Patent Reform to Complicate Process

By IMS ExpertServices

In a 93-5 vote on Tuesday, the America Invents Act of 2011 cleared the Senate after a filibuster. It is now at the White House and is expected to be signed by President Obama early next week.

As you are probably well aware, the Act moves the United States to a first-to-file system, gives the USPTO more authority to set fees, broadens the definition of prior art, and is meant to expedite the review of patent applications. The Act may even affect the use of experts in patent litigation.

It has been debated in the House of Representatives, among patent attorneys and among inventors. Some believe that it will harmonize the patent system while many others think it will adversely affect inventors and stifle innovation.

Earlier this week, Patently-O posted the results of a patent reform survey. The results from over a thousand intellectual property professionals revealed that the majority do not expect the reform to streamline the patent system, make it easier to turn ideas into businesses, or to create 200,000 jobs.  In fact, the results of the survey show only minimal support of the law despite agreeing that it is the largest overhaul of the U.S. patent system in 60 years.

The supporters of the law pointed out that it will bring us more in line with foreign practices and simplify patent law. Others said they did not believe the reform would change very much at all, while still others believe the negative effects to far outweigh the advantages.

Takes Time to Streamline

In the survey, several people mentioned the disadvantages of this law to individual inventors and smaller companies.

“Small-time inventors, if they ever had a chance to succeed through patenting, will have no chance whatsoever under the new system,” wrote one respondent. “Litigation costs will actually increase for the foreseeable future due to the uncertainty introduced by the entirely new language in the statute, especially regarding the prior art provisions of 102.”

The provisions to which he refers allow third parties to submit prior art with explanations of its importance. Although this is meant to add depth to the application review process, it is a new element that will take some time to effectively incorporate. As the reform creates confusion, the patent system will slow down to work out the details.

One student studying intellectual property law pointed out that “The reforms will likely cause an even larger backlog in the USPTO as everyone tries to adjust to the new law and the courts spend time sorting out what it means.”

More Litigation

As is the case with most new legislation, the America Invents Act will ultimately result in increased litigation until the courts create a standard.

“Not much is really intended to change,” wrote a U.S. patent agent.  “However, a lot of unintended consequences will result from poorly written language, and the patent community will be at sea for a number of years until the Federal Circuit and Supreme Court definitively interpret loose language.”

Although those surveyed did not have much faith in the legislation’s ability to create 200,000 jobs, it may have the effect of increasing business for patent attorneys providing consulting services regarding the new rules. As always, it will take time to see the ultimate effects of this new law.

Tell us: What sort of impact do you believe the America Invents Act will have on the legal industry?

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IMS ExpertServices

IMS ExpertServices delivers consultative trial and expert services for the most influential global firms. Over nearly three decades and through more than 20,000 cases and 1,000 trials, clients have trusted IMS to equip them with the perspective and tools they need to help their clients succeed. With offices in the San Francisco Bay Area, Dallas, Pensacola, and New York, the company provides trial strategy consulting, jury consulting, trial graphics consulting, trial presentation consulting, and expert witness recruitment and management. IMS has earned nine consecutive rankings on the Inc. 5000 list, won recognition by The National Law Journal in six categories of its “Best of 2020” awards, by Corporate Counsel Magazine as winner in eight categories of its “Best of 2019” awards, and as “Go-To Thought Leader” for two consecutive years by The National Law Review. More about IMS ExpertServices can be found at: www.expertservices.com.

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