Patent Reform 2007 - Guest Commentary - The REAL Purpose of S.1145/H.R.1908 Patent “REFORM” Legislation

By Guest Contributor
George Margolin
Vice President, Professional Inventors Alliance

“Not a single section in this proposed legislation is for improving the patent system! And NONE OF THEM are directed at reducing the massively INCREASING, backlog of PENDING Patent Applications. ALL of them are designed to spread Web based Land Mines to cripple American patents and Inventors, while REDUCING THE EXPOSURE OF INFRINGERS! This, CLEARLY, cannot help the people who created the jobs and wealth that make America the most creative technological engine the world has ever known! And it would ABSOLUTELY, POSITIVELY, DESTROY AMERICA’S TECHNOLOGICAL SUPERIORITY!” (Retired Bell Labs Patent Attorney)

S.1145 was RUSHED THROUGH COMMITTEE, before the Senators could DISCOVER that Nothing in it helps American Inventors or Invention or Innovation. And NOTHING IN IT is Good for America! It will only benefit its Gargantuan Goliath Trans-National sponsors!

As a long time Professional Inventor, I can assure you that this bill will be a DISASTER for American Technology, as was shown in the FORTUNE article .


S.1145 Doublespeak legislation is NOT designed to solve problems with the patent system. It is craftily crafted to PROTECT the sponsoring multi-national corporations from the consequences of “borrowing” -- without recompense, the Inventive Property of creative American small businesses, universities and independent inventors! These, together, create virtually ALL OF THE BREAKTHROUGH INVENTIONS WHICH MAKE AMERICA GREAT!

This Legislation would provide a clear path for countries like CHINA to usurp even MORE of our manufacturing power – including America’s mainstay automotive and Electronic industries. NO MANUFACTURING -- NO PAYROLLS – AND A DYING AMERICAN ECONOMY!


The purpose of the American patent system is to grant a limited, short term, monopoly if an inventor FULLY describes his or her invention. The Patent Application description of the invention is to advance the art and TEACH it so that other Americans can build upon it. The purpose is NOT to SELL products. THAT is the purpose of our time tested, successful patent system.

BUT because the Patent Office is DISMALLY UNDERSTAFFED AND UNDER FUNDED – it is INCAPABLE of EXAMINING THE INCREASING FLOOD OF PATENT APPLICATIONS. Because of this -- patent application pendency is now about 800,000! In plain English – that is Eight Hundred THOUSAND applications BEHIND – and getting further behind every day. So IF the USPTO were to accept NO NEW APPLICATIONS – it would take more than FIVE YEARS to complete them with the examining staff currently on board.


George Margolin
Vice President – Professional Inventors Alliance



Patent Reform 2007 - What are the Issues in Bill S. 1145?

NOTE: This sections will be updated with more issues, so please bookmark this page and check back in.

Any one of the issues in S. 1145, alone, would be a major change to the U.S. patent system. Many of the proposed changes in the Patent Reform Act of 2007 are tied-in to the worldwide “first-to-file” system. This first-to-file “package of issues” will destroy the intrinsic incentives and original intention of the U.S. 200-year old patent system.

The laws of the United States are also based upon “case law”, which means that the laws are interpreted based upon the results of court cases. After a court decision is made, future case rulings are based upon the decision of the earlier cases. So the U.S. patent laws have evolved through 200 years of case law. These drastic proposed changes throw out those 200 years of case law, and create a totally new system that has not been tested through court cases.

The proposed "first-to-file"changes stack the rules in favor of well-funded large corporations by encouraging infringement, making the patent process so costly that only big corporations can afford the process, and creating ongoing patent challenges to the independent inventor.
Especially in combination, the package of issues tied-in to "first-to-file" work against the independent inventor to "check mate" him at every turn.

Here’s a brief summary of the “first-to-file” package of issues:

  • Current U.S. patent system: The existing 200-year old “First-to-Invent” system allows inventors to delay getting a patent until after their product has been researched and developed enough, as long as they keep it secret and maintain the proper invention logbook. Since an invention is often improved, tweaked, and perfected during the research and development stage, this results in a much stronger patent based on the final version of the invention, as well as allowing the inventor to spend his/her limited funds on the development, rather than on the patent, in the early stages. This is an extremely important issue with the more technological inventions that often take years and years to develop.
  • Worldwide first-to-file system: Whoever files a patent first, would get the patent. This means that whoever has the money to file a patent first, gets the rights to the patent, not necessarily the first inventor. This tilts the patent system to those who can afford the patent process, not those who are original inventors. Being pressured to file a patent immediately encourages a rush to patent without the proper development of ideas. Since the original patent won’t match the final developed product, this means that incremental changes will also need to be patented to protect the idea throughout the development period for as long as it’s being evolved. This results in having to file multiple and successive patents for each idea, a process only large corporations can afford, pricing most independent inventors out of the inventing picture.

