Saturday, June 11, 2005

The proposed patent legislation according to Lamar Smith

According to the website of Congr. Lamar Smith, the new bill (HR 2795):

•Provides that the right to a patent will be awarded to the first inventor to file for a patent who provides an adequate disclosure for a claimed invention [so-called first inventor to file rule would replace first to invent rule];

•Simplifies the process by which an applicant takes an oath governing the particulars of an invention and the identity of the rightful inventor;

•Deletes the “best mode” requirement from §112 of the Patent Act, which lists certain “specifications” that an inventor must set forth in an application [but see the article in IDEA arguing against this];

•Codifies the law related to inequitable conduct in connection with patent proceedings before the PTO;

•Clarifies the rights of an inventor to damages for patent infringement;

•Authorizes courts with jurisdiction over patent cases to grant injunctions in accordance with the principles of equity to prevent the violation of patent rights;

•Authorizes the PTO to limit by regulation the circumstances in which patent applicants may file a continuation and still be entitled to priority date of the parent application;

•Expands the 18 month publication feature to all applications;

•Creates a new post−grant opposition system [note commentary by Joseph Hosteny in Intellectual Property Today opposing the creation of a post-grant opposition system];

•Allows third-party submission of prior art within six months after the date of publication of the patent application [note: re-examination already allows third parties to submit prior art].

It was stated that the bill is "to improve the quality of patents issued by the U.S. Patent and Trademark Office and to reform certain patent practices that disrupt the operations of high−tech companies and other businesses."

Certain allegations about "patent quality," such as the assertion of a 97% patent grant rate, have been challenged in the literature.


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