04/05/2011 07:07:00 AM EST
Change Is in the Air: Be Ready for a First-To-File Patent System
Patent law change has
become likely this year. The pending legislation would grant patent rights to
the inventor who is first to file a patent application for an invention. In
switching, U.S. patent law would resemble that of Europe, Japan, and, indeed,
most other countries of the world. In this Analysis, Bruce D. Sunstein, the
founder of Sunstein Kann Murphy & Timbers LLP, discusses the implications
of this crucial change. He writes:
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 Int'l Co. v. Teleflex
Inc., 550 U.S. 398 (U.S. 2007)) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law], making it harder
to get an injunction (eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388
(U.S. 2006)) [enhanced version / unenhanced version], making it easier for a licensee and others to
launch declaratory judgment proceedings to challenge a patent (MedImmune, Inc.
v. Genentech, Inc., 549 U.S. 118 (U.S. 2007)) [enhanced version / unenhanced version], and protecting a software company from U.S.
patent liability for overseas sales of U.S.-developed software (Microsoft
Corp. v. AT&T Corp., 550 U.S. 437 (U.S. 2007)) [enhanced version / unenhanced version].
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.
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