The Patent Reform Act of 2005 aims to eliminate
subjective, discovery-laden issues and introduces greater certainty
in the issuance of patents and their enforcement. But the
complexity and wide scope of the reforms have special interest
groups scrambling to understand and communicate their potential
By Steven B.
Kelber and Denise M. Kettelberger|August 29, 2005 at 12:00 AM|The original version of this story was published on The National Law Journal
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The Patent Reform Act of 2005, introduced into the House as H.R. 2795, proposes the most sweeping reforms to this country’s patent laws in at least 50 years. These reforms aim to eliminate subjective, discovery-laden issues and introduce greater certainty in the issuance of patents and their enforcement. By advancing proposals to change patent prosecution standards, patent enforcement practices, infringement remedies and damages, as well as to create an entirely new practice area, the reforms embraced by the act provide something to excite every user of the patent system. The act also provides something for nearly every user to argue about. The complexity and the wide scope of the proposed reforms reach all industry sectors and have interest groups scrambling to understand and communicate to the drafters the potential consequences. Revisions to H.R. 2795 are likely when Congress reconvenes in September. With proposed reforms this substantial, it remains to be seen which elements will remain intact if and when the Patent Reform Act of 2005 becomes law. Since the early 1970s, legislation regularly introduced into Congress attempted to convert the U.S. patent system from “first to invent,” where the first party to invent patentable subject matter is entitled to patent that subject matter, to “first inventor to file,” where the first bona fide inventive party to file its patent application is so entitled. In the early 1980s, U.S. leadership assured the G-7 nations that the United States would be a “first-to-file” country before the end of that decade, but it has not yet made first-to-file a reality. Early attempts to legislate this change found support in major corporations, but were derailed by a coalition of professional inventors, universities and small businesses. Surprisingly, there is little opposition and seemingly overwhelming support for the current first-inventor-to-file legislation. The reform will simplify the process of deciding who is entitled to a patent by limiting the need for priority contests. Changes beyond first-to-file To implement first-to-file reform, anticipatory prior art and assignee filing changes are needed. Specific changes to 35 U.S.C. 102 would eliminate portions that are rendered moot in a first-inventor-to-file system, but would also extend beyond conformity with first-inventor-to-file. For example, a new definition of anticipatory prior art requires the cited information to be “reasonably and effectively accessible.” Eliminating the unique U.S. requirement to disclose the best mode known by the inventor for making and using the invention rids the patenting process of another subjective, hard-to-prove, discovery-intensive issue. Eliminating “best mode” and requiring 18-month publication of all U.S. patent applications would bring the U.S. patent system into greater harmony with world patent systems. The prior art and best mode reforms have not stirred great debate among interest groups, and the 18-month publication has generated only moderate resistance. Currently, the U.S. Patent Office only requires 18-month publication of applications that are or will be filed outside the United States. The proposed reform would require publication of all U.S. patent applications at 18 months past the application’s earliest priority date. This ensures timely public notice of inventions and the intent to patent, allowing competitors to avoid potential infringement. It also requires public disclosure of the invention before a patent is granted. In effect, this reform would eliminate an opportunity for U.S. applicants to test the waters of patent protection. For example, if early prosecution suggests that a patent is unlikely due to consistent rejection by the Patent Office, the applicant can opt to abandon the patent application. Because the application was not published, the invention may still be protectable as a trade secret. In practice, however, companies face ever greater challenges in maintaining the secrecy of their technologies in a rapidly changing workplace, thus shifting their focus away from trade secrets in favor of the notice function of patent publication. Another key provision that would bring the U.S. patent system closer to international systems is the proposed post-grant opposition practice. Section 9 of the act would establish a post-grant patent opposition proceeding to permit any member of the public to challenge the validity of a patent for any reason of patentability. Broader than re-examination, with full inter-partes right to contest, the opposition provision is similar to opposition proceedings used in Europe, Japan and elsewhere. Like the European system, the suggested U.S. opposition procedure permits a granted patent to be challenged during a nine-month, post-grant period.
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