Assignee Filing:
  • Current U.S. patent system: Currently in the U.S., the patent laws require that the individual inventors be listed on the patent. Issuing the patent to the “true inventor”, an “individual”, is at the heart of the U.S. patent system. In corporations, all patents have to be filed in the name of the inventor-employees, and are shown as “assigned” to the corporation within the patent (i.e., all intellectual property rights are turned over to the company, this is something that the inventor has already agreed to in the employment agreement). Both the name of the inventor, and the corporation that owns it, are on the patent. This system has worked well, so it’s not necessary to change this aspect. When licensing an invention, whether filed by the inventor or the licensee, the patent is always filed under the inventor’s name, so there’s never any question about who the true inventor is.
  • Worldwide first-to-file system: This is tied in to the worldwide “first-to-file” system. This would allow corporations to file for patents in their corporation’s name, eliminating the inventor from the patent. When you combine “first-to-file” with eliminating the inventor from the patent, it’s easy to see that it’ll be very easy for corporations to take inventions from independent inventors witout paying any licensing fees or royalties, saying that they invented it in-house and own the rights, because they rushed to file the patent first.

Prior User Rights:
  • Current U.S. patent system: Currently, the U.S. “First-to-Invent” patent system gives an “exclusive” and limited time monopoly to the “true inventors”, individuals, which is at the heart and soul of the U.S. patent laws. The patent “excludes” anyone else from making, using, selling or exploiting the invention. Under most circumstances, anyone who is using, making or selling the patented invention is infringing.
  • Worldwide first-to-file system: This is tied in to the worldwide “first-to-file” system. This would allow anybody who claims they were making, using, or selling a product, before the patent owner filed a patent, to continue without paying licensing fees or being sued for infringement. In a patenting environment ruled by large corporations under a “first-to-file” regime, this is a necessary consolation prize to allow wee inventors and small businesses to have limited rights to continue running a business based on an invention where perhaps they were the “original” inventor who couldn’t afford to file a patent(s) first. But they wouldn’t have a patent, thus they wouldn’t have any rights to license, but could only manufacture and sell it themselves). Yet on the flip side, if an independent inventor, who is the true inventor, happens to make it through all the new hoops and hurdles, files a patent first, and becomes successful, he/she wouldn’t be able to stop a large corporation from competing if that large corporation claims “prior user rights”, saying that they were making, using and selling the invention prior to the inventor’s patent filing.
18-month Publication:
  • Current U.S. patent system: The U.S. patent office automatically publishes all patent applications 18 months after filing, unless the inventor “opts out” if he is only going to market his invention in the U.S. This allows the pending patent application to remain secret until it is granted/issued. For patent applications that are rejected by the patent office, the inventors can withdraw the patent applications so that they never get published, which allows them to use the invention under “trade secret” protection where they don’t ever reveal how the invention works.
  • Worldwide first-to-file system: This is tied in to the worldwide “first-to-file” system. The U.S. Patent Office would automatically publish “all” patent applications 18 months after filing - whether pending or rejected, and even if they‘re only going to be marketed in the U.S. Most patents currently take about 3 years to issue because of the backlog of applications at the patent office, so with this provision, pending patent applications would be looked at by competitors worldwide and could be infringed upon even before the patent is granted/issued. Suing for infringement requires that patents be issued/granted, so the patent filer would be helpless to legally stop an infringer until the patent is granted, which would be at least another 18-months (with the current 3 year timeframe to be issued), or more, if it takes longer than 3 years for the patent to be granted.

This is a partial list, this section is being developed, so bookmark it and please check back again.


Patent Reform 2007 - In the News

“Any one of the issues in S. 1145, alone, would be a major change to the U.S. patent system. Currently, arguments by those supporting or opposing S. 1145 seem to be focusing on a few issues related to infringement, calculating damages for infringement, and injunctive relief, which are critically important. But many of the proposed changes in the Patent Reform Act of 2007 are tied-in to the worldwide “first-to-file” system. This first-to-file “package of issues” , along with the infringement issues, will destroy the intrinsic incentives and original intention of the U.S. 200-year old patent system. Why are so few people talking about how detrimental a change to “first-to-file” will be to the independent inventor, our economy and our standard of living?"
--Stephen Paul Gnass

Note: Articles are listed in descending chronological order, with the most recent first.

