamsley said “The House Rules Committee, which is controlled by the leadership, has scheduled a meeting for 3:00 p.m. on Thursday, September 8” which is in error. It is Thursday September 6 and our information is that they will be pushing really hard to get a vote on Friday September 7.

    IPO is controlled by the HARMonization group and the Blatant Patent Piracy Coalition. Both groups want to do in independent inventors. The difference between the two groups is that the HARMonization group wants to preserve the value of their own patents while the Coalition for Patent fairness & PIRACY wants to undermine the value of all patents. Their reason for this is that their patents are even narrower that Japanese patents and they have more to gain from being able to pirate others intellectual property than they have to lose from loss of patent value. Considering that the Piracy Coalition is made up a mixture of washed up tech companies, parasitic tech companies who used to ride the coattails of the now washed up tech companies, insurance and banking interests it should not be a surprise that they have little to lose by devaluing patents.

    Ronald J. Riley,
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

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