Both houses of Congress have recently passed separate versions of patent reform legislation. The differences between the two versions are expected to be reconciled by conference committee, and a final bill will be sent to President Obama for his signature.
The two versions have much in common but also have important differences. Below we have summarized some of the key provisions of the proposed legislation, without regard to which version of the bill contains the provision. As the final bill will likely involve compromise, it almost surely will not be the same as either current bill. Accordingly, the following should be looked at as preliminary and advisory. If and when the compromise legislation becomes law we will report more thoroughly and definitively.
- A "first to file" system replaces the current "first to invent" system; if two parties apply for the same patent, the patent is awarded to the first party to file the patent application.
- The system will likely require parties to file patent applications very soon after conception of the invention, or risk losing their rights to another inventor, leading to more patent filings.
- The system should simplify litigation because proof of the filing date (as opposed to invention date) is a matter of record.
- The system should expand the universe of prior art the PTO will review prior to issuance and the court will look at when determining validity.
- Establishes "derivation" actions that allow a second-to-file inventor to claim that the first-to-file inventor derived the invention from the aggrieved party. This maintains the current system in which only a person who actually conceived of the invention can obtain a patent.
- Establishes a post-grant opposition system in which during the nine months after the patent is granted any party can request that the patent be cancelled due to invalidity. This should help weed out patents that never should have been issued.
- Allows an employer to file a patent application in the name of inventor employees. This would help in situations in which an ex-employee inventor can't be found or refuses to cooperate in the patent process.
- Allows any party to cite prior art against a pending patent application, as long as this is done within certain time limitations. This would allow parties to try to prevent issuance of a patent that might hurt them.
- Allows any party to cite prior art against an issued patent. This would help to create a file that might be useful to invalidate a patent either in court or in a post-issuance reexamination proceeding.
- Establishes a post-issuance supplemental examination process as a means for the patent owner to correct mistakes made during initial examination. This may allow patent validity to be bolstered before the patent is sold or litigated.
- Allows for an automatic stay of litigation when a patent is being re-examined. This could reduce the cost of litigation, but may also lengthen the pendency of some patent cases.