Posted by: bridget | 10 July 2007

Patent Reform Act of 2007, Part I

The House and the Senate are proposing changes to US patent law. The basic idea is:

  1. Remove the first-to-invent system used in the US and replace it with a first-to-file system used in other countries;
  2. Reduce the number of “poor quality” patents by instituting another method to reëxamine the validity of patents;
  3. Limiting the remedies and damages awards for patent infringement.

Leahy, Hatch, Berman, and Smith all discuss how this will further improve the US patent system. The offer little more than platitudes and fail to explain exactly why it would be beneficial for the United States to encourage infringement, discourage patent licensing, reduce the incentive to patent, and institute a race to the patent office.

First to invent v. first to file – a race to the patent office: The United States currently has a first-to-invent system. The person who can demonstrably prove that he was the first to invent a given process or article of manufacture has the exclusive right to seek patent protection.  This does result in interference proceedings (when two similar applications are both pending in the USPTO) and invalidity proceedings (in trial); however, it discourages inventors from prematurely filing.

Other countries use a first-to-file system, whereby the first person to file the requisite paperwork can seek patent protection. Our system is somewhat cumbersome, as it allows for interference proceedings. Nevertheless, it allows inventors to perfect their inventions before filing for patent protection, as it discourages a race to the patent office. It also may have the effect of producing better patent applications for more novel inventions.

There is some sense in encouraging people to disclose their inventions earlier rather than later. The patent system already does so by preventing inventors from receiving a patent on a device or process which has been on sale or described in a printed publication more than a year before the filing of a patent. (This prevents an extension of market exclusivity, whereby an inventor would maintain the invention as a trade secret, and then file for patent protection for an additional twenty years.)

Before 1998, inventors would receive market exclusivity for 17 years after the grant of the patent; today, the patent term starts on the day of filing and ends twenty years later. (Some of the purpose was to eliminate submarine patents.) This provides an incentive towards filing a novel, high-quality patent application, as an application that is held up in prosecution will have a shorter period of exclusivity.

The only disincentive towards early filing that our current system has was added in the ’90s to align our laws with international norms. Originally, a patent application would only be published upon grant of a patent; if the patent office were to reject an application, an inventor could maintain his invention as a trade secret. Now, unless an inventor states that he will not seek patent protection overseas, his patent application is published 18 months after he files for a patent, regardless of whether or not he ever receives a patent. An inventor now must determine if he should seek international protection and must consider the value of his invention (as that which is potentially not protectable should be retained as a trade secret) – both of which weigh towards delayed filings and filings of higher-quality patents.

If Congress is truly interested in early disclosure of inventions, it can remove the publication requirement. (Of course, if such does not comport with international law, perhaps we ought to consider the fact that the US is a leader in technological innovation… perhaps other countries ought to follow our lead.)



  1. It sounds like a typical case of the congressional motto.
    “If it ain’t broke, fix it till it is.”

  2. Thanks for reminding my why I didn’t practice patent law.

    Thank goodness my class on intellectual property focused on copyright and trademark. If we had done much on patent I might not have earned that A.

    My paper topic for that class,

    “Copyright Protection for DNA and the Individual: A Step Toward Protection.”

    It was a really interesting topic. Did you know that there is a company that turns your DNA into music and copyrights it? Another company is collecting and storing DNA in anticipation of eventual copyright protection.

    And protections for this are needed as doctors are exploiting patients with unique DNA. Reaping millions of dollars in profits from using their DNA and giving almost no compensation to the patients. Interesting stuff.

  3. Your junk law suit of the day, enjoy

  4. TT,

    I’ve heard patent cases on similar issues. Complete b.s., in my opinion, to not let the person who made the DNA share in the profits. Therein lies the biggest problem – and the largest barrier towards advancement. If people want to volunteer themselves for testing for weird genes, great.

  5. That lawsuit makes my head hurt. Um… if prices are lower, how can she lose money (i.e. need compensatory damages?).

    I also missed that part of Con Law where you aren’t allowed to pull black people over, ask them to show a sales receipt (wow, they must HATE Costco), or do anything else that helps keep law and order.

    (I read somewhere that blacks and whites are pulled over and ticketed at the same rates.)

  6. More pointless useless “research”

    Geesh. Thank God I live in the U.S.A.

  7. Wow. Shall I post that in my “Modern Myths?”

    Please, please save me from my horrible chocolate-eating habits. Why can’t we just raise the price of gas to encourage people to walk? (Wait, that’s been suggested.) Sigh…

  8. Reminds me of an idea I had in college. If we taxed ugly people at a higher rate, would there be less of them? :-) Maybe a tax penalty for those that marry ugly people in an effort to discourage them from reproducing? I might be onto something here.

  9. Maybe I don’t want to be taxed at a higher rate. :p

    Better idea: considering that women are more responsible for the intelligence of their children than are men, why not tax men who reproduce with dumb women? A woman’s chances of getting married decrease substantially with IQ. Why not give tax breaks to men who marry really smart women?

  10. “A woman’s chances of getting married decrease substantially with IQ. Why not give tax breaks to men who marry really smart women?”

    Wonder why that is? Do those women choose to go without men, or are men not interested in them? I for one know I was way into smart women- the smarter the better.

    Although, much like Seinfeld I was very picky about small things- things that led me to believe a girl might not be so bright. I once dumped a girl because she loved the “thong song.” As soon as she disclosed it, it was like the time on Seinfeld where he argued with his girlfriend about the commercial for pants that made no sense. I ended the relationship on the spot. The thong song, geesh.

    Your factoid has me worried for my daughter. My wife has a B.A. and an M.A., I have a B.A., M.A., J.D., and soon a Ph.D. She will be a spinster all her life.

  11. I feel compelled to share this clip

  12. Every 16-point rise in IQ above 100 decreases a woman’s likelihood of getting married by 40%. It increases a man’s likelihood of getting married by 35%.

    As my friend said, smart women know that they don’t need men, and men know that they don’t want smart women. ;)

    Y’all are overeducated! :) (Perhaps you & Josh can co-blog: “Under and overeducated opinions.”)

  13. I’ll watch it when I have volume on a comp.

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