Change Is in the Air: Be Ready for a First-To-File Patent System

By Bruce Sunstein. A member of our Patent Practice Group

March 2011 IP Update

Patent law change has become likely this year with the passage by the Senate on March 8 of legislation (S. 23) and, following hearings this year by the House Judiciary Committee, circulation in the House of similar legislation.The pending legislation would grant patent rights to the inventor who is first to file a patent application for an invention, whereas the present system grants a patent to the inventor who is first to invent.  In switching to a first-to-file system, U.S. patent law would resemble that of Europe, Japan, and, indeed, most other countries of the world.

Although revision of the patent laws has been on the legislative agenda for many years, the tone has changed.  In prior years, organizations such as the Software Business Alliance (whose members include some of the nation’s biggest software companies) and major electronics manufacturers sought to file the teeth of the patent system. Their rhetoric emphasized the evils of “patent trolls” * and the need for “patent reform.”

* A “patent troll”—also referred to as a “non-practicing entity”—has been used pejoratively to refer to an entity, owning one or more patents, that, unlike the companies it sues, does  not engage in manufacturing products covered by its patents. The term was applied, for example, to companies like NTP, which sued Research in Motion (maker of the BlackBerry smartphone),  and Eolas, which sued Microsoft.  NTP, Inc. v. Research in Motion,Ltd., (Fed. Cir. 2005); Eolas Technologies Inc. v. Microsoft Corp., (Fed. Cir. 2005).

However, universities are also “non-practicing entities,” since they license technology that they develop rather than engage in manufacturing.

The term “patent troll” was coined by Peter Detkin when he was assistant general counsel at Intel, after Intel was sued for his labeling a plaintiff “a patent extortionist.” Brenda Sandburg Trolling for Dollars,The Recorder, July 30, 2001. Thereafter Mr. Detkin co-founded and joined Intellectual Ventures, a patent aggregator, and he changed his definition: “One who must own no more than a few patents of questionable merit and is not in any business related to the patents.”

Organizations sprang up with rhetorically pleasing names like Coalition for Patent Fairness, whose members include Cisco, Apple, Micron, Google, Dell, Intel, Oracle, etc.  They wanted limits on patent damages. They also wanted limits on recoveries by entities that, unlike them, do not engage in manufacturing.

A succession of events has changed the rhetoric.  The U.S. Supreme Court engaged in its own patent reform efforts by raising the standard required to show that an invention would not have been obvious (KSR v. Teleflex), making it harder to get an injunction (eBay v. MercExchange), making it easier for a licensee and others to launch declaratory judgment proceedings to challenge a patent (MedImmune v. Genentech), and protecting a software company from U.S. patent liability for overseas sales of U.S.-developed software (Microsoft v. AT&T).

Meanwhile, many organizations, including organized labor, came out against patent reform as harmful to U.S. competitiveness. (The pharmaceutical industry, which depends on the patent system, was always against the reforms proposed by the software and electronics industries.) Then came the meltdown of the U.S. economy, and indeed the world economy. Technological innovation is now viewed as important to spurring the economy.

With these developments, some of the most controversial provisions (such as limits on damages) in prior versions of the legislation have been excised. The legislation passed by the Senate is no longer “patent reform” but rather the “America Invents Act.” Aside from changing the patent system to one based on first inventor to file, perhaps the most important change that the Senate bill would make is allowing the Patent and Trademark Office to retain and use all fees that it collects.

Fees collected by the PTO from applications for trademark registrations and patents have been subject to diversion by Congress, a circumstance that has caused the PTO, which is struggling under a huge backlog of patent applications, to be chronically underfunded. Although the PTO, under the deft leadership of David Kappos, has implemented innovative procedures to eat into the backlog while improving patent quality, the debilitating effect of underfunding is undeniable, and the Senate bill promises a welcome change.

There are other changes in prospect. A new procedure, called “post-grant review,” would permit challenging the validity of a patent on any ground, but the challenge would have to be mounted within nine months after grant of the patent.

Inter partes reexamination of patents, which under present law can be commenced at any time to challenge a patent, would be permitted only nine months after grant of the patent and after any post-grant review. As in the past, the challenge can be based only on prior art patents and publications.

The most significant change, however,  is the shift to a first-to-file system. If two inventors each file an application to patent the same invention, the patent would be awarded to the inventor who first filed the application. The date of the invention would be irrelevant. The only exception to this regimen would be in the unusual case where the inventor who was second to file could prove, in a new special “derivation proceeding,” that the one who filed first derived (i.e., stole) the invention.

The birth of this first-to-file system would mark the death of the one-year grace period for most purposes. Under present U.S. law, an inventor is afforded a grace period of one year after the earliest of a public disclosure (by anyone in any form, including in an article) of the invention, an offer for sale of the invention, or its public use. 35 U.S.C. § 102(b).

Under the S.23 bill, there is a narrow grace period of a year for a “disclosure” of the invention by or through the inventor. However, if a company makes a confidential offer to sell the invention before it has filed a patent application, it would forfeit its patent rights under S.23, unless a court decides that a confidential offer for sale is such a “disclosure.” 1

For a technology-based business to survive in this new environment, it will be more important than ever to turn innovations into patent applications quickly, because in the new environment rights can be lost immediately by a publication of the invention by someone other than the inventor and because proving that the invention was made before the application filing date has no impact whatsoever. Only the application filing date counts.

There is a subtle way in which the new regime would be stricter than in Europe. Under the laws of both the U.S. and Europe, patent applications typically are published 18 months after they are filed. Until an application is published, it is secret. So secret prior art in the form of an unpublished patent application can be used to reject an application.

As an example, if I file an application for an invention on March 15, and someone else filed an application for the same invention on March 13, the earlier application—which certainly would not have been published two days later when I file my application—can be used to reject my application.

That is fair, we might say, because I did not file first. In this respect, the new U.S. regime is the same as the law of Europe. But what if my invention is not the same as the March 13 filing? What if, instead, my invention is somewhat different from the earlier filing? Should the PTO be able to argue that my invention is just an obvious variation of the invention in the March 13 filing?

Under S.23, the Patent and Trademark Office can do just that, and cite against me a patent application that was not published at the time I filed my application, and argue that my invention would have been obvious. In Europe, it is not possible to use an unpublished patent application as the basis for an obviousness rejection. 2

Of course, the best thing for me to do would have been, if at all possible, to get on file before the March 13 filing.  In other words, I should file early. But what if my invention is not fully baked?

I can file a first provisional application, for a current filing fee of $220 (half that for individual inventors, universities, and other small entities), and then I can file another provisional application with more detail when my invention is more fully developed, or even a series of provisional applications as my invention undergoes further development, making sure to file a regular application by the first anniversary of my first provisional filing.

To borrow from another context: file early, file often. That has always been a good idea, and it will be an even better idea with enactment of the new legislation.

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1 The author has proposed specific language to amend the legislation to provide a one-year grace period for an offer to sell the invention made by or through the inventor. Under rules of the European Patent Office, a confidential offer of sale has no effect on patentability, so S.23 is in this respect stricter than the law in Europe.2 See Article 56 of the European Patent Convention. The author has proposed amending the legislation to prevent an application that has not been published as of the effective filing date of the application from being used for an obviousness rejection.