back to article US patent reform jumps through second hoop

The US House of Representatives has passed a patent-reform bill that supporters say will boost the development of American politicians' favorite four-letter word: jobs. "The Patent Reform Act is a key part of any jobs agenda," argues the bill's Senate sponsor, Patrick Leahy (Dem-VT). "We can help unleash innovation and promote …


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  1. Anonymous Coward
    Paris Hilton


    I'm going to need someone to point out why moving from "invented first" to "filed first" is a good thing?

    Surely that simply means that if you are 'attacked' by an aggressive litigator, showing prior art (even if it was work you did) stops being possible?

    Might be missing the point here, but it doesn't read like a good change to me. If anything it makes things worse, because it puts people in the position of "wow, I invented this but I _have_ to patent it otherwise someone else might file first and sue me for my own invention"

    Anyone care to clarify?

    Anon cos I'm ill and am quite possibly missing the obvious.

    Paris cos I'm ill and need the boost!

    1. Anonymous Coward
      Thumb Up

      Same here

      First thing I thought when I started reading.

      It sounds like they are looking to kill off prior art invalidations of obvious patents, but perhaps the author has mis-quoted the intent.

      1. Kevin Hutchinson

        "Invented first" versus "filed first"

        Here's some more details about the change:

        Neither "invented first" nor "filed first" invalidate the defense of prior art. If it can be shown that there was prior art available before the invention, then the invention may still be invalidated. This just relates to a change of ownership of inventions that are files late.

    2. Eugene Crosser

      Why "good thing"

      > I'm going to need someone to point out why moving from "invented first" to "filed first" is a good thing?

      I think that it's because it makes the system more predictable, even if less "fair". CEOs love predictable much more than fair.

      As to prior art, it is my understanding (IANAL) that you will still be able to successfully argue that other people where doing it long ago, and have the patent invalidated. What you won't be able to do is to come with evidence that you've invented the same thing a month earlier than they and seize their patent to yourself on that grounds.

    3. Anonymous Coward


      This is about who gets the patent if two people both claim to have "invented" the same thing at about the same time. Under the old system, the person who invented first gets the patent. That (allegedly) is hard to determine, and both inventors have a strong incentive to lie about when they invented it. Under the new system, the first to file gets it, which is trivial to determine.

      If you invent something and don't patent it, but you publish or use or sell your invention in public in the US, then that will still count as "prior art" and you can still get the patent invalidated. So long as you have a million dollars to spend on lawyers fees.

      1. Chemist

        "Invented first" is a pain

        It means having to document everything you do AND get someone else outside your immediate project to witness that you've done it AND that they understand what you've done. In drug research it can mean someone signing and understanding EVERY page of a lab notebook.

      2. Ken Hagan Gold badge

        Re: Lawsuits

        "This is about who gets the patent if two people both claim to have "invented" the same thing at about the same time."

        Since the benefit to society in granting a monopoly (patent) is that inventions happen which would not otherwise, the *correct* resolution of this grey area is that neither inventor should be granted a monopoly. since *demonstrably* the invention is not non-obvious to those skilled in the art.

        1. Wesley

          A patent is NOT a monopoly !!!

          A patent is the "right to exclude" others from practicing the "claimed" invention. There is not statutory damages akin to copyright infringement: the inventor must assert his rights and wins about 50% of the time. A coin-flip. To the author of this absurd article, I say, go invent something and stop crying! The Founding Fathers rejected the British concept of privilege accorded to persons w access to power. First To Invent is the most successful industrial policy ever devised. Else, where is all the job creation in all countries besides the US & Philipines that correctly attribute a novel &

          nonobvious "invention" to the Inventor. Clear as day in the US Constitution. As an Inventor w 60 plus patents, I find the argument that patent reform is overdue to be another ridiculous assertion by folks who are uninformed. The US has created more jobs & industries than any other over the past 220 years, under a First To Invent system. The Patent Act of 1952 was 20 plus pages long - a codification of patent case law! #AmericaInventsAct is a sham! A handout to marginally "American" companies & foreign lobbyists that want to stop the innovative class of Americans that has far out-innovated ALL others, warts and all - yeah, even Lemelson - bar NONE. Oh, by the way, does Yhe Register give it's copyrights and trade dress away to others? How many jobs do copyright holders create over the term (what 75 years) of it's own intellectual property? Yeah. That's what I thought. America, all of it, suffers with this bloated crap. There's always trade secrets ...

