US Patent Reform Act approved: First – Inventor – to – File

After the six years of long debate and discussion U.S. Senate has finally passed a patent reform bill (S. 23) on a 95-5 vote. Presently, the U.S. uses a “first-to-invent” system that allows parties to claim priority even if they weren’t the first ones to be awarded a patent.

Some Highlights of the Bill Include:       

  • First to File system Each patent application would be given an “effective filing date,” and the patentability will be judged on whether any prior art was available prior to the filing date. Obviousness will also be judged as of the effective filing date. Inventors will no longer be able to swear back prior art nor will they be able to establish priority in an interference proceeding. A new creation in the bill is a “derivation proceeding” that would operate only in times where an original inventor alleges that a patent applicant derived the invention from the original inventor’s work.
  • Third-Party Requested Post Grant Review Proceeding would be created (similar to reexamination Proceeding) that could be initiated by any party. The review would allow a third party to present essentially any legal challenge to the validity of at least one clam. A major limitation on the post grant review is the request for review must be filed within nine-months of issuance.
  • Inter Partes Review Proceedings Once the nine-month window for post grant review is expired, a party may then file for “inter partes review.” This new system would replace inter partes reexamination and would be limited to consideration of novelty & obviousness issues based on prior art patents and printed publications.
  • A Large number of False Patent Marking cases have been filed in the past year. The bill would eliminate those lawsuits except for ones filed by the US government or filed by a competitor who can prove competitive injury.
  • The Senate Bill does not include any provision for prior user rights.  Although current law only has limited prior user rights, a prior user who is sued for infringement may be able to invalidate that patent by claiming prior invention under Section 102(g).  That option is eliminated in a first-to-file system leaving a prior user potentially liable for infringement.

Electronic Industry which Includes Qualcomm and Tessera,is divided over its supports for the draft bill.

This Bill should now get an approval from US House of Representatives and then a signature from the President.

If this new bill passed by the House, new patent applications will need to be filed as soon as possible after new inventions are conceived.



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