Friday, September 14, 2007

DailyTech on patent reform

DailyTech has a thread about patent reform.

One entry was eye-catching:

Some big changes proposed in the Bill:

1. First to invent -> First to file: The change to first to file instead of first to invent is to: a) make U.S. patent practice more consistent with foreign patent practice (almost all other countries use a first to file system); and b) do away with interference practice.

2. Ex parte reexamination -> true post grant review: Under the current system, third parties can request re-examination of an issued patent by submitting a petition to the PTO supported by limited prior art (published documents only) that establish a "substantial new question of patentability." The revised post grant review process is much more streamlined, and expected to be significantly less expensive.

3. 3rd party submission to the PTO: The PTO currently has a pilot program in place allowing 3rd parties to submit relevant prior art to the PTO in an effort to aid in the Examination of an application. The bill formalizes the procedure to a large extent.

I'm not sure where Christopher1 got the idea that this bill addresses "piece-meal" software patents etc., as there is no longuage in the bill that speaks to that goal

IPBiz notes that "ex parte" reexamination, as it currently exists, allows third parties to submit prior art to the USPTO. If that prior art raises a substantial question of patentability, then a re-exam occurs. In ex parte re-examination, the third party does NOT get to comment on Office Actions or patentee responses to Office Actions. The post-grant review (opposition) will be significantly MORE expensive than an ex parte re-exam and will be more cumbersome.

Rule 1.99, as it currently exists, allows third parties to submit prior art to the USPTO. The only change that HR 1908 is directed to "how long" third parties have to submit prior art. The "peer to patent" program is something else.


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