Thursday, June 23, 2011

US patent system moves to first-to-file

Today, H.R. 1249, the America Invents Act, passed the US House of Representatives. The US Senate had passed a similar bill (S. 23) in March.

The pair of bills have some differences between them that needs to be resolved, but together they present a broad change to the way the US patent system works.

Currently, the US remains one of the few countries in the world where patents are awarded based on whoever first invents a claimed invention. This is called "first-to-invent" and has created an environment where there is a lack of incentive for inventors to file patents. Encouraging inventors to file patents and disclose their invention to the public in return for a time-limited monopoly is a policy objective of patent law, since the advancement of science relies on building upon what is already known. As Isaac Newton once said, "If I have seen further it is only by standing on the shoulders of giants".

With the new reforms, the US moves to a "first-to-file" system in which a patent is awarded to the inventor who files for a patent first.  This provides an incentive for inventors to file patents as soon as they make an invention in order to prevent any subsequent person who independently makes the same invention from acquiring patent rights.

Canada already uses the "first-to-file" system, and has been using such a system since 1989.

Monday, June 20, 2011

The drive to determine what is patentable

Last week, the U.S. Supreme Court agreed to hear an appeal of Mayo Collaborative Services v. Prometheus Laboratories, Inc., on the issue of whether or not methods of medical diagnosis are patentable in the US.

Closer to home, tomorrow is the appeal hearing for Amazon v. Canada, Federal Court File A-435-10, in which Amazon seeks to have the Court of Appeal confirm that methods of doing business (such as a method of doing "1-click" shopping online in this case) are patentable in Canada. We should see a decision from the Court within a year.

These are exciting times for the patent bar as well as for scientists worldwide, as these decisions can affect many companies' R&D directions in the coming years.