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IP: This won’t be the year for patent reform

Patent reform, which would move the U.S. from a “first to invent” to “first to file” patent system, has stalled.

For a while, it looked like this might finally be the year that congressional cooperation would hold together long enough to pass patent reform. In March, following up on last year’s bipartisan push, the Senate passed its version of the patent reform bill by an overwhelming majority of 95-5. The House was making steady progress on its version as well, with the House Judiciary Committee approving the bill 32-3. Just last week however, mere days before the House Judiciary Committee planned to bring the bill to the floor, vociferous dissent broke out from a number of camps. While its not clear why the dissidents waited so long to make their views known, one thing seem certain— this won’t be the year for patent reform.

Opposition to the proposed patent reform package centers on two main changes to the U.S. Patent system, one substantive and one pecuniary. Substantively, patent reform proposes to change of the U.S. Patent system from a “first to invent” system to a “first to file” (or, as its proponents phrase it, “first inventor to file”) system. Generally, a “first to invent” system awards a patent to the first person to invent something, whereas a “first to file” system awards a patent to the first person (or entity) to file for a patent on an invention. While most countries have “first to file” systems, the U.S. system has always been “first to invent.” Proponents of moving to a “first to file” system argue that it brings the U.S. in line with the rest of the world and eliminates the complexity involved with determining priority among multiple potential inventors. Opponents of “first to file” argue that such a system favors businesses that have the resources to expeditiously file patent applications, over individual inventors, who typically take longer to scrape together the resources necessary to file. 

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Mark C. Scarsi

Mark Scarsi is a partner in the Intellectual Property Group of Milbank, Tweed, Hadley & McCloy, LLP, resident in the Los Angeles office.

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