Sign in with
Sign up | Sign in

Obama Signs Dramatic U.S. Patent Reform Into Law

By - Source: Tom's Hardware US | B 49 comments

The America Invents Act brings US patent law in line with the rest of the world

Today, President Obama signed the America Invents Act into law, formally bringing an end to more than two centuries of American patent law. Once the law takes effect, the "first to invent" standard previously used to determine patent ownership - roughly put, the person who can demonstrate by combination of conception and attempt to put their concept into practice is likely to be declared patent holder in the event of a filing conflict - will be replaced by a version of the "first to file" system favored by every other nation on earth. In a "first to file" system, priority of deciding who owns an invention's patent goes to the first person or entity to file for the patent, regardless of the date of invention.

The chief advantage advanced in favor of a first to file system is that it would reduce the number of patent disputes and enable businesses in the U.S. and abroad to interact on similar legal ground. Detractors of the system contend that it essentially skews the business environment in favor of large corporations, at the expense of individual entrepreneurs and small startup companies. Indeed, when Canada switched to a first to file system in 1989, a later study found a small but measurable adverse effect on smaller inventors.

In addition to the change in the standard of determining patent ownership, the bill also makes some significant changes to the process of filing a patent claim itself. For instance, an entity, such as a corporation, may now file a patent application on behalf of the actual inventor, if said inventor has assigned, or is contractually obliged to assign, the invention rights over to that entity, without requiring that the inventor's execution of the application. This essentially removes the burden of proof from a company for whom the inventor works, and places it on the inventor him or herself.  However, the new law also expands some opposition procedures, including a post-grant review and expanded discovery.

It has been widely suggested that the new law could be contested on constitutional grounds. Article One, Section 8, clause 8 (AKA the 'copyright clause') of the U.S. Constitution empowers congress to pass laws in order "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." A "first to file" system seems to run afoul of the constitutional concept of invention, and the new law is almost certain to be challenged in the courts. 

How the current Supreme Court would rule is a matter of speculation, though the 2003 upholding of the Sonny Bono Copyright Extension Act is probably a clue. Though many of the law's provisions go into effect immediately, the switch from a "first to invent" to a "first to file" system doesn't happen until March 16, 2012. The official White House statement on the new law is available online. A discussion of the portions of the law that go into effect immediately can be found at IP Watch.

Discuss
Display all 49 comments.
This thread is closed for comments
Top Comments
  • 28 Hide
    Anonymous , September 16, 2011 11:13 PM
    Patents stopped protecting small inventors a long time ago. Now they protect large companies like Intel and Microsoft from competition because they sue small companies out of existence before they ever get big enough to compete.

    *in before the conservatives start acting like one of their candidates would've bent over less for the big corporations*
  • 23 Hide
    bustapr , September 17, 2011 12:14 AM
    I was hoping theyd do something to prevent stupid illogical general idea patent filings.
  • 21 Hide
    Ridik876 , September 16, 2011 11:09 PM
    TL;DR - Frivolous lawsuits will continue.
Other Comments
  • 21 Hide
    Ridik876 , September 16, 2011 11:09 PM
    TL;DR - Frivolous lawsuits will continue.
  • 28 Hide
    Anonymous , September 16, 2011 11:13 PM
    Patents stopped protecting small inventors a long time ago. Now they protect large companies like Intel and Microsoft from competition because they sue small companies out of existence before they ever get big enough to compete.

    *in before the conservatives start acting like one of their candidates would've bent over less for the big corporations*
  • 2 Hide
    jonyb222 , September 16, 2011 11:13 PM
    Won't this promote a "File and forget it" approach?

    On a side note it probably won't as it's what the rest of the world is doing but it *sounds* like it would

    *edit, I had a longer text, shortened it*
  • -7 Hide
    mightymaxio , September 16, 2011 11:18 PM
    Oh gawd its gonna turn into the European union lawsuits all over again.
  • 16 Hide
    LORD_ORION , September 16, 2011 11:45 PM
    What a surprise

    Cloud + New Patent Law = Corporations always win.

    I can see it already where the likes of google or MS snoop on your content you are paying them to host, and then patent it themselves.
  • 10 Hide
    user_ace , September 16, 2011 11:47 PM
    i guess this will finally force me to patent that automatic toilet paper dispenser i invented in high school... where did i leave those blue prints?
  • 14 Hide
    mattmock , September 17, 2011 12:03 AM
    This system may work in other countries, but when you combine it with other aspects of U.S. patent law it could be a disaster. In the U.S. you can get patents on a huge diversity of things including business plans and on very simple things. This leads to patents on things like "Selling things on website using a checkout button" and "Entering a name into a Videogame." The first to invent system acted to prevent some of these ridiculous patents by allowing them to be invalidated by showing how the idea was already in use Now the first smart-ass to file for some common action described in fancy language will get to patent troll everyone else.
  • 23 Hide
    bustapr , September 17, 2011 12:14 AM
    I was hoping theyd do something to prevent stupid illogical general idea patent filings.
  • 12 Hide
    stevo777 , September 17, 2011 12:32 AM
    "Detractors of the system contend that it essentially skews the business environment in favor of large corporations, at the expense of individual entrepreneurs and small startup companies."

