Patent Reform Bill Passes Senate 368
First time accepted submitter nephorm writes "The Senate passed the first major overhaul of the nation's patent law in more than a half century by passing the America Invents Act. The legislation won overwhelming approval in an 89-9 vote. From the article: 'The America Invents Act switches the U.S. patent system from a first-to-invent to a first-to-file nation. It also sets up a new regime to review patents and gives the U.S. Patent and Trademark Office more flexibility to set and spend fees paid for by inventors to get patents and businesses to register trademarks.'"
Re:Brilliant! (Score:5, Informative)
And just how many international patents do you have to your name? I have 2 and I can tell you that first to invent is a PITA and penalizes small inventors. First to file places a stake in the ground that is not contestable. First to invent is open to intrepretation via courts and unless you have the resources and well documented evidence (such lab books where EACH PAGE is signed by two individuals) you will lose out.
Re:Will it stop frivolous patents and patent wars? (Score:4, Informative)
Did you patent every conceivable aspect of your invention? Will some slimy scum bag come in behind you and patent some trivial aspect of your product and then sue you?
If your product is on the market before the slimy scum bag files for a patent, he'll be rejected at the patent office, because your product is prior art. Every aspect of the product is prior art, whether it was patented or not. Under a first to file system, you can't sue someone (successfully) for patent infringement if their product was for sale to the public before you filed. Under a first to invent system, the slimy scum bag might win, if he actually invented the "trivial aspect of your product" before you did, plus various other conditions. Under the first to file system, that messy problem of proving who invented first is removed.
Re:No more prior art? (Score:5, Informative)
So this means the concept of prior art is moot?
No.
It appears that the bill in question is H.R.1249 [loc.gov] (TFA doesn't actually specify which bill they're talking about - and there are several versions floating around congress). The text of the bill concerning prior art is:
‘‘ 102. Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."
Thus, prior art under the new law would be anything that was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Re:I'd like to take this time to patent.... (Score:1, Informative)
Public use or on sale of the claimed invention before the filing date of the patent would invalidate it.
‘‘ 102. Conditions for patentability; novelty
‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or...
Re:No more prior art? (Score:4, Informative)
No, not true. If it already exists and is for sale, it cannot be patented by anyone, including the person who first put it up for sale. A patent application must be filed before a technology is made publicly available, or it is no longer patentable. That is already the case even under current patent law, and will not change.
However, if you have not quite made it to market and someone else comes up with the same idea and patents it while you are polishing up the edges, you're screwed, whereas before, you could at least ostensibly claim that you invented it first if your prototypes go back farther in time.
This is both good and bad. On the one hand, patent trolls who actually got as far as building a prototype but never marketing it or publishing it cannot use that as prior art to show that someone else's patent is invalid. On the other hand, it means that companies must file patents (or at least provisional applications) much earlier in the process and much more often to avoid the risk of a competitor coming up with the same idea and screwing them.
On the whole, this so-called reform is basically basically a wash except that it will cause an increase in patent filings (which makes it a net negative in my book). It does almost nothing to reduce the ability of patent trolls to prosper. It similarly does almost nothing to reduce the scope of software patents' ability to stifle innovation and bog down the industry in unnecessary lawsuits. All it really does is make the trial duration slightly shorter....
This is to patent reform what shooting someone in the backside with a shotgun is to discipline. Sure, it technically qualifies as discipline, but it's not the sort of discipline that actually improves behavior.
Re:I'd like to take this time to patent.... (Score:5, Informative)
I'm sorry, but this rant is just ignorance of how "first to file" actually works.
First to invent means, in theory, that you can build something, start selling it, and then file for patent. In practice, however, this allows big corporations to back-date an invention. There is no "chain of evidence" proving that you did, indeed, made the invention as far back as you claim you did.
With first to file, it is impossible to back-date an invention, as the one providing the time stamp is the (presumably reliable) patent office.
Now let's take the apocalyptic scenarios you describe and dissect them:
Now you could invent something, be using it and selling it for 10 years, and then Big Corporation file a $10,000+ patent and steal your invention and sue YOU for selling YOUR invention!
No, they can't. If you have been selling it on the market, it's prior art. No one can patent it. Even if that's not the case, first-to-file systems generally have "prior use" defenses. I cannot invalidate your patent by proving that I have been using it before you patented it, but I am exempt from licensing it from you.
since you can no longer prove "I've been using this for XX years!"
As far as I know, first to invent only goes back one year. That it the most you can back-date an invention. The load on the patent office will not change significantly.
But it will increase the filing process since they don't have to do any work, they don't have to figure out "Gee, does the wheel already exist? I swear this round thing looks familiar..." they can just do a quick search of their database and go "Nope don't find it here's your patent".
If it's published, it's prior art whether patented or not. If it's unpublished, then you can patent it. Nothing changes in that regard.
Shachar
Re:I'd like to take this time to patent.... (Score:4, Informative)
One reason why individuals don't patent their inventions is because they can't afford the time and expenses.
A provisional for private and small entities only costs $110, and allows you to convert to full patent within a year. If you have an idea you want to show to big corporates, file for a provisional, and then show it to Big$$ with the heading "patent pending".
Shachar
President of OnLive responds to this bill, against (Score:5, Informative)
Re:I'd like to take this time to patent.... (Score:4, Informative)
first-to-file systems generally have "prior use" defenses.
That does not appear to be the case in this new legislation, which I think is a serious problem. However, the legislation does call for the USPTO director to issue a report on prior use defenses in other countries. Maybe the report will prompt congress to add a prior use defense.
As far as I know, first to invent only goes back one year. That it the most you can back-date an invention.
Nope, you can backdate an invention as far as you have records for, though you might run the risk of having "abandoned" the invention if you invented it 10 years ago, sat on it, and only bothered to patent it recently.. The year requirement you're thinking of is probably related to the grace period, in which inventors can sell or publicly disclose their invention up to a year before filing a patent. That grace period appears to be preserved in the new legislation.
Re:It's About Time (Score:4, Informative)
Re:I'd like to take this time to patent.... (Score:4, Informative)
" There is no "chain of evidence" proving that you did, indeed, made the invention as far back as you claim you did."
clearly you aren't an inventor, some I wish you would STFU.
There is always a chain of evidence, a stronger one for smarter inventors, but it's always there.
"As far as I know, first to invent only goes back one year. That it the most you can back-date an invention. The load on the patent office will not change significantly."
—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsectio(a)(1) if— ‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
http://judiciary.house.gov/issues/Patent%20Reform%20PDFS/112hr1249eh.pdf [house.gov]
I suggest you note 'coinventer'. In the context of the bill that also means ‘joint research agreement’
So a VC could literally steal your invention.
Plus, make a radical change in the current eco system poses a lot of other risks.