House votes for changes

Ah well, not unexpectedly the House voted Friday to pass the patent "reform" legislation before it. I guess it will up to the Senate to throttle back the most questionable portions of the law. According to Greg Aharonian's Internet Patent News Service one of the provisions is that you/we, as patent applicants, must now "submit a search report and other information and
analysis relevant to patentability. An application shall be regarded as ABANDONED if the applicant fails to submit the required search report, information, and ANALYSIS in the manner and within the time period prescribed by the Director." [Greg's emphasis]

Up to now you were not forced to prepare a search report of any sort, never mind one in which an analysis was required. I always urge my clients to do at least a first cut prior art search so they don't waste their time and money preparing a patent application which is easily shown to be obvious or anticipated and to submit any findings to the PTO under the duty of candor.

What we don't need is to be forced to do an "analysis in a manner prescribed" by the PTO. Certainly, all submitted reports will say the invention is NOT anticipated or obvious; who would waste their time submitting an application along with a document that says "I think this invention is not patentable". So, okay, maybe this process reduces the PTO load by some factor by eliminating the real crap patent applications.

BUT what happens in all the rest of the cases. Does the PTO accept our analysis? No. Surely the PTO is not going to grant us patents based on OUR analysis. So what happens our analysis is judged "wrong" by the PTO. Isn't that potentially inequitable conduct - just like failing to live up to the duty of candor today? What happens if we miss some prior art that the PTO finds - is it an honest mistake or an attempt to pull the wool over the eyes of the PTO.

This requirement is not just an additional expense for the patentee (bad for the small company for sure) but also allows the PTO to disallow your patent on purely procedural grounds (instead of on the merits) and is clearly a purely arbitrary standard (how long is a piece of string?)

Slow-mo rush to problems

Tomorrow the House is scheduled to vote on a package of IP law "reforms". Although the bill has been pending or at least kicking around for a long time, it is being rushed to a vote in spite of (or perhaps because of) the general feeling that it is significantly flawed. Some people think the sponsors are pushing to a vote as a way to evade the growing chorus of complaints.

Although time is short, you might want to email your congressman and ask for a vote against the bill as it is currently written.

Some of the particular sticky points in the bill are:

• The Applicant Quality Submission (AQS) requirement would make applicants provide a search report of all relevant patent and non-patent literature.


• The bill would reduce or eliminate any enforceability of the existing "duty of candor" requirement.


• The bill would remove the Best Mode Requirement diminishing the
  worth of the U.S. patent system by eliminating the quid pro quo of the patent system, which is based on full disclosure of inventions to the American people in exchange for granting exclusive rights to the inventor for a limited time.


• We would move to a First Inventor to File rule. While bringing us in line with the rest of the world, it also "urges" inventors to invest in their patent applications earlier, perhaps causing budget problems for small entities.


• An Apportionment of Damages provision would limit damages for an infringer and might thereby undermine patents and encourage infringement.