Patent News 5

Upcoming Patent Reform

You may have well heard about patent reform. It seems to be introduced every year and then die out toward the end of a session. Well - it is coming strong this year and a house version called the Patent Reform Act of 2009 was just introduced.

Since it will be hashed and rehashed many times I don't think it necessary that every business person get to worked up trying to understand it in detail. But here is a concise view of some of the provisions under consideration that might effect you in the future. I am focusing here on some of the key patent prosecution items. There are also some recommendations that impact litigation (venue, jurisdiction, damages, etc.) - important but not until you get involved in litigation.

Patent Reform - Some Prosecution Items

First to File

Most of the world is on a first to file patent system - the United States has been on a first to invent system. The proposal now on the table is to convert the United States’ patent system into a first-inventor-to-file system, giving priority to the earlier-filed application for a claimed invention. This will replace currently onerous interference proceedings with a derivation proceeding to determine whether the applicant of an earlier-filed application was not the proper applicant for the claimed invention – such a proceeding should be be faster and less expensive. In addition there is provided a grace period for publicly disclosing the subject matter of the claimed invention, without losing priority.

Inventor’s oath or declaration

In general.— The proposal streamlines the requirement that the inventor submit an oath as part of a patent application, and makes it easier for patent owners to file applications.

Post-grant procedures

There is a long standing tradition in European Patent law for "opposition hearings" that can be instigated for up to nine months after a patent is granted. Patent Reform proposes a new post-grant review procedure for the US patent office that can be instituted either within 12 months after the issuance of a patent or a reissue patent, or if the patent owner consents. The post-grant review begins with a cancellation petition and moves forward only if the Director determines that there is a substantial new question of patentability. The presumption of validity does not apply in this proceeding, but the burden of proof is on the party advancing a proposition. The Director will prescribe rules governing the proceeding, including rules to sanction abuse.

The hearings are to begin in March 2009. Stay tuned.


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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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