Commerce pushes patent reform

Second, Locke said the administration endorses transitioning to a first-to file system, rather than the current first-to-invent system, saying doing so would simplify the process and improve fairness, and would also bring the U.S. in line with other countries’ processes.

The administration does take issue with some provisions in the current Senate bill, however. It opposes a provision related to how agency examiners search for international patent holders.


“Because of the large number of patent applications filed each year in multiple patent offices around the world seeking protection for the same invention, and the highly duplicative work conducted by the world’s patent offices in examining these applications, we believe that greater work-sharing among patent offices would be helpful in managing patent application backlogs,” Locke said in the letter.

In a press conference, Commerce Undersecretary for Intellectual Property David Kappos said more than half of the Patent Office’s workload comes from overseas, and that number is increasing. So the agency needs to have flexibility to negotiate cooperative agreements with other countries.

“We have tremendous amount of patent information coming in that has been submitted in nearly identical form in other patent offices around the world,” he said. “In order to get a grip on the backlog and meet our commitment to our country, we’re going to need to engage in more work-sharing with other major patent offices.”

Kappos also said the agency is proposing a beta-test phase-in of a post-grant review process, which would allow the public to challenge patent claims within a year of its issue. Currently, a third-party’s ability to challenge a patent claim is much more limited.

“The time is truly now for patent reform legislation,” Kappos said. “While it’s a compromise, it clearly moves the ball forward and sets the stage for American patent system to be the best and strongest in the world.”