I can understand your lack of confidence in Congress, I share that feeling. The trouble is that if they do get to a vote on patent reform there will be change and 102 will be amended. So we can either work to get it as solid as possible or we can push keeping things the way they are and get whatever crazy ambiguity they throw at us. I am going to try and suggest revisions to the proposed 102, which I feel is better than doing nothing. They want first to file in some form, which will cause more work for the PTO no doubt, but I don’t see any momentum for dropping that.

For those whom would rather nothing I guess hoping for a protracted health care reconciliation in the Senate is the best way to keep Congress well enough away.

I do share your view that this is a missed opportunity. They really don’t want to spur innovation or fix the patent system. They just want some minor things done differently without addressing the real issues or providing real reform.

-Gene

I’m with David, in the present legal environment, I would leave 102 alone except for David’s tweak. If you change 102 in any significant way, you will unleash the courts to potentially ignore all precedents related to 102. This will create uncertainty in the patent law and that is almost always a bad thing for inventors and innovation.

Passing this reform bill is likely hurt small inventors, hurt innovation in general, and allow the real problems with the patent system to be ignored for years to come, because people will assume that “Patent Reform” fixed the problem. I am far more scared of Congress passing this bill than I am of Congress doing nothing.

For a cautionary comparative example, I would have you consider the effects of the Public Company Accounting Reform and Investor Protection Act, better known as Sarbanes-Oxley. Based on the recent meltdown on Wall Street, I think we can pretty well conclude that this “Reform Act” didn’t do a very good job of improving public company accounting or protecting investors in any meaningful way. However, the Sarbanes-Oxley “Reform Act” did a magnificent job of destroying the IPO market in this country.

Sorry, I have absolutely no faith in any so-called “Reform Act” passed by Congress these days.

Mark

Aside from Rule 56, what would you like to see in the Senate bill that would help independent inventors and small businesses?

How would you like to see the proposed 102(b) tweaked? I am going to write something this week with suggested revised language, and some other thoughts on reform, and would like to hear your take.

-Gene

Gene,

In principal, I understand the idea of giving inventors the incentive to file as quickly as possible. However, I think its important to realize that many small inventors are not as up on the patent laws as patent professionals are. For example, many very intelligent inventors don’t realize that publishing their ideas or putting their product on sale kills their international rights and starts a 1 year clock ticking on the their US rights. I also worry that too many small inventors are going to think they can rely on their provisional applications and delay filing their utility applications, even though the provisional applications will not provide enablement for the claims in the utility application. As you note, many provisionals (disclosures) won’t provide enablement, but will many small inventors understand this?

When I look at the s.515 bill I see very little in the way of benefits to small inventors and lots of potential harm to small inventors.

Mark

All good points. I have been writing for several years about the chaos that is Rule 56. There will be no patent reform until Rule 56 is addressed. I would abolish personally (and am going to write about that some more coming up here).

In terms of first to file vs. first to invent, I think first to file will give inventors incentive to do what they should have been doing, which is file and not wait. I do think the USPTO will get a lot more work out of it though because with a race to the Patent Office there will be a lot of disclosures filed that don’t support everything (perhaps anything) and the question will be disclosure vs. disclosure rather than claim vs. claim.

It is impossible to argue with you that S.515 ignores the big problems, which is tragic. In this article I say we should be calling this “patent change” not “patent reform.” See:

http://www.ipwatchdog.com/2010/03/10/analyzing-patent-reform-chances-and-first-to-file-provisions/id=9607/

-Gene

The lack of a 1 year grace period in S.515 for putting a product “on sale” is huge omission for many independent inventors who will have no idea they have given up all of their patent rights by selling or offering their product for sale.

As to the other protections of the “grace period”, why do you trust the courts to interpret these provisions in the same way they you interpret their provisions, given how the courts have handled Section 103 (see KSR) and 37 CFR 1.56 (see the numerous inequitable conduct cases which you yourself have commented on ). Changing Section 102 only makes it easier for the courts to “do their own thing” in interpreting Section 102 , because they are not even theoretically constrained by precedent.

As to intereferences, although I think your point is well taken about their costs, they are also relatively rare. If the Congress were really interested in helping out small inventors (and large companies for that matter), the Patent Reform bill would abolish 37 CFR 1.56 which costs every inventor money. Also, given that first to file vs. first to invent only matters in a small number of cases and 37 CFR 1.56 affects every case, getting rid of 37 CFR 1.56 would be a better first step to “patent harmonization” than going to first-to-file would be.

I would also remind you of the fact that the USPTO is not exactly living up to its end of the bargain that resulted in a 20 year from filing and publication of applications. This last major change of the patent laws was predicated on the assumptions that the USPTO would not greatly increase its average pendency and that the USPTO wouldn’t drastically reduce its allowance rate.

Why should anyone trust that s.515 will work out any better given how it completely ignores most of the problems plaguing the patent system?

I didn’t say it has “no grace period.” I said it has a grace period that is “so tenuous that it can’t be relied on.” It’s right there in black and white, Gene.

I think all can see clearly now who’s reading carefully, vs. who’s “misrepresenting.”

I agree with you 100%. I can’t for the life of me understand why there are those, like David Boundy, who are running around ignoring the facts and demagoging the bill. Worst is that they make arguments not based on fact or reality. They claim we should “read the bill,” but it is clear they have not read the bill. That is the only way to explain how or why anyone could say there is no grace period in the bill, when it is right there in black and white.

Now, I think the grace period is sloppy and the language needs to be tightened up because it is ambiguous, but not acknowledging it is present is nothing more than a cheap parlor trick aimed at swaying sentiment of those who have not read the bill. That, in my opinion, is pathetic and smacks of an agenda.

I also find it interesting that those who claim to be acting in the best interest of the independent inventor community never admit the cost to prevail in a first to invent system. Intereferences are extremely expensive and at $400,000 to $600,000 independent inventors are only fooling themselves, or letting themselves be fooled, if they think first to invent benefits them in any way, shape or form.

-Gene