Patent Reform Act: A Matter Of Firsts

One of the most hotly contested issues in intellectual property law over the past year has been the Patent Reform Act of 2007, an amended set of proposals from a similar act put before the U.S. House of Representatives in 2005. It is derived from recommendations by the Federal Trade Commission and the National Academy of Sciences for significant changes to this country’s patent legislation. The legislation proposals, should they be enacted, could dramatically alter the patent system that has governed American inventors for decades and instead harmonize the United States’ system with that of other nations.

In what some consider the most controversial of the Act’s legislation changes, the United States would in essence switch from a first-to-invent to a first-to-file patent system. The United States is currently the only country in the world that gives priority to patent applications that claim the earliest invention date. However, under the Patent Reform Act, the nation would move to a first-to-file patent process. In most situations, the new system mandates that the patent application first filed with the Patent Trademark Office (PTO) would be granted priority in its claims over an application claiming an earlier invention date, a radical change from the current system.

Proponents of the change argue that the new system will simplify the application process and provide relief to a PTO they see as bogged down with increasingly futile attempts at distinguishing and verifying claims of invention. They also suggest that the first-to-file system would harmonize the United States with many foreign patent systems currently practiced in other countries. They believe increasingly uniform legislation would make it easier for inventors to prepare patent applications regardless of country and also help resolve international disputes over intellectual property rights.

Critics of the Patent Reform Act claim that a firstto- file patent system would provide a substantial advantage to big companies who are heavily experienced in the patent application process. They argue that large corporations have access to greater resources that help them pay increasing application costs and enable them to file quickly and early in the development cycle. Some critics also suggest that unfinished patent claims would be rushed to the PTO and create a logjam of incomplete patent applications.

In addition to the first-to-file switch, the Patent Reform Act of 2007 also proposes other changes that will impact several other aspects of the Unites States patent legislation including:

• opposition proceedings
• pre-filing search and patentability analysis
• venue and damages

The Patent Reform Bill (HR 1908) passed the House by a close vote (220-175) in September of 2007. A related bill (S1145) may see a Senate vote yet this summer, so whether or not a resolution is on the horizon remains to be seen. Boyle Fredrickson will keep you informed of the latest developments. In the meantime, you may track the status of the Patent Reform Act of 2007 by visiting http://www.opencongress.org/bill/110-s1145/show.