Patent Reform Big Time News, Hits Senate Floor

By Gene Quinn
March 1, 2011

Last night patent reform was big enough news to make the FOX News 6pm news hour, but frankly there wasn’t much “news” to report from activities in the Senate yesterday.  Senator Leahy initiated discussion on S. 23, the Senate version of patent reform, and a brief discussion ensued.  More is expected today on patent reform in the Senate. 

Louis Foreman, the publisher of Inventors Digest and producer of Everyday Edisons, was interviewed for the FOX News story, as was USPTO Director David Kappos.  Louis hit on two big issues for innovators.  First, the speed of application processing.  On this point he explained: “With technology advancing as rapidly as it does today, your invention may not even be relevant by the time the patent actually issues.”  Second, the fear that after investing in a patented invention prior art will surface and take your rights away.   On this point he explained: “[Inventors] also want certainty, knowing that when their patent does issue that someone’s not gonna jump out of the weeds and say, ‘Aha! Here’s a prior art reference that invalidates your application.'”

With patent reform finding its way into the popular news media beware inaccurate or misleading statements about patents and the reform bill.  For example, in the FOX News story it was stated: “Inventors currently pay around $1000 to apply for a patent ($500 for individuals and small companies).” While not technically inaccurate I suspect this statement does set up false expectations on the part of many in the public. What is being discussed here is the basic filing fee. Many thousands of dollars can be spent on competent professional assistance, and there will be a smaller number of thousands of dollars likely due to the Patent Office over the course of the pendency of a patent application. In the time allotted for the story, I suppose this wasn’t anything eggregious, but likely misleading for the uninitiated.

Easily the most eggregious thing written about patent reform, at least that I have seen, is a statement from the Associated Press.  In talking about the grace period in the patent reform legislation the AP wrote: “It comes with an enhanced grace period to protect inventors who publicly disclose their inventions before seeking patents.”  This is not misleading, it is flat wrong.  The grace period contained in S. 23 is not “enhanced,” but rather it is reduced. 

Current law allows an inventor to still obtain a patent if an application is filed within 12 months of a public use, a sale or publication of information about the invention.  Under S. 23 the law will change and the grace period will be more narrow.  S. 23 talks about “disclosures,” which is not a term of art that would mean public use or sale, so there is tremendous uncertainty as to what the grace period will apply to.  Additionally, today the grace period applies to both inventor activities and third party activities.  Under S. 23 many third party activities would prevent a patent from issuing without any grace period.  See: Senate to Vote on Patent Reform, First to File Fight Looms.

Stay tuned!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. Mark Nowotarski March 1, 2011 10:21 am

    I just discovered something called opencongress.org. Pending bills are posted and registered users can vote on the bill and leave specific comments on specific provisions. Here is a link to S23 http://www.opencongress.org/bill/112-s23/text

    I left a comment on Section 15 (repeal of best mode requirement) indicating that this repeal was a bad idea if we want a strong patent system. I also followed this up with emails to my Senators.

  2. Anon March 1, 2011 10:51 am

    Mark,

    As indicated by Dave Boundy on another thread, writing land mail and email will both be too slow to impact the S23 Senate actions. Call. I found that my two senators were both eager to hear what I had to say (one was new and did not even have a staffer set up in this area, so calling was the only way to make a difference!)

  3. Mark Nowotarski March 1, 2011 10:59 am

    Anon,

    Thanks. Will do.

  4. Mark Nowotarski March 1, 2011 11:30 am

    Done,

  5. Bruce Young March 1, 2011 5:49 pm

    Gene,
    I have been listening to the debate today on C-Span 2. You were quoted by Sen. Leahy today on the floor of the Senate. He quoted your statement that we currently already have a defacto “first inventor to file” and used the same statistics that you quote. I am not sure, but I think he entered that entire blog posting into the record. You may need to issue a DMCA take-down notice! 😉

    Congrats on being heard!

    Overall, I am pretty discusted with the hijacking of this debate with balanced budget and govenment shut-down related amendments. I understand that they are important issues – certainly having broader appeal – but they certainly have nothing to do with patent reform.

    -Bruce

  6. Robert K S March 1, 2011 6:48 pm

    I always suspected that Gene’s “journalism” on the subject of first-to-file could be dangerous, but if it is actually entering the legislative record as substantive rationale for the Leahy bill, it is especially troubling. Gene was turned around on the subject of first-to-file, after long opposing the idea, within the span of one hour by a charismatic speech given by David Kappos. Gene’s conversion-effecting revelation in this area can essentially be summarized by “Kappos told me it’d be cool, and so now I believe him”. Gene’s blog speaks for a lot of people in the IP field, and generally represents the viewpoints of people who understand the issues intimately. On this issue, Gene’s perspective is mistaken. Switching to first-to-file is one of the worst aspects of the bill, euphemistically renaming it “first-inventor-to-file” is dishonest, and the rationale for why we already have this system “de facto” is facetious.

