Patent Reform Heats Up

Article excerpt

Legal Issues

I published a two-part article on legal trends in patent law in the April and May issues of Information Today. The articles explained some concerns and controversies about the patent process, both within and outside the information community. Those concerns have focused on the increasing number of patents that have been issued to cover the Internet and its related technologies and business methods. Many of these patents seem to cover existing technologies or practices, such as search engines, online test-taking, and e-mail relay software.

There has been a dramatic rise in patents issued by the U.S. Patent and Trademark Office (PTO; http://www .uspto.gov), particularly in technology-related areas. Patent statistics show that the number of software, technology, and technology-related business practices patents awarded by the PTO has more than doubled in the past 6 years. The number of patents issued in the Data Processing: Database and File Management field has quadrupled. While patents serve a useful purpose in providing incentive for development, they also "lock up" a particular technology, limiting development to the patent owner. Too many of these locks can hamper the broader growth of technology.

Restructuring the Patent Process

Congress appears to be taking these concerns to heart. In April, a patent reform proposal that generated significant interest among business, technology, and software interests was the subject of two hearings before the House Subcommittee on Courts, the Internet, and Intellectual Property. On April 14, a draft bill that would dramatically restructure the patent process was released (http:// judiciary.house.gov/media/ pdfs/comprint042005.pdf); it is receiving widespread attention.

The proposed legislation-which, as of this writing, has not yet been formally introduced-outlines reforms intended to clarify and speed up the patent-granting process and to improve post-patent review. This is a critical step in ensuring that only new and novel inventions and business methods would receive patents. Additional reforms would also serve to harmonize U.S. patent law with international patent practices. A more controversial reform would change the standard for receiving an injunction to prevent the harm caused by patent infringement.

First to File

Witnesses at the April hearings strongly favored changing the current procedure of awarding patents. Instead of giving the patent to the first person to invent, the proposed system would award the patent to the first person to file. This may seem backward-shouldn't the inventor have the patent?

In practice, it is not uncommon for developers, working independently, to come up with the same invention. The "first to invent" procedure creates severe proof problems and delays in the patent process, whereas the "first to file" procedure is simple and straightforward. It is also the method used by most other major patent-granting countries, including Japan and the EU. Making this change would increase cooperation and coordination in the global patent community.

A second major change would involve creating an additional administrative process to challenge patents after they have been granted. This is at the core of recent concerns about patents being granted for inventions or business methods that are not actually new. A challenge now must be made in the federal courts-a time-consuming and expensive ordeal. …