U.S. Senate Passes Sweeping Overhaul of Patent System

March 08, 2011

[Updated 6:40 p.m.]

The U.S. Senate voted overwhelmingly on Tuesday to approve a bill that would make major changes in how patents are awarded, bringing the United States closer to the "first to file" standard commonly used in the rest of the world. If enacted, the changes could pressure researchers to publish new findings more quickly than they would otherwise, in order to preserve their intellectual-property rights.

The vote on the bill, S 23, was 95 to 5. The legislation, which has yet to be taken up by the House of Representatives, is very similar to a measure considered by the Senate in 2009. Like the 2009 measure, the new bill, called the Patent Reform Act of 2011, includes many compromises on issues that had been of concern to colleges and universities that are active in patenting.

The current's bill's one major difference from the one of two years ago is that it excludes any language designed to put a limit on damages parties could claim after proving patent infringement.

John C. Vaughn, executive vice president of the Association of American Universities, said the omission would continue to leave the issue of damages to the courts. That's a satisfactory approach for colleges and universities as patent owners, he said, because parties may be deterred from infringing patents if they realize there could be a big cost in doing so. Excluding the provision to limit damages, he said, also makes the bill more likely to pass.

Last Thursday, the Senate turned back an amendment offered by Sen. Dianne Feinstein, a Democrat of California, that sought to retain the current "first to invent" standard for obtaining a patent. The amendment was rejected by a vote of 83 to 17, leaving the bill with an approach that would bring the United States to a standard known as "first inventor to file."

Some in academe have worried that the "first inventor to file" standard could create a greater pressure on academics to publish more quickly, for fear that someone else working on the same topic might publish first. A publication by a rival could block the academics' right to obtain the patent because it would be assumed that they had devised their idea from reading the rival's work. Once an idea has been publicly described, it is considered "prior art," and unpatentable by others.

But Mr. Vaughn said the concern over a rush to publish might be overblown. In Europe and Japan, where the "first to file" system is in place, "there is not good evidence" that it has led to a rush to publish, he said. And, he noted, because the patent-reform bill does not consider publications by inventors themselves as prior art, as long as the patent application is filed within a year of the publication, the current legislation ensures that faculty rights to publish are not in conflict with faculty interests in seeking patents on their work.