Court May Have Halted Race to Patent Office

This week in a 7-2 decision for respondents in a patent infringement suit, Supreme Court Chief Justice John Roberts wrote, “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” Later in the opinion, Roberts added, “Although much in intellectual property has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not.”

The ruling takes on additional significance in light of the so called America Invents Act (H.R. 1249) currently pending a vote in the U.S. House of Representatives. Even opponents believed the bill, already passed by the Senate, was on its way to passage and the President’s desk. Last week, the soon-to-be-departing Commerce Secretary came out trying to drum up support for the bill.

Like its Senate counterpart (S. 23), the House bill includes an unfortunate provision that would shift America’s current patent system (in which the first person to conceive of an invention is granted a patent) to a “first to file” arrangement that would undoubtedly turn our system into a foot race to the Patent and Trademark Office (PTO).

The House bill would also create a controversial new administrative post-grant review process. Current law already provides two separate administrative tracks to challenge a patent within the PTO, in addition to the opportunity to pursue action in court. This bill proposes to add a third post-grant review process, despite distinct downsides to creating a duplicative challenge process at the PTO.

The bill also would devastate inventors by expanding prior user rights and dramatically weakening the current one-year grace period for U.S. inventors. This grace period is critical to small inventors, who can use that year to develop their inventions, seek investors and raise funds to begin the expensive patent-application process.

U.S. Rep. Don Manzullo (R-IL), a leader on patent reform issues, has now called on House leaders to shelve the controversial “patent reform” bill in lieu of the U.S. Supreme Court, mentioned above, that upends the basic premise of the bill.

Rep. Manzullo issued the following statement following the high court ruling. “In its ruling today, the Supreme Court reaffirmed 220 years of U.S. patent law that gives inventors the right to patent their products. As I have maintained, this ‘first to invent’ system that has served America well for generations should stand in our patent law,” Manzullo said. “Unfortunately, HR 1249 aims to strip these rights from American inventors by instituting a ‘first to file’ system. Today’s ruling by the Supreme Court affirms ‘first to invent’ and indicates H.R. 1249 would not pass constitutional muster. I encourage House leaders to shelve this bill and work with me and others on true patent reform that will help spur innovation and create American jobs.”

The PTO currently has a backlog of 700,000 patent applications waiting to be examined. It seems to us, that is where any reform needs to focus its efforts. If the current fee diversion from the PTO were stopped, it would enable the office to improve the patent-application process by hiring sufficient staff and updating its information-technology infrastructure.

That’s our view on this important issue. Members are encouraged to share their view on this and other issues effecting our industry in these pages. Please email your thoughts and ideas to Shortliner@FarmEquip.org. We look forward to hearing from you. (You can also sign up to receive this publication via email by using the above address.) ◆