    4. Charles Manning

      Good and bad


      * Like the rest of the world. Having one rule to determine patent precedence is important.

      * Can't be fiddled by creating bogus claims of inventing it earlier.


      * Bigger rush to generate patents. Perhaps more people will file crappier patents. However you can file for a provisional patent which gives you more time.

      Other points:

      * A patent still has to be novel. If you can show prior art then you can still get a patent overturned. That prevents anyone from seeing your idea and patenting it and suing you for using the idea.

      * Any changes to the system have to get past the USPTO and the patent industry at large. Since they primarily have their own interests t heart you can be assured there will be more patents and patent litigation than there was in the past.

      * The new rules are

  2. Yet Another Anonymous coward Silver badge

    Invent first doesn't cause trolls

    Invent first is reckoned to help big companies.

    Challenging somebody else patent to show that it was already known is easy, you just have to show that is was published somewhere in the past - even a 60year old Disney cartoon will do.

    Challenging a patent and getting one granted to you because you invented it first is tricky. It requires that you an prove when you invented it and that you didn't let anyone else know. That usually takes lab note books signed off by company lawyers and audited trails fro all emails/documents - easier for IBM than one man in a garage.

    Trolls are caused by the USPTO allowing patents on very broad methods and allowing the patent holder to shop around for a favourable court district to try it in.

    1. Alan Firminger

      It needs to be said

      A patent is awarded to 'the true and first inventor' .

    2. Oninoshiko


      the description signed off by a notary is all you really need. "didn't let anyone else know" also wouldn't be required. You might have to establish that it wasn't part of a work for hire though.

      the development process isn't so much relevant, as long as you establish that you invented it first.

      1. LateNightLarry


        As a Notary Public, I'm not sure notaries could sign off on something in the way you're proposing... At least in California, notaries cannot certifiy the content of documents, only the identity and signature of the document signer. The only possible way, and I'm not sure even this would be valid, is through a Copy Certification by Document Custodian... That is, the notary verifies the identify of the document custodian, who completes the copy certification form stating that the attached document is a "true and correct copy" The notary does not sign off on the validity of the document, just the identity of the custodian. Check with a lawyer before you try something like this.

    3. LateNightLarry

      Invent first doesn't cause trolls

      <<<Trolls are caused by the USPTO allowing patents on very broad methods and allowing the patent holder to shop around for a favourable court district to try it in.>>>

      IANAL, but ...

      There's one very easy way to stop court shopping... require that ALL patent (and copyright) challenges be filed in a newly established US Patent and Copyright Court in Washington, DC, then have a group of judges whose only job is to hear patent cases... the patent court judges should theoretically have some expertise in IT issues. Any patent case filed in another jurisdiction would be automatically either transferred to the US Patent and Copyright Court, or if the entity filing refused such transfer, the case dismissed with prejudice so that it couldn't be refiled. It would probably be a very busy court for a few years, then after all the troll cases are cleared, should slow down.

      Nuclear explosion because it change the rules of the game entirely for patent trolls.

  3. raving angry loony

    jobs all right...

    the only jobs that are going to be boosted by this festering pile of shite is the number of lawyers that are going to be able to suck even more money away from actual innovation.

  4. Old Handle

    As far as I can tell...

    This is an absolutely horrible idea. It's possible there are technicalities I don't fully understand here, but I thought prior art was one of the few defenses available against patent trolls. If that's not allowed anymore, won't we get even more crap patents flooding the system?

    1. sandholme

      Prior art

      It won't stop prior art invalidating a patent that's a completely separate issue. Prior art has to be published so if only you kept your invention a secret (which pretty much means you can't use it) would you lose out. if someone else also invented it. If you don't want someone else to patent it then print it in some oscure publication (though there may be rules around how obsure)

      1. Old Handle


        Well as quick as I was to assume the worst, that does make more sense. I wish this article (and the last one I read) had explained that a little more clearly.

