Patent Reform Passed by House of Representatives

June 24th, 2011

Patent Reform Passed by House of Representatives

Daniel E. Sineway

The U.S. House of Representatives on Thursday passed reforms to the nation’s patent laws that could have significant impact on how and when patent applications are filed, and a host of other issues. The most significant reform outlined in the bill would change the U.S. from a “first-to-invent” system to a “first-to-file” system, bringing the U.S. more in line with the rest of the world. Under this new system, if more than one inventor (or company) is developing a particular invention or technology around the same time, the inventor that files for protection first will win rights to the patent – not the inventor that happened to invent first. Practically, this puts added pressure on inventors and companies to file for patents as soon as technically feasible, as the “first-to-invent” cushion will no longer apply.

Other significant changes recited in the bill include a post-grant review system that could modify the way patents are reviewed or challenged after issue, a change in the US Patent & Trademark Office’s ability to set fees (e.g., filing fees, renewal fees, etc.), and establishment of a pilot committee to review questionable business method patents.

Many of these provisions, if enacted into law, are likely to face challenge in years to come. Many experts have already raised issues as to the constitutionality of many of the new provisions.

The next step is that the House’s version of the bill will be reconciled with the previously-passed Senate version. (We reported on the Senate’s version of the bill in a previous post.) Once the differences are hashed out, a final version of the bill will be sent to the White House.

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This information is presented for educational purposes and is not intended to constitute legal advice. Opinions expressed are those of the author and not of Morris, Manning & Martin, LLP; see disclaimer at Contact Daniel Sineway for more information at