Senate Patent Reform Bill on First-To-File

The 106-page draft report of the Senate Judiciary Committee on the Patent Reform Act of 2007 (S. 1145) describes how Section 2 of the proposed bill will convert the United States’ patent system into a first-inventor-to-file system, giving priority to the earlier-filed application for a claimed invention. Interference proceedings would be replaced with a derivation proceeding to determine whether the applicant of an earlier-filed application was the proper applicant for the claimed invention. This section also provides for a grace period for inventors publicly disclosing the subject matter of the claimed invention, without losing priority, and repeals 35 U.S.C. §104 (Inventions Made Abroad).

According to the Section-By-Section Summary of the Bill:

A patent shall not issue for a claimed invention if the invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public (A) more than a year before the filing date, or (B) anytime prior to the filing date if not through disclosure by the inventor or joint inventor, or by others who obtained the subject matter, directly or indirectly, from the inventor or joint inventor. A one-year grace period is provided for an inventor or joint inventor that discloses the subject matter of the claimed invention.

Subject matter that would otherwise qualify as prior art under (a)(1)(B) shall not be prior art if the subject matter had, before such disclosure, been publicly disclosed by the inventor, joint inventor, or others who obtained the subject matter from the inventor/joint inventor. Subject matter that would otherwise qualify as prior art under (a)(2) shall not be prior art if (A) the subject matter was obtained directly or indirectly from the inventor or joint inventor, (B) the subject matter had been previously disclosed by the inventor or a joint inventor or others who obtained the subject matter, directly or indirectly, from the inventor or a joint inventor, or (C) prior to the effective filing date, the subject matter and the claimed invention was owned by the same person or subject to an obligation of assignment to the same person.

The CREATE Act is preserved by including an exception for subject matter of a claimed invention made by parties to a joint research agreement.

Interference proceedings would be eliminated and 35 U.S.C. §135(a) would be amended provide for a “derivation proceeding,” designed to determine the inventor with the right to file an application on a claimed invention. An applicant requesting a derivation proceeding must set forth the basis for finding that an earlier applicant derived the claimed invention and without authorization filed an application claiming such invention. The request must be filed within 12 months of the date of first publication of an application for a claim that is substantially the same as the claimed invention. The Patent Trial and Appeal Board (the “Board”) shall determine the right to patent and issue a final decision thereon. Decisions of the Board may be appealed to the Federal Circuit, or to district court pursuant to § 146.

In the February 2, 2008 issue of IP Today, intereference expert Chico Gholz will explain and discuss five issues that he feels are still not satisfactorily addressed by any of the various competing versions of the patent reform legislation:

1. inventorship disputes among former colleagues,
2. interfering cases naming the same inventive entity but filed by different parties,
3. interleaving priorities,
4. allegedly improvidently issued patents, and
5. cases naming different inventive entities but having the same filing date.