President Obama today signed into law what’s being called the “America Invents Act” — described as the first major reform to U.S. patent law in six decades. A major focus is reducing the backlog of patent applications at the U.S. Patent & Trademark Office.

“Right now, there are about 700,000 applications that haven’t even been opened yet. These are jobs and businesses of the future just waiting to be created,” Obama said today at a signing ceremony, according to Politico. “Somewhere in that stack of applications could be the next technological breakthrough.”

The new lawcomes at a time of heightened controversy over the nation’s patent system, as Google, Microsoft, Apple and others amass huge patent warchests to wield in courtrooms and over negotiating tables. Microsoft has expressed its support for the reform, with vice president and deputy general counsel Horacio Gutierrez outlining these reasons in a previous blog post

  • Ensuring that the USPTO, a user-fee funded agency, has access to the funding it needs to continue to improve patent quality and reduce application pendency;
  • Moving the U.S. to adopt a “first inventor to file” system, enabling greater harmonization of patent processes with those of other countries that already follow this approach; and
  • Establishing additional administrative tools, including a new post-grant review procedure, to help eliminate questionable patents.

That “first to file” provision is perhaps the most controversial aspect, replacing the previous “first to invent” protocol in determining who has the rights to a particular patent.

Commenting on William Carleton’s recent guest post on the patent reform bill, one GeekWire reader noted in the comments that the change “means that if I realize that no one has patented toast yet, and I file my patent, then soon I will own the IP around toast.” (Update: See the discussion of this in the comments below.)

That’s an extreme example, but it helps demonstrate just how big the change is. The question is whether it’s the right change. One way or another, this new law means we’re destined to find out.

Comments

  • Jim

    The comment on the previous post is such an extreme example because it’s totally wrong.  You can’t file a patent on toast because there is already prior art for it – that’s true under the new law and the old law.  First to file just means that if you come up with something new, you should file a patent as soon as possible, because you can’t avoid prior art by claiming you invented it a long time ago.

    • http://geekwire.com Todd Bishop

      Jim, thanks for pointing that out. Here’s a post on Patently-O that digs into the issue of prior art related to the new law …  

      http://www.patentlyo.com/patent/2011/09/guest-post-defining-prior-art-under-the-leahy-smith-aia.html

      • Jim

        Sorry, misinformation about the patent system (from the commenter) really bugs me.  I agree, the Patently-O post is a really good summary.  The key (to me, at least) is that the new law actually creates a little more prior art, not less, because the only date that matters is the filing date.  Invention date is really nebulous and creates a lot of question on what really counts as prior art for a particular patent.

  • that guest guy

    Ok but if I release a new product today.. does that mean someone I dont know could file for that patent tomorrow ?

    • Jim

      No, because your product would be prior art.  It’s actually better for you under the new law than the old law.  Under the old law, the applicant could avoid having your product be prior art by showing that he invented it the day before you released your product.  

  • Mason B.

    In addition to the comments already provided, the example above is misleading because you cannot know at the time of filing that “no one has patented toast yet”.  The Patent Office waits 18 months to publish new applications, and you cannot find them through any search before that period.  That means if you file an application today, and anyone else has filed the exact same application at any time within the last 18 months, your patent application is now junk.  In the past, the two of you could get into a fight, officially called an interference, in which you each proved who invented the invention first.  In a fight between competing patent applications, is it more just to give a patent to the first inventor or to the first person to get to the Patent Office?  That’s up to you to decide, but this law changes the official result on that question.  However, you still file “in the dark”, meaning that unless something is really old (more than 18 months is old when technology moves fast), you still don’t know if it has been patented before.  Now one might argue that the Patent Office should publish new applications immediately, but that’s not in this law.  They have a financial disincentive to doing so as they would lose a lot of filing fees if they didn’t let multilpe people file on the same thing. 

    • Anonymous

       If two people can independently invent the same thing at the same time without knowing of the other person’s invention, then isn’t a patent simply a license for monopoly, which has nothing to do with protecting innovation?

      The problem with patent law is that we’re allowing corporations to patent blatently obvious processes and solutions that anyone could arrive at and stifling innovation.

      Our current patent laws are absolutely criminal, and so are the corporations that abuse them.

  • Mason B.

    In addition to the comments already provided, the example above is misleading because you cannot know at the time of filing that “no one has patented toast yet”.  The Patent Office waits 18 months to publish new applications, and you cannot find them through any search before that period.  That means if you file an application today, and anyone else has filed the exact same application at any time within the last 18 months, your patent application is now junk.  In the past, the two of you could get into a fight, officially called an interference, in which you each proved who invented the invention first.  In a fight between competing patent applications, is it more just to give a patent to the first inventor or to the first person to get to the Patent Office?  That’s up to you to decide, but this law changes the official result on that question.  However, you still file “in the dark”, meaning that unless something is really old (more than 18 months is old when technology moves fast), you still don’t know if it has been patented before.  Now one might argue that the Patent Office should publish new applications immediately, but that’s not in this law.  They have a financial disincentive to doing so as they would lose a lot of filing fees if they didn’t let multilpe people file on the same thing. 

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