Patent Law

Patent Reform 2009 is rolling along. The Senate Judiciary Committee has approved an amended form of S.515. Some notes on the first-to-file portion of the amended bill: S515Amended.pdf

·         First-to-File: One of the greatest changes to ordinary prosecution would be the move to a system where the effective date of invention is the filing date. This means no more swearing-behind prior art based on the date of the invention.

·         Effective Date: The language of the bill would define a the ?effective filing date? of ?the patent or application? as ?the filing date of the patent or application for the patent containing a claim to the invention? or the earliest §§ 119, 120, 121, or 365 priority date associated with a document in which the ?claimed invention is disclosed in the manner provided by the first paragraph of section 112.? (i.e., described, enabled, and best mode provided). The ?claimed invention? is then described as ?the subject matter defined by a claim in a patent or an application for a patent.?? There appears to be is an important technical problem with this language because it considers the effective filing date of the patent or application as a whole. However, there are many cases where only some of the claims are fully described in priority documents. Under the language in S.515, the ?effective filing date? of the patent would be the earliest priority date for any one claim in the patent. Thus, the provision would allow an applicant to reach-back to a provisional or parent document to claim an effective date for the entire patent document even if the priority document discloses information directed to only a portion of the claims.

·         Obviousness: To operate within the first-to-file schema, the obviousness provision needs to be keyed to the ?effective filing date? rather than the ?time the invention was made.? However, the proposed bill makes another couple of tweak to the provision. For instance, rather than looking at the ?subject matter sought to be patented ? as a whole,? the new provision would look to the ?claimed invention as a whole.? Difference?