Partner Andrew Langsam Speaks to Intellectual Property Magazine About Overhaul of U.S. Patent System
Partner Andrew Langsam, Chair of Pryor Cashman’s Patent Group, was quoted extensively in an April 5, 2011 article in Intellectual Property Magazine entitled “Reforming the US patent system.” The article by Khurram Aziz discusses the Senate’s recent 95-5 decision to approve the America Invents Act and significantly overhaul the United States patent system.
Notably, the bill will change the granting of U.S. patents from “first-to-invent” to “first-to-file.” Dating back to 1836, the U.S. has operated a first-to-invent system for granting patents. This means, unlike most other countries, the person entitled to a patent on an invention is not the first person to actually file an application, but rather the first person who actually conceived of the idea for the invention.
Under the new system, conceiving of the idea will not be enough to secure a patent right. The new bill now gives the patent right to whoever actually files an application with the U.S. Patent and Trademark Office (USPTO); consequentially changing the granting of U.S. patents from “first-to-invent” to “first-to-file”.
Priority contests – the process of determining who the first true inventor based on conception is – are costly to litigate. Langsam notes that the priority contest provides a risk to everyone. “I don't know that it will inspire entrepreneurship or innovation as much as it will inspire people with inventions to protect them earlier than they would otherwise. But it will inspire innovation and invention and protection of them because people will know much more with certainty who is entitled to the invention earlier on,” he says.
In addition to the “first-to-file” provision, the Act provides a provision assisting the USPTO with its increasing patent backlog, amounting to around 700,000 patent applications. “The problem is for years, the fees the patent office charges for each and every patent application filed, a filing fee, a search fee and an examination fee – with all that money coming in you'd think they'd be on time with examining a lot of applications. But the reality is, and one of the significant parts of this new law, is that all of the money that the patent office made went into the general treasury and it was not maintained or kept by the patent office for its own employees and updates,” explains Langsam. “Now, under the new patent statute which might become law and is likely to, the patent office is going to keep its own money and therefore it can hire many more examiners and it can get up-to-date with the backlog.”
To read the entire article discussing The America Invents Act, please click here.
