Wednesday, August 13, 2008

Patent reform hurts small inventors

In How Patent Law Changes Could Hurt Small Inventors, Tamara Monosoff correctly reports that proposed patent "reform" hurts small inventors, but gets several facts wrong.

Of post-grant review ("opposition"), Monosoff wrote:

Presently, once a patent is granted by the USPTO, it is presumed valid and cannot, for the most part, be challenged except through legal proceedings. [IPBiz: what about the presently-existing re-examination?] Under the proposed bill, however, the USPTO would now allow petitions to be filed for the administrative cancellation of an issued patent within 12 months of the patent's issue ("first window"). During this first window of review, there would be no presumption of the validity of the patent in question.

During the review window, the burden to establish invalidity is by "a preponderance of the evidence," a lesser burden of proof than the "clear and convincing" standard currently in use (which would remain the standard required to invalidate a patent in court). What would all this mean for patent holders? That for the first 12 months after its issue, a patent may not be as secure as it is today. Score: Large Company B = 3. Small Inventor A = 0.
People can already challenge patents through re-examination, which is on a preponderance standard. Of course, what bothered people more was the "second window". And, the greater expense of oppositions compared to re-examinations.

Monosoff also wrote:

Under existing U.S. patent law, third parties are essentially excluded from the patent prosecution process; the process involves just the filer and the patent examiner. As currently proposed in the House bill, however, third parties would now be permitted to submit patents, published applications or other printed publications to the patent examiner, thus potentially interfering with, complicating or preventing issuance of the inventor's patent. Score: Large Company B = 4. Small Inventor A = 0.

Hmmm, what happened to the already existing Rule 99?

See also

Vindu Goel is confused on patent reform
which (among other things) discusses a different variant of the Sikahema effect:

As of Oct. 5, 2007, the comments on Goel's article have been REMOVED, although the Goel article is intact.

**Separately, the 271blog has discussion on patent reform:

Patent Reform Crawling Back In 2008? Lemley Proposal For Damages May Provide Answers

with the post starting with comments on proposed draft legislation by Senator Kyl of Arizona.

Of PGR: Post-grant reviews would be available for 12-18 months after issue, where reviews would be limited to issues of novelty and obviousness.

On search reports by the patent applicant: submission of search reports and analysis relevant to patentability will be required for every application. Commerce Secretary Gutierrez previously wrote to lawmakers that this provision would be "the strongest step toward improved patent quality." IPBiz notes that the strongest step toward patent quality would be giving the examiners sufficient time to do the examination, including the time (and resources) for the "third party" examiners to do their own search. Imposing another burden (and cost) on small inventors is not such a good idea.

***See also

post at business opportunities: Patent Law Changes Could Hurt Small Inventors


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