Patent Reform in the Senate

On Monday, the Senate has overwhelmingly voted (87-3) to close debate and vote (cloture) on the America Invents Act (Patent Reform Act of 2011). Senators Leahy (NH) and Coons (DE) have worked to reject partisan amendments that would deter the Bill’s passage. Votes on pending amendments and the final bill are expected Wednesday morning or (perhaps) Late Tuesday night.

Senator Coons released the following statement:

“Patent reform is an important part of making America more competitive in the global market over the long-term, helping turn more inventors into successful entrepreneurs and promoting American innovation. It will create jobs in Delaware and throughout the U.S. The bipartisan support shown in today’s cloture vote demonstrates the importance of the first comprehensive reform to our nation’s patent system in 60 years. I look forward to voting in support of final passage of the America Invents Act.”

29 thoughts on “Patent Reform in the Senate

  1. 29

    Who would have believed it — patent reform has finally passed in one chamber. Given the momentum this issue has right now, I’d expect that some version of the bill will likely pass in the House soon, too. As usual, however, the devil will be in the details; though I can’t imagine much opposition to the fee diversion and fee-setting authority provisions, the first-to-file and post-grant issues may prove somewhat thorny.

  2. 28

    Without a 103 revision to strike down KSR, they might as well call it “America Invents but Gets a Worthless Patent or No Patent Act.”

  3. 27

    You are a maker of paper notebooks, aren’t you?

    What of it? What good is a patent system that can’t generate an artificial profit for a doomed business model?

    Why can’t you earn a living selling buggy whips anymore? It’s not because the patent system is too weak. It’s because your whips are too buggy.

  4. 26

    Don’t tell me Andrew. You are a maker of paper notebooks, aren’t you?

    But never fear. The paper-less office is as far away as ever. Even in First to File, getting the inventorship entity wrong can still be fatal to the validity of the patent.

  5. 25

    Why would they block it? Just because?

    Right, the Republicans would never do that during a Democratic administration.

  6. 24

    How will this affect the way inventors document intellectual property? I’ve always believed that physical lab notebooks that are serialized, with a clear chain of custody, are superior to electronic records for establishing the date of invention. This is typical practice in pharmaceutical research.

    If we move to “first to file”, will there be a dramatic shift away from the way we document intellectual property?

  7. 20

    Sorry Dennis. In that posting, the first word should have been “Dennis” not “Paul”.

  8. 19

    Paul, thanks for that. But I still think Paul has got something here.

    In First to File, the specification is written before the date on which obviousness is determined. So, at the EPO, obviousness can be done, without hindsight, by comparing what the inventor delivers to the PHOSITA in his/her spec with what the state of the art has already made available to the PHOSITA.

    Yet, when the EPO does this, Americans cry: Outrage. Impermissible hindsight.

    I think they do this because they are (despite the jurisprudence you mention) stuck in the mindset that obviousness is to be done relative to a mere conception, an event which took place BEFORE the spec was written.

    Do the US courts have this mindset today Dennis? Will their mindset change, Dennis, when First to File comes in?

  9. 16

    “Please tell me I’m missing something. ”

    You’re missing something. We’re changing to first inventor to file. Thas sup.

  10. 15

    Paul – Just to be clear, is your outrage focused on the change of dates used for the obviousness test (from “the time the invention was made” to “before the effective filing date”)? Or is there some other fundamental change in the test that you believe calls for outrage.

    If your problem is with the dates, you are likely already aware that the courts have ignored the language of Section 103(a) for many years. The most prominent example of this is that courts allow post invention publications to be considered in the obviousness analysis so long as those publications were published more than one year prior to the applicant’s patent application filing date. This is termed 102(b)/103(a) prior art.

  11. 14


    “unassailable patent law fundamentals”?

    Check again–have you been completely unaware of patent jurisprudence over the past 10 years?

    Nothing has been left unassailed. It has been open season.

  12. 13

    I can’t believe I‘ve seen no outcry from patent proponents regarding the “obviousness test” set out in the currently proposed Patent Reform Act (S.23 RS). I’ve been practicing patent law for more that 35 years, and view the S.23 RS obviousness test as an attempt to destroy unassailable patent law fundamentals. Alleged obviousness of an invention can only be evaluated reasonably, fairly and justly by looking to knowledge publicly available at the time an invention is made. Please tell me I’m missing something. As currently proposed, S.23 RS provides in pertinent part:

    Sec. 103. Conditions for patentability; nonobvious subject matter

    A patent for a claimed invention may not be obtained … if the differences between the claimed invention and the prior art are such
    that the claimed invention as a whole would have been obvious

    before the effective filing date of the claimed invention

    to a person having ordinary skill in the art to which the claimed invention pertains.
    Patent Reform Act of 2011 (S.23 RS), pp. 5-6, February 3, 2011.

    As you are aware, the current obviousness test under 35 USC § 103(a) in pertinent part is:

    A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art
    are such that the subject matter as a whole would have been obvious

    at the time the invention was made

    to a person having ordinary skill in the art to which said subject matter pertains.
    35 USC Sec 103(a).

    Once again – please tell me what I’m missing.

  13. 12

    I predict the Republicans block this.

    Why would they block it? Just because?

    According to the commenters in this thread, the bill seems to favor Republicans most important constituents.

    Surely you don’t believe that Republicans care about “creating jobs.” I mean, are you really that stooopit?

  14. 11

    I predict the Republicans block this. Leahy couldn’t even get this through when the Dems had complete control. Now? Lulz. Good luck.

  15. 10

    staff This bill is a wholesale slaughter of US jobs.

    LOL. Because the bill bans start-ups. Or something.

  16. 8

    “helping turn more inventors into successful entrepreneurs and promoting American innovation”

    Coons and other senators have been duped. They have almost exclusively consulted with large multinational parties who more often than not are infringers, not creators. Inventors know what is good for them and this bill is not. It will not promote innovation. What it will do is help large corporations maintain their monopolies and kill their small entity and startup competitors (which is exactly what they intended it to do) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs.

    “Patent reform”

    Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America.

    Please see link to for a different/opposing view on patent reform.
    link to

  17. 7

    The bill still has to get through the House, and considering the makeup that seem unlikely.

    Ronald J. Riley,

    President – – RJR at

    Other Affiliations:
    Executive Director – – RJR at
    Senior Fellow –
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

  18. 4

    The bill contains virtually nothing compared to that it could have had with my involvement or the adoption of the my principals throughout this blog a true tragidy of disconcern and corruption nobody in washington hears or cares the right direction that reform should take. Now other countries will design their systems based on this blog hopefully and the U.S. will falter in world leadership in human advancement and prosperity or whorse it simply wont happen period and the black hole will continue to grow disgusting!

  19. 3

    In Europe, it took 20 years after the coming in to force of the 1978 reforms, before all the “Old Act” patents expired. But then, Europe has no continuing application provisions, and divisionals always expire within 20 years of the parent filing date. So, how long will it take under the America Invents Act, before the last of the pre-AIA patents expires?

    Under the AIA, is the implementation of First to File made contingent upon Europe first introducing a grace period?

    Will there be a rush to file at the USPTO, before the AIA comes in to force?

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