Senate approves legislation reforming US patent system

The US Senate Thursday voted 89-9 to approve legislation to amend the US patent system for the first time since 1952.

The America Invents Act (HR 1249), sponsored by congressman Lamar Smith (R), proposes significant changes to the current US patent system.

One of these would result in the conversion from a system of "first to invent" to a system of "first to file", a change which Congress supports because of its belief that it will "promote the progress of science" as well as promote the "harmonization" of the US patent system with those used in nearly all other countries.

Additionally, the Act would alter the way funds are allocated to the Patent Office and the way patents that are granted, but later contested, are handled in an attempt to cut down on costly legal disputes.

The US House of Representatives approved the bill in June. The bill will proceed to president Barack Obama, who has indicated that he will sign it into law.

There have been several significant legal decisions in patent law in the last few months.

In June, the US Supreme Court unanimously ruled against Microsoft, holding that a patent will be invalidated only if the challenging party meets the "clear and convincing evidence" standard.

The court also held in a separate decision that the Bayh-Doyle Act (35 USC §§ 200-212), which vests patent rights to universities for inventions from federally funded research, did not give Stanford University superior rights to the invention of its employee and thus, the employee could transfer his invention rights to a third party.

In May, the Supreme Court ruled that induced patent infringement requires knowledge that the induced acts constitute patent infringement.

Also in May, the US Court of Appeals for the Federal Circuit restricted the use of the "inequitable conduct" defense for invalidating patents.

(Published by Jurist.org - September 10, 2011)