Although the Senate and House versions of the Patent Reform Act of 2007 (S.1145 and H.R.1908, respectfully) may not find their way into a compromise bill that lands on the President's desk in 2007, the bills provide a glimpse into what the final legislation may look like. For example, the new law will apparently contain substantial changes to section 102--Conditions for Patentability; Novelty--in order to implement the much-debated "first to file" system of granting patents.
Not everything will change, however. A new section 102(a)(1)(A) of the law, which may look like the identical versions introduced in the Senate and House, could include some familiar provisions:
"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(A) more than one year before the effective filing date of the claimed invention"
That provision looks like the tried and true absolute novelty bar that patent practitioners are accustomed to (note the familiar one-year grace period).
Section 102(a)(1)(B) of the law, however, could be completely new:
"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(B) one year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"
Under that new provision, it would appear that an inventor, for example, who publishes an article about his/her invention that is later claimed in a patent application (filed less than a year later) would not be barred under 102(a)(1)(B) from obtaining a patent (the article's publisher, or the inventor's employee who publishes information about the invention on its web site, would apparently be covered by the "others who obtained the subject matter..." language).
Section 102(a)(1)(B) apparently would not allow an inventor to remove as prior art a printed publication of his/her invention made by a third party. However, new section 102(b), could provide an exception to that prior art problem:
"(b) Exceptions-(1) PRIOR INVENTOR DISCLOSURE EXCEPTION- Subject matter that would otherwise qualify as prior art under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before the applicable date under such subparagraph (B), been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor, joint inventor, or applicant." (emphasis added)
A new section 102(a)(2) of the law may look like the following, if enacted in its current form:
"(a) A patent for a claimed invention may not be obtained if--(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."
This new provision would appear to grant rights to the first person to file a patent application for a claimed invention (i.e., a "first to file" system). The provision must be read in light of a new definition for "effective filing date," which may be included in a new section 101(h) of the law:
"(h) The `effective filing date of a claimed invention' is--(1) the filing date of the patent or the application for patent containing the claim to the invention; or (2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112."
Comments:
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Why, after more than a century of granting patents under a "first to file" system, is Congress now looking at changing the way in which priority of invention is granted in the U.S.? There is plenty of debate about the reasons for change and its timing. Arguably, a first-to-file system would strengthen U.S. patent rights globally by harmonizing the U.S. system with the rest of the world that has already adopted "first to file" patent systems.
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While the complexity of section 102 may be reduced in the new law, the new provisions shown above will obviously need to be fully vetted in the courts before their full reach and impact will be appreciated.
