Leahy-Smith Invention Act

President Barack Obama recently signed the Leahy-Smith Invention act designed to overhaul America's patent laws.  There have been several attempts to revamp the US patent system since 2005.  These other attempts were not successful and the passage of the latest bill is not necessary a victory for inventors or the general public either as it creates just as many problems as it intends to solve.  Additionally, the bill is slanted to big business interests with its change of US inventor rules.  None of these changes bodes well for an already overtaxed system.

The current system is groaning with 700,000 pending applications to be examined by an insignificant number of patent examiners.  Currently there are about 7,000 examiners to review, examine and make legal determinations on the merits of each and every application.  The one positive note in the bill is that more money will stay in the office thereby permitting the hiring and retention of patent examiners.  However, throwing more money at a problem is not necessarily the best solution to a job that is tedious, technical, repetitive and that some examiners have described as boring.  The USPTO does not do a good job of hiring qualified personal with the right combination of intelligence, language skills and psyche to do the job.

Doing the job of protecting the small inventor is also a gigantic new problem as the clauses of the new law starting taking effect.  For years the US patent system was a first to invent system that protected the rights of the actual inventor regardless of whether his legal documents filed at the office were late in comparison to another.  Now America follows the lead of the rest of the world and falls to the siren's call of the 'first to file' suicide pill.  Who will protect the small invent from industrial espionage or massive vague filings from industrial powerhouses that might file sketchy patent disclosures on broad swathes of technology?

They will seize territory belonging to the lone inventor by a veritable avalanche of cases seeking to bury the real inventor in numerous legal disputes on competing similar technologies.  It is not surprising that major companies like Microsoft, Google, and Apple have been promoting the Leahy bill as a world harmonizing piece of legislation that will help innovation.  When did it become a maxim that harmonizing laws with the world would help any particular issue?  If it helps it helps, if it hurts it hurts regardless of whether or not the rest of the world is in a first to file or first to invent system.  In this case, a rush to be globally politically correct will break the back of the small inventor and in the long run US technological innovation.

Another minefield opened up by the legislation is the definition of prior art as defined by the possibility of inventor disclosure of some or all of the technology covered by a patent.  Thus, the previous grace period of one year is now in doubt in some and in some circles there are rumblings that a new law will need to be implemented to correct this problem. Perhaps an enterprising group of lawyers will soon enough challenge this slice and eat it for dessert.













Patent Protection for Business Methods Left in murky waters after Supreme

Court's June Decision

Permanent Link: {patent_business_method_miami_patent_attorney_part1}

The nation's top court has issued its long anticipated opinion rejecting the patentability of the controversial Bilski case. The decision is both surprising for what it does and for what it does not do. The Justices did not offer a clear interpretation as to what constitutes patentable subject matter in the narrow classification known as 'business methods.' But they did clarify certain points of the lower court's ruling. Inventors and businesses seeking patent coverage are well advised to study the oracles emanating from the Supreme Court in order to get a patent that can pass muster in the existing case law.

The field of 'business method' patents includes a variety of transactions having to do with commerce, banking, taxation, electronic transaction processing and more. Patents have been granted in this field for at least two centuries before the present case even saw the light of day. However, the policy of the government agency overseeing patents, the United States Patent & Trademark Office (USPTO), has evolved from those earlier grants to one that assumed that patents could not be granted for these very same methods.

Since the advent of the web, a rainstorm of patents claiming financial transaction processing began to arrive at the doors of the USPTO forcing a change in direction. The patent office was compelled by the deluge to examine numerous cases having both a technological application as well as crossing the line into financial processes that it would have preferred not to. As a matter of daily practice, the office simply instructed examiners not to evaluate a patent application to determine if it could be a business method or not. This would change when the Federal Circuit Court decided the landmark State Street Bank decision (1998).

This decision swung open the gates of what could be patented generating a chorus of complaints against State Street even though many informed observers point out that it may not have been entirely responsible after all. In any case, the Federal Circuit did indeed indicate that an invention would be eligible for a patent if it involved some practical application and produced a useful, concrete and tangible result. The US Patent Office responded by making it part of their official policy to require a technological connection for the method to be patentable. In doing so, the agency overstepped the bounds of its constitutional mandate since it could not be proved that these requirements existed in the current body of law (Ex Parte Lundgren, BPAI 2005).  continued... in part 2