Patent Alert - Historic Patent Reform Passes Congress, but Will Have Minimal Effect on Most Companies


On September 8, 2011, the Senate passed, without amendment, the House version of patent reform legislation. In his jobs speech to a joint session of congress shortly after the senate vote, the president mentioned the bill approvingly. We expect the bill to be signed into law shortly.

The centerpiece of the legislation changes the U.S. from a first-to-invent to a first-to-file approach for determining which of two inventors deserves a patent. This change brings the U.S. in line with the rest of the world, as most other countries use the first-to-file rule. We anticipate that this change will have minimal impact for most companies. Most companies with patent programs generally file as early as possible to preserve their options for international patent rights, and to avoid junior status in the U.S. should another party file for the same invention.

Despite a decade of consideration and debate over proposed bills for the past five years, the most notable aspect of the legislation is what it does not address. The legislation does not tackle problems of excessive damages that were originally considered key to patent reform, nor issues about patentability of information-age innovations or business methods. It does not address issues relating to the rise of non-practicing entities or patent aggregators. In sum, there is less addressed in the final legislation than many expected.

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