Guest blog post by Bruce Winchell, Attorney-at-law
Editor's note: The development of new nuclear energy technologies, especially for small modular reactors, could be impacted by this change.
H.R. 1249, as passed by the House, is entitled America Invents Act, and S. 23, as passed by the Senate, is entitled Patent Reform Act of 2011. Both change the U.S. to a First to File patent system. Presently, it is expected that the changes will become law in September of 2011. The First to File provision is expected to take effect 18 months after enactment.
Image of Alfred Nobel’s patent for nitroglycerin, June 1864. source: Wikimedia Commons
These bills had strong support from foreign business entities, large businesses in the U.S., and patent professionals who work for large businesses either as in house counsel or in law firms that have large businesses as their clients. That is because they are the big winners of such a first to file system.
Such a change will make the U.S. more like the rest of the world where first to file a patent application wins all bets and the patents. Presently in the U.S. most of the patents go to small businesses and individual inventors. In the rest of the world most of the patents go to large businesses who have patent professionals on their staff to assure that the company always files first to get the protection that they need. This is an incentive to file fast and not to invent.
The U.S. has a first to invent system because the U.S. Constitution in Article 1, Section 8 gives Congress the power to promote the progress of science and useful arts, by securing for limited times to INVENTORS the exclusive right to their discoveries. The U.S. has a system that provides incentive to invent by giving the patent to the first to invent.
The big winners of a U.S. first to file system will be foreign entities which are used to a first to file system where research projects are not funded by companies until the patent applications are filed based on any conceptions of inventions in the proposal for the R&D funding. This helps the companies avoid funding projects where they would be blocked later from practicing the invention because some one else won the patent by filing first. Such entities never publish anything about such projects until the patent applications are filed.
The individual inventor, small businesses, universities, and national laboratories will be blocked by first to filers. One reason is that they allow publication before patenting. Another reason is that they try to prove the concept in the lab or reduce the invention to practice before they file patent applications. Americans sit on inventions way too long to be able to win any contest based on first to file. Showing anything to anyone before filing a patent application is risky in a first to invent system but it is suicide in a first to file system.
Foreign entities will likely file many more applications under the first to file system and will be more able to stop production in the U.S. for products that they own the patents that cover those products. Winning the patents will allow them to be more assertive to force the import manufactured goods. Also they will more likely force the U.S. Government to pay royalties to them for inventions the Government paid U.S. labs to invent because they sit on their inventions too long for a first to file system.
Since about 70% of all new jobs come from new small businesses, America is likely to be significantly less productive in creating new jobs in the future in a first to file system. This fundamental change to our intellectual property system will hurt small business and hurt job creation.
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