    Yeah, detractors like pretty much every individual entrepreneur and small startup company.
  • 5 Hide
    bak0n , September 17, 2011 1:13 AM
    Why does it matter? It's not like China following any IP law from the states if it'll make them money.
  • 5 Hide
    beenthere , September 17, 2011 2:19 AM
    In principle good, in practice this will be a disaster for small guys.
  • 14 Hide
    sykozis , September 17, 2011 4:10 AM
    How exactly has the US had a "First to Invent" style patent system? The "First to Invent" system would actually require the company to "invent" something at some point. Apple hasn't actually invented anything, but holds countless "proof of concept" patents...which don't require them to ever actually make use of said patents.
  • -8 Hide
    shin0bi272 , September 17, 2011 4:35 AM
    just another step towards total government control. Now the government will have to step in to stop disputes when big companies file a patent that they can afford to file for that they saw someone else invent but didnt have the money to patent (like me if they ever catch wind of my ideas). Then the next step is that the government will take over the patent process and then its a short hop to the government will confiscate for a period of years to collect the revenue it generates so they can spend it on giving money away to people who didnt work for it.
  • 5 Hide
    einheriar , September 17, 2011 4:41 AM
    MattMockThis system may work in other countries, but when you combine it with other aspects of U.S. patent law it could be a disaster. In the U.S. you can get patents on a huge diversity of things including business plans and on very simple things. This leads to patents on things like "Selling things on website using a checkout button" and "Entering a name into a Videogame." The first to invent system acted to prevent some of these ridiculous patents by allowing them to be invalidated by showing how the idea was already in use Now the first smart-ass to file for some common action described in fancy language will get to patent troll everyone else.



    Well it depends on how you look at it.. In european patent law yiou can go about claiming every piece of written software code- So the amount of software patents is fortunately low in comparison to the usa. In europe most software development falls under the text copywrite protection. As they say software is more like a written novel than a real invention. That is why courtcase about software patents take place in the usa, where they allow every bit of crap to be filed as a patent and this givng companies like microsoft and apple a way to sue their competion into oblivion or handing the rights over to their respective software Borg collective.
  • -2 Hide
    einheriar , September 17, 2011 4:44 AM
    shin0bi272just another step towards total government control. Now the government will have to step in to stop disputes when big companies file a patent that they can afford to file for that they saw someone else invent but didnt have the money to patent (like me if they ever catch wind of my ideas). Then the next step is that the government will take over the patent process and then its a short hop to the government will confiscate for a period of years to collect the revenue it generates so they can spend it on giving money away to people who didnt work for it.


    An amazing view especially because if tehir is one country in the world in controk by multinationals it is the USA.. And you expect it this way to become even worse?
  • 1 Hide
    madjimms , September 17, 2011 6:23 AM
    Guys, before you get all whiny & bitchy please note that he could be trying to make the patent system less corporate oriented. All the conservatives complain no matter what he does, good or bad!
  • -1 Hide
    azgard , September 17, 2011 6:43 AM
    MattMockThis system may work in other countries, but when you combine it with other aspects of U.S. patent law it could be a disaster. In the U.S. you can get patents on a huge diversity of things including business plans and on very simple things. This leads to patents on things like "Selling things on website using a checkout button" and "Entering a name into a Videogame." The first to invent system acted to prevent some of these ridiculous patents by allowing them to be invalidated by showing how the idea was already in use Now the first smart-ass to file for some common action described in fancy language will get to patent troll everyone else.


    Um, prior art would apply just as it always had.
  • 0 Hide
    xrodney , September 17, 2011 6:53 AM
    So generally this make current stupid patent system twice even worse.

    Unless they change rules on who can be patented and on which basis this will only bring disaster to real inventors.

    Of course it will make happy any patent troll.
  • -2 Hide
    SteelCity1981 , September 17, 2011 7:58 AM
    so now i can just patent an idea by drawing it up on a pice of notbook paper and never put it to use and no one can do anything about it? Wow lets just make the patent laws more moronic...
  • -4 Hide
    caparc , September 17, 2011 8:41 AM
    How does this change the definition of "proir art"? I've done some inventing, got a patent, even made a bit of money on my idea manufacturing it myself although I can't say, to this day, that the patent was worth the money because I kept my market by being first, best and disciplined on price. Filing a patent is expensive for garage inventors. It's a safe bet that from the time you start working with a concept until it's perfected enough to make patent claims is going to be a year plus. Does this push inventors to be even more secretive than they already are? The need to hide invention work is a burden on development for a variety of reasons.

    Copyright and patent protection are crucial to western civilization. Traditional islamic law is hostile to both. How much literature or technology do nations with that legal tradition produce lately?
Display more comments