Patent Reform Act of 2010: Problems and Pitfalls

April 29, 2010 Published Work

The latest version of the proposed Patent Reform Act of 2010 was released on March 4, 2010 in the form of a Manager's Amendment to S. 515.1 The proposed changes to U.S. patent law include new conditions for patentability under a "First Inventor to File" (FITF) system; a new post-grant review procedure in addition to inter partes reexamination (renamed "inter partes review"); and removal of § 112 best mode as a basis for attacking validity. These three changes can have unintended consequences and present problems for practitioners.

I. First Inventor to File (FITF)

The proposed new § 102(a)(1) sets far-reaching conditions for novelty: A claimed invention cannot be patented if it was patented, described in a printed publication, in public use, on sale, or "otherwise available to the public" before the effective filing date of the application.2 This new section makes no distinction between a disclosure by the inventor and a disclosure by anyone else, nor any distinction between disclosures in this country and disclosures made elsewhere. The term "otherwise available to the public" is not explained; it may apply to descriptions that do not appear in print. If so, a purely verbal description of the invention, made to a single listener, could destroy novelty.