      2. Chemist

        Re : Prior Art

        It doesn't stop prior art invalidating a patent.

  5. kissingthecarpet

    Still no end in sight then

    to the insanity of Software Patents. It just makes me despair every time I read about some new patent troll claiming they invented "Boolean algebra" or "selling stuff online" or "breathing" or some such idiocy. The current Oracle/Google spat is a case in point. Oracle are claiming a huge number of infringements & loads of them have been thrown out, including stuff from old CS textbooks etc. What a joke.

    1. Yes Me Silver badge

      what insanity of Software Patents?

      The real problem isn't software patents. If an invention is new, who cares whether it's built using hardware, firmware, software, or a combination?

      The problem is crap patents - things that appear trivial or obvious to anybody except a patent examiner. What can be done to reduce the number of patents awarded for crap ideas? IMNSHO there are at least ten crap patents for each truly creative one. It's incidental that most of the crap is easier to implement in software.

      1. M Gale

        "who cares whether it's built using hardware, firmware, software, or a combination?"

        Because you might as well try and patent e=mc^2 if you're going to patent software? It's math. Algorithms. Really shouldn't be patentable because they come so thick and fast that allowing them has flooded the USPTO (and other patent offices) with so much gunk that they have no choice but to approve first and worry about it later.

        That and would you really like a world where it's possible to say "e=mc^2. And any usage of that equation shall be chargeable at $5USD per instance, because you're doing it on a computer"? Well, right now, we are living in that world and the constant, ever-increasing sue-balls being thrown around are a symptom of this disease.

        Seriously, software has been copyrightable since the dawn of computing. That's protection enough, but some companies and some lawyers want to have copyright AND patent protection on something that should never have been patentable in the first place.

        1. Yes Me Silver badge

          patent != copyright

          e=mc^2 is not an algorithm; it's an equation that describes an aspect of the Universe. If you like, it's a Platonic ideal, like any other law of Nature. Of course you can't patent it. But an algorithm is an invented method of doing something; so is a crankshaft. The patent on the crankshaft held up James Watt for twenty years when he was first building steam engines, so he had to design a work-around. It's no different from an algorithm - you have to design an alternative solution if you don't want to license the patent.

          Copyright protects the code, not the algorithm. You can get round copyright by recoding (without inspecting the original code), using exactly the same algorithm.

          1. M Gale

            "But an algorithm is an invented method of doing something"

            An algorithm is any iterative mathematical formula that uses its output as part of the input for the next iteration, if you wish to be pedantic.

            It's still math, and allowing software patents has still fucked the system up. So you can put in a whole load of hard work making a different implementation of the same algorithm? Isn't that a good thing? We wouldn't have the PC if software patents had been anywhere near as pervasive in the late 70s/early 80s as they are now. That's a whole industry that's appeared, and all because IBM could copyright but not patent the IBM PC BIOS.

            These days, Compaq would have been dragged into the court and bankrupted by lawyer fees and reparations so fast their collective feet wouldn't have hit the floor until they were dumped on the street without a shirt on the backs. We'd likely still be paying Commodore, Atari or Sinclair ridiculous prices per megabyte for the privilege of a hard disk on our welded-shut and completely incompatible home computers, and the very idea you could install the same software on three different computers from three different competing manufacturers would probably be scoffed at.

            You might consider software patents to be advantageous, but the costs really outweigh the benefits. Just look at the cold war situation the IT industry is in right now, where if you don't have nukes^Wsoftware patents, you might as well bend over and beg the established players to use lube first.

        2. Charles Manning

          Software == maths?

          Saying software is maths and should therefore not be subject to patents is a very broken argument.

          Firstly, that Turing fellow also showed us software is equivalent to a mechanical widget and since mechanical items are patentable, so should software.

          Secondly, the maths argument can be applied to anything. You can mathematically model any mechanical or chemical process.

          It is hard to create a compelling case for software being treated differently.

          The only logical outcome is to either allow software patents or do away with all patents. I'd rather the latter.

    2. Giles Jones Gold badge

      Hedge funds?

