On September 7, 2011, the Senate voted for “cloture” of debate to submit to a vote of the full Senate a patent reform bill that would make the most significant changes in the U.S. patent system in 60 years. The bill, called the Leahy-Smith America Invents Act (H.R. 1249), was passed by the U.S. House of Representatives on June 23, 2011.
Commentators including the Wall Street Journal have indicated that President Barack Obama is expected to sign the bill, if passed by Congress, and have predicted it could be passed by the Senate and sent to the President for signature as early as next week.
The proposed bill would change the U.S. patent system from a “first to invent” system from a “first to file” system. Most of the countries in the rest of the world currently have “first to file” systems.
Proponents of the bill, including many large pharmaceutical and other companies, argue that changing to a first to file system will provide greater certainty and lead to less costly patent litigation in the U.S.
Opponents have questioned whether the new system will favor big companies and discourage invention by private individuals, who may not be able to afford the lengthy and costly process of filing a patent application before seeking backers and financing from others. Yet under a “first to file” system, disclosing their inventions to others before filing a patent application could allow others to steal their ideas and file patent applications for them first.
One study by Professors at the University of Pennsylvania Law School found that after a similar change in Canada’s patent system in 1989, fewer individual inventors have filed patent applications in Canada, according to the Wall Street Journal’s report.
Among the other changes that would be created by the proposed Leahy-Smith America Invents Act:
- A new procedure would be implemented, allowing anyone to challenge a newly granted patent, short of bringing litigation;
- The U.S. Patent & Trademark Office would be given the right to set its own fees and hire more examiners, to expedite the patent application process;
- “Another provision would make it harder for patent holders to file blanket suits against dozens of companies in dissimilar industries,” according to the Wall Street Journal’s report;
- An ombudsman program would be established to help start-ups and small businesses in the patent application process;
- New discounts in patent filing fees would be implemented for small companies; and
- Rather than allowing the Patent Office to keep any excess patent fees it may collect, a reserve fund would be established for any such excess fees. It remains unclear whether this fund could be used for other governmental purposes.
An earlier version of the patent reform bill was passed by the Senate in March by a 95-5 vote. The House of Representatives passed the current version, which is now being considered by the Senate, by a 304-117 vote in June.
The full text of the currently proposed bill, H.R. 1249: Leahy-Smith America Invents Act, as submitted to the Senate from the House, along with its procedural history, can be found on the website GovTrack.us.