Each chamber of Congress has pushed the country one step closer to what many consider a major reform of patent law—and the President is ready to see it. In a press conference earlier today, President Obama urged Congress to send him the “America Invents” patent reform bill to encourage innovation, and both House Speaker John Boehner (R-OH) and Senator Pat Leahy (D-VT) seem pleased.
When the House passed its version of the Leahy-Smith America Invents Act, Boehner stated, “This legislation modernizes our patent system to help create private sector jobs and keep America on the leading edge of innovation” while Leahy, when the Senate’s version passed 95-5, remarked, “The America Invents Act will promote American innovation, create American jobs, and grow America’s economy, all without adding to the deficit.”
The devil, however, is still in the details, however, as the bills will have to come together on some key differences. According to Alex Philippidis at GEN, who argues that biotech inventors may face additional challenges under the House version of the bill: “Those differences cover how patents will be awarded in the future, as well as how challenges to just-issued patents can be pursued, and what resources the US Patent and Trademark Office (USPTO) will have to reduce its nearly three-year backlog of patents.”
One of the biggest changes in patent law would come in the very criteria necessary in order to be awarded a patent. Both bills agree on changing the requirement for patents from “first to invent” to “first inventor to file,” a move that is controversial among independent inventors and smaller companies—in other words, those competing against large corporations in the so-called “race to the patent office.”
Another major sticking point remains the idea of fee diversion. Currently, Congress allows the USPTO to set its fees only as high as needed to cover its costs—but does not allow the PTO to keep all fees collected. The Senate’s bill calls for allowing the USPTO to keep the revenues generated by filings whereas the House bill has a much more complex proposal involving the creation of a Public Enterprise Fund—“a sequestered account for USPTO revenue in excess of appropriated funds, to be made available exclusively for USPTO.” In other words, under the house version, if the USPTO wants to use those funds it would need approval from the House Appropriations Committee. Not surprisingly, USPTO Director, David Kappos, has a strong opinion on this particular issue.