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US Patent Reform
Wednesday, June 15 2005 @ 03:06 PM EDT

I thought some of you might like to read the US Patent Reform Act of 2005 [PDF], because it has just begun its journey through the legislative process. Of course, like all legislation, it's almost impossible to read it and understand it, particularly without Title 35 of the US Code in front of you to compare it with, so I thought I'd collect some resources so you have a fighting chance at understanding what is being proposed.

First, here's are some articles that explain it a bit:

Its sponsor put out a press release, and it tells it like it is:

Congressman Lamar Smith (R-TX) today introduced the Patent Reform Act of 2005, legislation to improve the quality of patents issued by the U.S. Patent and Trademark Office and to reform certain patent practices that disrupt the operations of high-tech companies and other businesses.

Translation: This bill's for you, if you are a high-tech company. I guess Microsoft is sick of being sued for patent infringment and losing. IBM would like patent reform too. And Oracle, and the BSA. Everyone knows the system is broken. But what to do about it? This is a bill to address their concerns.

But is it a fix for the patent system, or just a tweak for high-tech big players? Might I suggest you read Mark Webbink of Red Hat's paper on software patents, "A New Paradigm for Intellectual Property Rights in Software"?

Not everyone is thrilled with the proposed reform. It's a bill designed to address the concerns of the big tech industry players, so drug companies and others are not so sure they like what they see. Here's one reaction that I found amusing:

"In my opinion, there would be an adverse impact from the proposal that requires that all patent applications be published 18 months of filing," Robert E. Krebs, Co-Chair Intellectual Property & Trade Regulation Group at Thelen Reid & Priest, told BetaNews in reference to the Patent Reform Act of 2005.

"Under current law, savvy start-up companies can keep their technology secret in the Patent Office for several years. These few years of secrecy -- during which the companies can keep their technology away from their competitors while, at the same time, pursing patent protection and readying their product for market -- can be crucial for business success. Perhaps the current proposal will have the same fate as a similar proposal which Congress considered -- and defeated -- a few years ago," said Krebs.

Some folks like submarine patents. Basically, the proposed bill would make it a lot harder to sue for patent infringement and win, which isn't necessarily a bad thing, depending on the terms, since stupid lawsuits *are* a waste of time and money. The bill is trying to get rid of patent trolls. Hmm. Then if Microsoft attacks Linux, it will have to do it stage front and center, instead of the funnel-funding-to-a-surrogate, like they did with the SCO litigation.

Here's my personal favorite stupid lawsuit: two sisters sued the doctors and hospital, because when they were waiting while their mother had outpatient surgery, something went wrong in the surgery and the doctors quickly wheeled her into emergency surgery, and the girls saw their mother looking bad as the doctors whizzed the mom down the hall trying to help her. The girls lost.

Here's another stupid lawsuit that deserves honorable mention. Or how about this one, where a dad sued the school coach because the baseball team didn't win that year, and so his son didn't get to go to the tournament in Florida. "I didn't understand it," said the coach, a street-maintenance worker who had volunteered as baseball coach for two years. "I wanted to be a coach just to help kids."

Well, that'll teach him to do a good deed.

Anyway, back to patent reform. The issue is this: do the big players need more help? If it's harder to sue for patent infringement, and it's easier for big businesses to file for patents than it is for capital-starved little guys, is it fair to the little guy? For example, I can imagine the following scenario: I invent something and write a scholarly paper about it. I can't afford to patent it or it takes me a while to find a lawyer I can afford. So Microsoft reads my paper, runs to the Patent Office, patents what I wrote about, and then sues me for infringement of their patent. I haven't analyzed the bill enough to know if there is a way to block this scenario, but it's something to look for. You don't want the fix to be worse than the problem you are addressing.

As for the public's interest, it's in there but only if you accept the bill's sponsor's opinion that the result will be a mountain of great new gadgets to play with and a boost to the economy. "This will help individuals and companies obtain seed money for research, commercialize their inventions, grow their businesses, create new jobs, and offer the American public a dazzling array of products and services that make our country the envy of the world,” Smith commented. He sees the public only as consumers.

Except for one thing they maybe didn't think about: software patents and Free and Open Source Software. Has anyone involved thought through the tilt to the playing field if first-to-file becomes law instead of first-to-invent, for example? Do we want to make it even harder for Linux and GNU/Linux to survive and compete? Speaking of dazzling arrays of products, Linux certainly qualifies as a dazzling product that is having a beneificial impact on the economy. Just read this proposed bill from the standpoint of Linus and the thousands of volunteers who first got this project off the ground, and ask yourself: if this patent bill is passed as is, could it ever happen again? I don't see how any tech bill can ever be written that doesn't consider that question as part of the mix, if they are sincere about wishing to stimulate the economy.

Here's what the press release says the bill does:

  • Provides that the right to a patent will be awarded to the first inventor to file for a patent who provides an adequate disclosure for a claimed invention;
  • Simplifies the process by which an applicant takes an oath governing the particulars of an invention and the identity of the rightful inventor;
  • Deletes the “best mode” requirement from §112 of the Patent Act, which lists certain “specifications” that an inventor must set forth in an application;
  • Codifies the law related to inequitable conduct in connection with patent proceedings before the PTO;
  • Clarifies the rights of an inventor to damages for patent infringement;
  • Authorizes courts with jurisdiction over patent cases to grant injunctions in accordance with the principles of equity to prevent the violation of patent rights;
  • Authorizes the PTO to limit by regulation the circumstances in which patent applicants may file a continuation and still be entitled to priority date of the parent application;
  • Expands the 18 month publication feature to all applications;
  • Creates a new post-grant opposition system;
  • Allows third-party submission of prior art within six months after the date of publication of the patent application.  

And here, for comparison, is what Dennis Crouch of Patently-O blog says it does:

This proposed legislation includes sweeping reforms to fundamental aspects of the U.S. patent laws and procedures, including:
  • Change to a first-to-file system (including elimination of the 1-year grace period for certain third party public disclosure);
  • Elimination of the best mode requirement;
  • Changes to the duty of candor (violations will be adjudged by the PTO rather than in Federal Court);
  • Damages to be limited to the inventive contribution rather than calculated on the selling price of an entire product;
  • Limitations on damages for willfulness;
  • Adding a factor of "fairness"to the determination of whether to enter an injunction;
  • Automatic stay of injunctions for appeals;
  • Limits on scope of continuation applications (to be made by PTO); and
  • Introduction of a post-grant opposition procedure and submission of prior art by third parties, etc.
Although some of the provisions in the proposed legislation are toned-down from the discussion draft distributed this spring, this version still has something to offend almost every interest.

Crouch also has a redlined version in .doc format, showing the proposed changes.

Here's Obsidian Wings' take on it, from a pro-big-business perspective, but it's an honest explanation that the little guy is the loser in a first-to-file rule. Oh, and it might be unConstitutional. So there you have it, some resources to hopefully help you to at least understand what is being proposed.

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