Thursday, March 31, 2011

Some House members are questioning patent reform

In a post titled Lawmakers Question Patent Reform Bill, Grant Gross presents some of the downsides to the present patent reform bill ("America Invents Act"; S.23 in the Senate).

Mel Watt [D-NC] questioned whether the bill's proposed change, which would award a patent to the first person to file an application instead of the first person to create the invention, would hurt small inventors.

The bill would also expand so-called prior user rights, the right of an inventor or company that's been using an invention without patenting it to continue using it after another company patents it.

An expansion of prior user rights would discourage inventors from sharing their knowledge and reward those who "don't contribute to the progress of science," said Representative Jim Sensenbrenner, a Wisconsin Republican.

The expansion of prior user rights would apply to companies outside the U.S. and would reward the theft of U.S. intellectual property, Sensenbrenner added. "How does that help America compete?" he said. "The prior user rights expansion is going to end up giving China a get-out-of-jail-free card."

USPTO Director David Kappos disagreed, saying the lack of prior user rights in the U.S. hurts manufacturers that set up plants inside the country. Many other countries have prior user rights, giving U.S. manufacturers incentives to open plants in those countries, he said.

It does not appear Kappos denied the truth of what Sensenbrenner said.

Of first to file, note the previous IPBiz post
Why "first to file" is wrong
, which discusses the numbers of Dennis Crouch on Rule 131 declarations. Note separately
Gene Quinn's post titled Patent Reform in the House. Demagoguing of First to File? which ignored this prior art:

Unfortunately, the Patent Office does not keep track of 131 affidavits separately. They are keyed into the system generally as an affidavit, without regard to what type of affidavit. So I wasn’t able to obtain any useful data from the Patent Office. I then asked around to a number of colleagues and the consensus seems to be that 131 affidavits are filed in less than 1% of patent applications.

One notes Crouch found the overall number is less than 1%, but also found the use of 131 declarations is technology specific.
In biotechnology and organic chemistry - one found a Rule 131 affidavit in the file history of 1.43% of the cases.

But who cares what the frequency of use is? For example, do we eliminate various provisions of patent law based on a low frequency of use? Do "public use proceedings" have to go? It's the underlying concept that matters. Do we reward the person who invented first, or the person who filed first? Will intervening publications defeat an invention? The answer should be yes or no.

Within the article by Gross, one finds text from Mark Chandler of Cisco:

It's not practical to file a patent application for every change a company makes to a product, but in a first-to-file system, competitors may try to beat the inventing company to the patent office, he said.

"The alternative for us is to rush to massively increase our patent filings, not to exclude competitors from copying our products, but to protect ourselves against those who would use our own inventions against us in court," Chandler said. "That would be a totally unproductive distraction."

Thus, Chandler recognizes "first to file" by itself is a " totally unproductive distraction ". But prior user rights will more likely help a big entity than a garage inventor.

The patent reform bill is manifestly designed to help those who have already made inventions, and are trying to protect the status quo. It discriminates against the little guy with a step out invention.


A Radical Alternative Patent Reform Proposal: Eliminating The Non-Obvious Requirement on the Google Doodle patent


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