  7. Gene Quinn March 1, 2011 7:20 pm

    Robert K S-

    I can accept that you think my perspective is mistaken, but your comments about my falling for a “charismatic speech” is ridiculous and border on paranoia. Why is it so hard to accept that the data overwhelmingly and convincingly demonstrates we already have a first to file system in effect? What is wrong with changing your views in the face of extraordinary evidence?

    The evidence is clear. We have a first to file system already in effect, and the fact that you choose to ignore that speaks volumes more about you than it does about me.

    -Gene

    -Gene

  8. Gene Quinn March 1, 2011 7:23 pm

    Thanks Bruce.

    I am more than happy to have Senator Kyl enter the article, or my entire website, into the Senate record. It has been a fun day.

    Cheers.

    -Gene

  9. Robert K S March 1, 2011 8:40 pm

    “…your comments about my falling for a ‘charismatic speech’ is ridiculous…”

    I invite you to refresh your memory with this link to your remarks from November 2009.

    http://tinyurl.com/46vr4ue

    In this blog post you noted:

    “I have long been opposed to changing US patent law from a first to invent system to a first to file system. Yesterday I changed my mind on this…”

    And what was it that led to this conversion?

    “…yesterday … [I] had an opportunity to hear Patent Office Director David Kappos address the attendees during a lunch speech and then again during the reception at the end of the day. … Director Kappos [advocated] patent reform, and in particular those issues that may be seen by some as difficult to swallow in the independent inventor community. … I think he even persuaded some in the audience, one of whom was me.”

    So, Gene, what was it that led you to “get religion” on first-to-file?

    “…I came to this belief after listening to Director Kappos, who made as persuasive a case as I have ever heard…”

    Oh.

    So in the span of one day, you had an about-face on an important issue. The intervening event was an oral rhetoric you attended, and you credited this rhetoric for helping you “come to this belief”. But there was something, else, too. There was your personal one-on-one time with Kappos, in which he buttered you up with compliments. How could you help but be starstruck?:

    “When I listen to Kappos he comes across as sincere, extremely knowledgeable and very interested in the success of the Patent Office and the US patent system. He cares, he certainly knows the industry and he is forging ahead to make things better, which is an enormously refreshing change. On top of that, he is receptive to ideas. In the few moments I spoke with him yesterday at the reception he told me to keep writing and to not shy away from pointing out when the Office was doing something I didn’t agree with. I certainly will do that, but as I told him agree with what the Office is doing.”

    Frankly, I don’t care how you came to your belief about first-to-file–it’s a wrong belief no matter how you came to it. The fact that you came to it after a single speech by the former chief patent counsel of IBM, an organization that lobbied heavily for this legislation and is one of the handful of companies that would especially benefit by it, only makes your conversion incredible. You did seem to have at least an inkling of moral reservation when you concluded: “Maybe I am drinking the Kool-Aid…”

    “Why is it so hard to accept that the data overwhelmingly and convincingly demonstrates we already have a first to file system in effect?”

    Because the bill would legislate the elimination of swear-behind affidavits and interferences. These are real and important aspects of our system. Your reasoning denies they exist at all, or that any inventor rightfully benefits by them.

    “What is wrong with changing your views in the face of extraordinary evidence?”

    What Kappos presented wasn’t “evidence.” It was lobbying, plain and simple. On many issues, I support what Kappos has done. On the issue of patent reform, he is still carrying out the work of IBM from within a government position.

  10. New Here March 1, 2011 11:00 pm

    “USPTO Director David Kappos. Louis hit on two big issues for innovators. First, the speed of application processing. On this point he explained: “With technology advancing as rapidly as it does today, your invention may not even be relevant by the time the patent actually issues.”

    Second, the fear that after investing in a patented invention prior art will surface and take your rights away. ”

    On the first, I have to say, that happens to all that are advancing technology, not just those that patent. This is in my opinion, a sad problem for those that do not patent. That the US patent office seems it doesn’t see those non-patenting as advancing technology — as those patenting are claimed to do.

    For the second, is claiming something a patent applicant doesn’t have. Prior art if shown not to exist at the time a patent application was accepted, would be a good argument to make for “rights”. However, art, prior or not, is an on-going Human activity that cannot be placed into any fixed time frame for making a case for “rights”. This applies to all, those that do not patent as well those that do.

    Thanks.

  11. Patent Litigation March 3, 2011 12:01 am

    Here is a similar story

    Everyone has their image of the inventor: could be Ben Franklin with a kite, the Wright brothers on Kitty Hawk, or a Research Triangle scientist in a lab coat. As the executive producer of “Everyday Edisons” and publisher of Inventors Digest, I see the common thread among inventors as their dedication and search for the next big idea. Some efforts bear fruit, while others falter. However, what ensures the continuity of their efforts are the legal protections afforded under U.S. patent law.