      In some ways patents are like the activities of hedge funds.

      Some corporations are buying patents and hoping they can get some return on them. Just like hedge fund bet on the success or failure of investments.

  6. John Smith 19 Gold badge
    Thumb Up

    Trust your con-gressman to want to keep the money.

    Because of course they no *so* many deserving causes for any money the USPTO collects.

    Personally I think this a *mostly* good start.

  7. Mr Young

    Prior art is KING

    Wheels and fire are not patentable? That's my non-existent pension well and truly fucked

  8. Herby Silver badge

    Prior art

    If you do "invent" something and DON'T patent it, the guy who files the patent on your thing needs to know about "prior art". The problem here is that the USPTO thinks that the only prior art is the patents that THEY see. A trade magazine that I read publishes lots of "design ideas" that are cute little things that look neat, but probably aren't worth the effort in filing a patent, much less actually getting a patent. I seriously doubt that the USPTO actually looks at such things, or a modern CS book (or Knuth's series). One can only hope that if the USPTO is given a bit more $$$ they might get some "knowledge" in such subjects.

    All patents can't be like those of Telsa and three phase power!

    1. Hud Dunlap

      Big companies used to do this all of the time

      Back when I was in Engineering School we were taught that companies published ideas all of the time to prevent patents for showing up later. Just because it isn't worth patenting now doesn't mean a technology shift won't make it worthwhile later.

      1. Ken Hagan Gold badge

        Re: used to do this all of the time

        They still do. Most industrially sponsored academic research doesn't lead to ideas that are worth patenting and publication stops anyone else getting a monopoly on the idea if circumstances change a few years down the line.

        Depending on the extent of sponsorship, the sponsor may not even have "first refusal". The benefit to them is simply that the research is done at all.

  9. copsewood

    license to print money

    If the amount of money the patent office gets is based upon the number of applications, it doesn't take much economic analysis to show that the number of applications (i.e. funding) will be proportional to the number of successful applications. This creates a built in incentive for patent officers to grant rather than to refuse patent applications. Given that a patent is a monopoly, this is the same as giving the patent office a license to print money.

    1. Robert Heffernan


      "If the amount of money the patent office gets is based upon the number of applications, it doesn't take much economic analysis to show that the number of applications (i.e. funding) will be proportional to the number of successful applications."

      If they are smart the amount of money the patent office will get is based upon the number of applications filed. If you file for a patent you pay a fee. If the application is rejected you need to amend your application and re-file, paying a new filing fee.

      This in turn will ensure a higher number of rejections because the patent office will get to double-dip the fees.

      As a flow-through effect, if the patent office is looking for any excuse to reject a patent application, more effort will go into researching prior art and obviousness, weeding out the bad patents and making trolling less attractive.

  10. John Tserkezis

    @Prior art is KING

    "Wheels and fire are not patentable? That's my non-existent pension well and truly fucked"

    oh, but they are. Or at least the wheel is.


    This new system won't stop the trolls either. Heck, it isn't even going to slow them down.

    1. Anonymous Coward

      oh, but it will....

      When I patent 'brakes'

  11. Anonymous Coward
    Anonymous Coward


    In the US you'll still be able to patent the blatantly obvious,but you won't even have to actually do any inventing, just fill in paperwork and file it (with a big cheque to the patent office).

    And I thought it couldn't get any worse?

    1. Asgard

      @"And I thought it couldn't get any worse"

      Oh it can get worse. For example, "USPTO to set and collect its own fees".

      At which point the USPTO will also have a vested financial interest in allowing more blatantly obvious and frivolous patents, as the USPTO will then earn more money. That's bad news for common sense. They are allowing too much through already.

  12. MooseNC


    Maybe if a bill was passed that booted Texas (Especially the eastern part) out of the Union, this wouldn't be necessary. Oh, and for an interesting "look" and "patent" Look at OS/2's rounded icon and what Apple is suing for right now. Imagine if IBMs lawyers had balls as big as Apples. We'd all be working on IBM systems right now, listening to a giant screen tell us what to do.. Wait.... Sounds familiar....

