By Kevin E. Noonan --
The Senate Judiciary Committee, particularly the triumvirate of Chairman Patrick Leahy (D-VT), Ranking Member Arlen Specter (R-PA), and Senator Diane Feinstein (D-CA), are pretty proud of themselves these days, having rammed their "compromise" patent "reform" bill through the Committee and headed to the Senate floor. It can be expected that the bill will be heavily amended once it reaches the floor (if only by Senators Kyl (R-AZ) and Hatch (R-UT), who have shown the most displeasure with the bill). (Senator Hatch rudely walked out on the Executive Committee meeting last week, despite entreaties from Senator Leahy to remain, in disgust with what is, and what is not, in the bill.) But Senator Feinstein read into the record encomiums of praise about the bill from such disparate groups as the so-called Coalition for Patent Fairness to the PhRMA to the 21st Century Coalition for Patent Reform.
But not everyone is happy about the bill, including provisions changing U.S. patent law from a "first to invent" to a "first to file" country. Patent harmonization is the putative motivator for the change, since almost every other patent granting country employs a "first to file" system. The purported inefficiencies of interferences, and a study by Gerald Mossinghoff that attempts to show that small inventors do not benefit from the availability of interferences, are other grounds for the change.
The relevant provisions of the bill relating to this change are as follows:
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(b) CONDITIONS FOR PATENTABILITY.—
(1) IN GENERAL.—Section 102 of title 35, United States Code, is amended to read as follows:
§ 102. Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A patent for a claimed invention may not be obtained if—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public—
(A) more than 1 year before the effective filing date of the claimed invention; or
(B) 1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; 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.
(b) EXCEPTIONS.—
(1) PRIOR INVENTOR DISCLOSURE EXCEPTION.—Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DERIVATION, PRIOR DISCLOSURE, AND COMMON ASSIGNMENT EXCEPTIONS.—Subject matter that would otherwise qualify as prior art only under subsection (a)(2), after taking into account the exception under paragraph (1), shall not be prior art to a claimed invention if—
(A) the subject matter was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter had been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed, directly or indirectly, from the inventor or a joint inventor before the effective filing date of the application or patent set forth under subsection (a)(2); or
(C) the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(3) JOINT RESEARCH AGREEMENT EXCEPTION.—
(A) IN GENERAL.—Subject matter and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of paragraph (2) if—
(i) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(ii) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(iii) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(B) For purposes of subparagraph (A), the term 'joint research agreement' means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(4) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVELY FILED.—A patent or application for patent is effectively filed under subsection (a)(2) with respect to any subject matter described in the patent or application—
(A) as of the filing date of the patent or the application for patent; or
(B) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
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(c) CONDITIONS FOR PATENTABILITY; NONOBVIOUS SUBJECT MATTER.—Section 103 of title 35, United States Code, is amended to read as follows:
§ 103. Conditions for patentability; nonobvious subject matter
A patent for a claimed invention may not be obtained though the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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(h) REPEAL OF INTERFERING PATENT REMEDIES.—
Section 291 of title 35, United States Code, and the item relating to that section in the table of sections for chapter 29 of title 35, United States Code, are repealed.
(i) ACTION FOR CLAIM TO PATENT ON DERIVED INVENTION.—Section 135 of title 35, United States Code, is amended to read as follows:
(a) DISPUTE OVER RIGHT TO PATENT.—
(1) INSTITUTION OF DERIVATION PROCEEDING.—An applicant may request initiation of a derivation proceeding to determine the right of the applicant to a patent by filing a request which sets forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. Any such request may only be made within 12 months after the date of first publication of an application containing a claim that is the same or is substantially the same as the claimed invention, must be made under oath, and must be supported by substantial evidence. Whenever the Director determines that patents or applications for patent naming different individuals as the inventor interfere with one another because of a dispute over the right to patent under section 101, the Director shall institute a derivation proceeding for the purpose of determining which applicant is entitled to a patent.
(2) DETERMINATION BY PATENT TRIAL AN APPEAL BOARD.—In any proceeding under this subsection, the Patent Trial and Appeal Board—
(A) shall determine the question of the right to patent;
(B) in appropriate circumstances, may correct the naming of the inventor in any application or patent at issue; and
(C) shall issue a final decision on the right to patent.
(3) DERIVATION PROCEEDING.—The Board may defer action on a request to initiate a derivation proceeding until 3 months after the date on which the Director issues a patent to the applicant that filed the earlier application.
(4) EFFECT OF FINAL DECISION.—The final decision of the Patent Trial and Appeal Board, if adverse to the claim of an applicant, shall constitute the final refusal by the United States Patent and Trademark Office on the claims involved. The Director may issue a patent to an applicant who is determined by the Patent Trial and Appeal Board to have the right to patent. The final decision of the Board, if adverse to a patentee, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the United States Patent and Trademark Office.
One of the people unhappy with the proposed changes is Dr. Ronald Katznelson (at left), president of Bi-Level Technologies (760-753-0668; [email protected]). Dr. Katznelson was very active in opposing the plethora of rules packages promulgated by the U.S. Patent and Trademark Office under the last administration, and supported David Boundy's efforts to oppose the rules by making the Office comply with Office of Management and Budget (OMB) requirements for federal rulemaking. Dr. Katznelson, who has now turned his attention to S. 515, has drafted a letter on behalf of a group of companies and organizations outlining the group's concerns regarding several provisions of S. 515. A copy of the draft letter, the current signatories, and a background explanatory statement can be found here. [UPDATE: Dr. Katznelson informed us this morning that the "entitlement" language in Section 102 was restored a few days ago and that S. 515 was reported out of Committee with the correction. Since the group's due process concerns have been addressed, the letter -- linked above -- has been revised to focus on the first to file issues.] Dr. Katznelson is asking companies to join current signatories so the letter can be sent to the Senate with as much and diverse support (from companies large and small, throughout the country) as possible. Time is of the essence, of course, before Senator Leahy has an opportunity to force the bill through the Senate the way he did in his Committee; Dr. Katznelson intends to send the letter to legislators on Friday.
Kevin,
No matter what they call S. 515/H.R. 1260, they just ain't "patent law reform."
Posted by: EG | April 08, 2009 at 02:37 PM
Take a new picture n smile for real this time at least.
Posted by: 6 | April 08, 2009 at 04:08 PM