Continuing the discussion on “Introduction to Intellectual Property and Understanding Intellectual Property”. Among them, today we will look at “Revision of the US Patent Law”.
The United States established the Patent and Trademark Office, the first in the world, in 1790, and now it is the world's largest patent market, where global companies are very active in applying for US patents. In September 2011, President Obama's signature in the patent market brought major changes to the patent market, including prioritizing first-to-file principle over first-to-invent principle.
1. First-to-invent principle
First-to-invent principle is a system that grants a patent right to the first person who invents an idea regardless of whether a patent has been filed or not, and has the characteristics of a system to protect the first inventor. On the other hand, there are parts that conflict with the basic idea of the patent system. Because granting rights to a person who has simply invented an idea and has not disclosed the details of the technology is not in line with the purpose of the patent system, which seeks to lead to technological and industrial development by revealing and sharing technology. In addition, if an unexpected individual claims that the invention was first made based on research notes other than official literature, a procedure called interference proceeding must be initiated to determine the priority of the invention, which consumes a significant amount of time, effort, and money.
2. First-to-file principle
Except for the United States, most countries adopt the first-to-file system, which gives priority to the person who files an invention first. In this case, even for the same invention technology, it is easy and clear to whom the patent right should be granted, so there is no need to go through the conflict examination procedure and it has the advantage of preventing disputes in advance. However, it is often pointed out that the first-to-file system is disadvantageous to small and medium-sized enterprises (SMEs) and individuals. This is because large corporations systematically manage patent applications through experts such as patent attorneys, but SMEs and individuals lack the financial power for such management. Also, it is pointed out as a disadvantage that the earlier applicationism induces hasty application of patents, weakens the quality of patents, and has a high possibility of stealing the technology of a true inventor compared to the first-to-invent system.
3. Main contents of the amended US Patent Act
The amendment to the US Patent Act adopts the first-to-file principle instead of the first-to-invent principle and includes several mechanisms to prevent the shortcomings of the first-to-file principle in advance.
First of all, unlike before, when only an inventor could act as an applicant, it became possible to register as an applicant even in the name of the person who will take over the patent right. Procedures for determining whether patent applicants are entitled to protection are also provided.
In addition, in order to reduce the cost burden of filing patent applications for individuals or small and medium-sized enterprises (SMEs), a new regulation has been established that allows for a 75% reduction in fees for patent applications made by micro entitie. On the other hand, invalidation of poorly registered patents also simplified the procedure. In addition, a priority examination system was introduced to expedite patent examination, and the Intellectual Property Office set patent fees on its own without the supervision of the Parliament, and the profits were used to significantly increase the number of patent examiners, thereby laying the groundwork for shortening the patent examination time.
4. Effect of US Patent Law Amendment
This amendment reduces for individuals and SMEs the risk of patents being stolen by other inventors or entrepreneurs. Accordingly, it is expected that the litigation risk and related costs borne by individuals and companies that have entered the United States due to the first-to-invent principle will be reduced. Lastly, this reform is important in that the criteria for granting patents are globally unified. This is expected to accelerate the trend of globalization of technology by reducing the effort required by global companies and individuals to prepare patent applications for the global market.
Today, we learned about the introduction of intellectual property and understanding of intellectual property, especially “revision of the US patent law”. Next time we will study “The Threat of NPE”.
*I am a student learning IP, not an IP expert. Translation is also a translator and my short English skills. I hope it will be helpful for those who do not have the relevant knowledge or who want to learn about IP.
*The above is what I learned from a book compiled by the Korean Intellectual Property Office and Korea Invention Promotion Association (published by Pakmungak) entitled “Introduction to Intellectual Property, Understanding Intellectual Property”.
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