    1. Giles Jones Gold badge


      It's not just about rounded icons, it was the number of icons, the packaging design, the look of the phone. One of these elements in isolation would have been forgivable but the whole package just looked like copying.

    2. Wesley
      IT Angle

      IBM receives the highest number of patents in

      ... the US, 19 years running? The director of the USPTO is Kappos, former head of IBM IP. IBM lobbied for patent reform since the recent legislation was first introduced in 2004-05. Oh, and UBM controls the trademark (it is the US Patent & Trademark Office) to "PC" - so, yeah, in some way, shape or form, *you* do pay IBM for it's "intellectual property".

      I once thought free markets were perfect. Then I realized perfect competition leaves no margins & monopolists & duopolists have a really easy time stealing the "Labours of the Mind".

  13. El Cid Campeador

    Real reform needed

    For software patents, require source code--remember that hardware patents required full blueprints precisely so that everyone could know it wasn't BS and so that once it expired anyone could make it.

    As far as this bill is concerned, if P. Leahy likes it it's probably a bad idea :(

    1. Ken Hagan Gold badge

      Re: requiring source code

      Unless someone has "foolishly" removed the requirement that the patent disclosure be sufficient to let anyone else make the invention, source code is already a requirement. However, "novelty" and "non-obviousness" are also mentioned in the various treaties that underpin the global patent system, and we know that courts don't bother themselves with either of those.

      Perhaps the only real change necessary is that courts are instructed in the *basics* of patent law and told to forget everything they've ever learned about its complexities.

  14. Eddy Ito Silver badge

    Like most legislation

    48% mindless drivel, 49.5% political showboating, 2% unenforceable crap and 0.3% valuable legislation that was marginalized by being designed by committee.*

    *value may not add to 100% due to political rounding.

  15. Giles Jones Gold badge

    Penny dropped at last?

    So have they finally realised that too much IP protection equals fewer jobs?

    Patents make sense for the little guy building up a business on some new ideas, but too often it is mega corps suing each other. The recent spat of mobile phone patent wars should be enough proof of the problem.

    It's funny how it took Microsoft being shafted by a patent to trigger the whole process off. It just shows how much influence they have in the US government.

  16. Britt Johnston
    IT Angle

    what is the IT impact?

    So far interesting - do they have concrete proposals to improve IT IP?

  17. James Micallef Silver badge
    Thumb Up

    Patent office financing

    This should be one of the keys to overhauling the system:

    1) charge per patent application not per patent awarded. That way the maximum cash is extracted from big companies filing thousands of bullshit / obvious patents, while real inventors are not priced out of filing on their handful of patents which are really innovative

    2) Set up the bonuses at the patent office to reward patent officers who reject the most patents (as long as there are good grounds to do so, of course). This will automatically eliminate bullshit / obvious patent applications

    3) If any company appeals having its patent rejected, have an even bigger fee to have the same patent re-investigated.

    4) Appealed patents are to be investigated by a different examining team to the original examiner. If the patent is passed on appeal, the original examiner will have their bonuses reduced (This is to prevent officers abusing the bonus scheme that promotes teh rejection of bogus patents)

    5) Keep a running count of the number of rejected patents a company files over a given period (say 3 or 5 years) . Any company going over the threshold will be charged double for each patent application.

  18. D. M

    too bad it's only half what was needed

    the other half is to change the patent charge as non refundable per application. Once a patent is rejected, re-apply must pay another fee, and so on.

    Then if a patent application was found to be garbage, then mandatory fine apply. If a patent was found to be invalidated by clear period art, mandatory prison term apply.

    This is the only way to go.

  19. staffer

    In a pig's eye!

    "The Patent Reform Act is a key part of any jobs agenda"

    In a pig's eye!

    This bill is nothing less than another monumental federal giveaway for banks and huge multinationals and an off shoring job killing nightmare for America.

    Just because they call it “reform” doesn’t mean it is. Even the leading patent expert in China has stated the bill will help them steal our inventions. Who are the supporters of this bill working for??

    Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. Yet small entities create the lion's share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help in the fight to defeat this bill should contact us as below.

    Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors.

    Please see for a different/opposing view on patent reform.

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