Patent Reform Reaches the Senate

Today's Wall Street Journal published one of the better overviews of the current battle over proposed patent reforms. One of the major changes would be a shift from the "first-to-invent" basis for a successful patent application to "first-to-file." One of my jobs is to chair the University of California Senate's Committee on Planning and Budget, and we reviewed the proposed reform quite negatively. The concern was that first-to-file - though the rule everywhere outside the US - would favor big companies with big money, junk patenting, and opportunists over serious researchers. IP scholars that I respect, like Mark Lemley, don't agree, but it has seemed to UC's Office of the General Counsel and most faculty like the inventors will get screwed by the filers.

The context for this legislation is recent Supreme Court decision that some have called the most important patent case since the 1952 Patent Act - KSR. v. Teleflex decision decided by the Supreme Court April 30th. Among other things, the decision, written by Justice Kennedy, would make it harder to patent incremental improvements, and would try to reserve patents for greater forms of originality. For an overview see Linda Greenhouse's good piece. She pulls out Kennedy's interesting coinage, "ordinary innovation," which is something that does not deserve a patent. Some worry that all sorts of patents could be challenged on this basis. Greg Aharanonian, editor of PatNews, rails,

The KSR decision is semantic nonsense, introducing yet more undefined terms (e.g., “real innovation”, “extraordinary”, etc.) to a statute that is constitutionally meaningless given the lack of definition for its key term, “obvious”. What’s a “real innovation” - one that occurs in a flash to a genius? That’s right, the Supreme Court has mastered general relativity and built a legal time machine to send all of us back to the pre-1952s!!!!"

The IP world is confusing and stressful right now - that's one thing thing we know for sure.