Changes in Patent Law

There has been a change in the Patent Law, and it is a sea state change. As Science states:

The biggest change will bring the U.S. patent process into line with that of other industrialized nations. Most use “first to file” patent systems, which issue patents to the first inventor to file a valid application. In contrast, the United States has had a “first to invent” system, which awards patents to inventors who can prove they were the first to make a discovery, regardless of when they filed their application.  

This is the most important change in many ways. It takes away the first to invent and the battle as to who had what note book at what time. It removes the old way and potentially allows large entities to have massive filings, rush to the Patent Office, and pile up the IP base. Is this good or bad, it is one of those issues where there is on the one hand and on the other.

Science goes on:

To protect U.S. research traditions, the new law contains “safe harbor” provisions that give researchers who receive federal or university funds a year to decide whether to pursue a patent after publishing a paper or discussing a discovery at a scientific conference. These researchers will also have the opportunity to file temporary “provisional” patent applications that protect a discovery while companies decide whether it is worth pursuing a full-blown application. 

 Universities have become more and more bastions of Patent Packages, some doing well and others not as well. Stanford seems to have one of the best and as I hear from others MIT one of the poorer effectors of the distribution of patent licensing.

Science then discusses the prior use issue:

Particularly troubling ... is language that expands “prior user rights.” Those come into play if one company patents a new technology or process, but it turns out that a second company was already using it as a “trade secret.” The new law is intended to prevent the “prior user” from being forced to pay royalties to the owner of the new patent—a change long sought by the electronics industry. Yet prior-user rights could create “a powerful disincentive” to publishing research results, ... sharing key information could tip competitors on how to create “a competing trade secret product” that would be safe from lawsuits. To prevent that scenario, the final legislation bars companies from using a prior-rights defense against academic patents produced under the 1-year grace period or that are the products of federally funded research.  prior-user rights “essentially give trade-secret holders a free ride on somebody else's patent.”  ...the law could create “disincentives for collaboration and open communication.” 

These are three of the elements; first to file, one year window and prior use. It will be interesting to see whether this has a positive or negative effect.