Last week the House of Representatives passed the America Invents Act. The overwhelming margin (304 to 117) suggests that, after 30+ years of debate, the United States will soon have a first to file patent system. However, changes to the bill passed by the Senate will make it necessary for the two houses of Congress to finalize legislation which can be signed into law.
Senate opposer to the bill, Sen. Dianne Feinstein, had previously characterized first-to-file vs. first-to-invent as a battle between small inventors and big business:
“I think this is really a battle between the small inventors beginning in the garage, like those who developed the Apple computer that was nowhere, and who, through the first-to-invent system, were able to create one of the greatest companies in the world,” Feinstein said. “America’s great strength is the cutting-edge of innovation. The first-to-invent system has served us well. If it is not broke, don’t fix it. I don’t really believe it is broke.”
When the Act is reconciled and signed into law, the prompt filing of patent applications may carry significant advantages. Concerns respecting the ability of small businesses to compete with established enterprises in filing new technology may be addressed by the elimination of the best mode of defense (which is a current requirement of patent application notorious for greatly increasing the costs of the prosecution process), although Section 112 still requires disclosure of the best mode. What will the courts do with that?
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