As many readers will be aware, a Bill to reform the US patent system is currently being considered in the United States Senate. Recently renamed the 'America Invents Act', the proposed amendments to the US Patent Code most controversially include a change from the current system of 'first-to-invent' to a 'first-to-file' (or, more correctly, 'first-inventor-to-file') system, which is the basis for patent entitlement throughout most of the rest of the world.The first-to-file amendments include a change to the novelty provisions in section 102 of the US Patent Code that would alter the existing 'grace period' from a potential exclusion of all prior art arising within the 12-month period preceding filing, to an exclusion of only that prior art arising directly or indirectly from the inventor's own disclosures. This would effectively result in a grace period having similar effect to that which currently exists in a number of 'first-to-file' countries, including Australia.
Our use of 'potential exclusion' in the preceding paragraph is significant. It seems often to be forgotten that the existing 12-month 'grace period' is predicated on the first-to-invent principle. That is, you can only overcome the prior disclosure of another party during the 12-month period if you are able to 'put you hand on your heart' and swear that you had made the invention before that disclosure occurred. In certain circumstances, you might also be required to prove this.
There has been substantial and vocal opposition to the change to a first-to-file system from a number of groups within the US, most notably those purporting to represent the interests of individual inventors, small businesses and startup ventures.
As a result, on Thursday 3 March 2011 the US Senate debated a proposed amendment to the patent reform bill offered by Senator Diane Feinstein (D-CA) relating to the removal of first-to-file provisions. Following the debate, a vote was taken, with the result of 87-13 against the proposal.
The Feinstein Amendment therefore appears to be dead, and there is now a very real prospect that the Bill will be passed in the US Senate with the first-to-file provisions intact.
This would still have to make it through Congress, but there now appears to be real momentum, and undoubtedly bipartisan support for these reforms. Could we be seeing history in the making here?
Before You Go…
Thank you for reading this article to the end – I hope you enjoyed it, and found it useful. Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.
But now – for the first, and perhaps only, time – I am asking for a favour. If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research. My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection. But I need data to train my models, and that is where you can potentially assist me. If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.
The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months. No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar. You might even find it to be fun!
There is more information on the project website, at claimscopeproject.net. In particular, you can read:
- a detailed description of the study, its goals and benefits; and
- instructions for the use of the online claim comparison application.
Thank you for considering this request!
Mark Summerfield
1 comments:
I'm still a skeptic that it will ever get passed, but it is making more progress than it has for years. My concern is that any substantive change to Section 102 will lead to a period of uncertainty until we have a new body of case law to guide its interpretation and application.
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