[This is the second in a series of postings regarding the various proposals in the Patent Act of 2005.]
Assignee Filing
Currently, a patent application can only be filed in the United States in the name of the inventors. The Patent Act of 2005 would amend the law to allow the assignee of the invention to file as well. This proposal, one of the few non-controversial provisions of the Act, is clearly pro-business: Nobody seems to dispute the legality of filing a patent application in the corporations name rather than the inventors’ names. As far as it goes, this will reduce the time spent chasing down signatures from the various inventors. It will also reduce those pesky Missing Parts notices and the penalty fees associated therewith.
Best Mode Repeal and Publication of Applications after Eighteen (18) Months
Currently, a patent application requires a tangled WEB (Written description, Enablement, and Best mode). It is this disclosure of the invention which is the quid pro quo for the limited exclusivity provided by the patent. (The best mode requirement was codified around 1870 so it was not part of the original quid pro quo designed by the Founding Fathers).
This pro-patentee proposal seeks to remove the best mode requirement. Proponents of this change state that this will have the effect of eliminating a subjective element in patent litigation, thereby reducing litigation costs, and increasing the predictability of litigation. Others argue that this will allow patent holders to maintain trade secrets in addition to obtaining patent protection. The proposal is also directed toward greater international harmonization since few other countries require this type of disclosure.
Interestingly enough, the same groups against this change are also arguing against the publication of all patent applications after eighteen (18) months. But, when taken together, both of these provisions actually complement each other. Yes, one loses the possibility of trade secret protection after eighteen (18) months but they retain the ability to protect some trade secrets by not having to disclose their best mode anymore. Furthermore, publication of all patent applications will increase the availability of prior art to allow potential patent applicants more data from which to determine whether their current project may or may not be patentable.
Previous: Part 1. First-Inventor-to-File.
Next Up: Part 3. Duty of Candor in Front of the USPTO.
Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.
