The President has signed the new patent bill. So, what happens next? One purpose of the bill was to diminish patent litigation. Will it? Probably not. Another purpose was to help streamline the process that currently has 700,000 plus patents in various stages of prosecution. Here, we may see some effect.
One streamlining provision is the switch to a first-to-file grant. More than a few patents have been hung up in “interferences” where the USPTO and the applicants were sparring over who was the first to invent. The first-to-file clause will put an end to that. In its place, though, we’ll see in-house patent and patent law firms go through a major behavioral modification.
Currently, most companies keep scrupulous records of invention conception and reduction to practice, and don’t worry about filing date. Now, everyone is going to try and snag the earlier filing date. In practice, it means that some half-baked inventions will get filed, then, as some vague areas become more discernible, follow-on applications will be filed in a way that retains claim to the earlier application’s filing date. So, instead of one application for an invention, we may end up seeing a succession of applications. Will that streamline anything?
Many people believe the USPTO has been underfunded because the Congress sets the fees and then is able to reallocate them. One provision of the law was to have ended this vulnerability…but the Senate voted it down 50 to 48. So, the USPTO now can establish its fees, but politicians can still appropriate funds to “other purposes.”
Companies are also going to have to address some new clauses that deal with the so-called “grace period.” In the US, a company can disclose and make public information about its invention or products that use that invention and still file for a patent within one year of that initial disclosure. They can also sell or agree to sell the invention or a device featuring that invention, in the US, if they file within a year of that first offer for sale. Other countries, by and large, allow less time, typically six months. But, the new law makes some changes in what may be disclosed and so on. As one person put it, though, the language is full of ambiguities, making it very hard to know with certainty what is and is not allowed. In such cases, it is left to lawsuits and courts’ decisions to sort out those ambiguities. One thing is for sure; we cannot be sure about how things will play out.
Lastly, the new law adds more uncertainty to the endurance of a new patent by adding a post-grant review provision. In fact, even now, an issued patent has no certainty of endurance. Anyone may, in effect, challenge a patent by requesting re-examination and presenting a substantial new question of patentability (such as prior art that could invalidate a patent). But, the new provision will make it easier and faster to do so right after a new patent is issued. Thus, a new law that is supposedly aimed at hastening the pace of innovation and patents may, in fact, slow it down because of this and other uncertainties going forward.
- In the Race to be the Streaming Video Standard, ha...
- Is parallel testing the solution for handling the ...