August 5, 2008 National Journal CongressDaily

Groups Plot Strategy for Patent Overhaul In Next Congress
Legislation aimed at overhauling the patent system has fizzled in the 110th Congress, but industry stakeholders involved in the debate have not stopped strategizing.

May 12, 2008 Intellectual Asset Management Magazine Blog

Bush Administration urges Congress not to give up on patent reform

I have had a couple of comments from US-based readers concerning the blog I posted last Saturday on the demise (or so i thought) of the Patent Reform Act. According to both correspondents, I could be jumping the gun. This is what they had to say...

May 10, 2008 Intellectual Asset Management Magazine Blog

A complete waste of time that has weakened the US patent-owning communities

It has looked dead for a month or so. And now it is. The Patent Reform Act has been officially withdrawn from the schedule of the US Senate and with that decision goes just about any chance it had of being enacted in 2008.

November 7, 2007 The Signal, The College of New Jersey

Patent Reform Act of 2007 only benefits corporations and hurts small inventors
Unfortunately, the American media tends to neglect news without explosions or death. While news of this nature is important, most Americans are clueless as to our government's newest attempt to bow down to globalism: the Patent Reform Act of 2007.

November 1, 2007 AmericanEconomicAlert.org

The Patent Reform Act: Boon to Chinese Pirates

Reforms that Weaken Patent Protection Would Aid Chinese Pirates

November 1, 2007 Forbes.com

Tech Companies Paid Lobbyist $300,000
A group of high-tech companies paid Elmendorf Strategies LLC $300,000 in the first half of 2007 to lobby the federal government in favor of patent reform, according to a recent disclosure form.

October 29, 2007 Townhall.com

The Patent Act Is a Cheat on Americans by Phyllis Schlafly

October 25, 2007 Channel Register

Techies oppose US patent reform bill
More than 430 organizations spanning all fifty US states have fired off a letter urging Senate leaders to oppose a bill that would overhaul the country's patent system. And that includes tech outfits like Qualcomm and AmberWave.

October 25, 2007 CNN Money.com

Tech Industry Seeks to Boost Patent Bill
Tech Industry Seeks to Firm Support for Patent Reform As Senate Legislative Schedule Fills Up

October 23, 2007 PR Newswire.com

More Than 430 Organizations From All 50 States Speak Out Against Proposed Patent Reform Act
Vast range of American industry asks Senate not to jeopardize U.S innovation with misguided patent system overhaul

October 22, 2007 Internet Business Law Services (IBLS)

Update on the US Patent Reform
Gerry Elman, attorney for Elman Technology Law, P.C. and IBLS Contributor, provides the following update on the United States Patent Reform currently in the US Congress.

October 2, 2007 The Register

Mr WebTV skewers US patent bill
The man who invented WebTV thinks the US patent system is on the verge of ruin.

September 21, 2007 SiliconValley.com

Lobbying kicks off against patent bill
A group of manufacturers, start-ups, entrepreneurs and inventors - including Dean Kamen of Segway fame and Steve Perlman, inventor of WebTV - kicked off a lobbying effort Thursday to stop or change the patent reform bill that passed the House two weeks ago.

September 21, 2007 NewsFactor.com

Tech Startups Oppose Patent Reform
The Patent Reform Act, supported by all the big technology companies, would actually hurt those companies, who depend on startups to funnel innovation to them, said Steve Perlman, inventor of WebTV. "A lot of the companies that are for the bill depend on the startup companies that feed them," Perlman said. "They have market power, we don't."

September 21, 2007 WashingtonPost.Com

Inventors protest patent reform bill
Proposed patent reform legislation would kill the value of patents and allow the theft of U.S. intellectual property, a group of inventors says.

September 20, 2007 Yahoo! Finance
Segway Inventor Raps Patent Reform Bill
Cycle of Innovation Threatened by Patent Bill in Congress, Segway Inventor Tells Capitol Hill

September 20, 2007 CNET News.com

Patent law overhaul: Bad for start-ups?
WASHINGTON--Silicon Valley start-ups and independent technologists will suffer if Congress's proposed overhaul of the U.S. patent system succeeds, the brains behind the Segway and Apple's QuickTime video argued Thursday.

September 7, 2007 CNET News.com

White House opposes tech-backed patent bill
As the U.S. House of Representatives prepares to vote as soon as Friday on sweeping changes to the U.S. patent system, the Bush administration is registering its opposition to the high-tech industry-backed bill.

July 3, 2007 Fortune Small Business

A Hollywood inventor protests the patent bill
George Margolin says a new measure would hurt innovators. An interview by FSB Correspondent with George Margolin.

June 19, 2007 Fortune Small Business

Will Congress slam small inventors?
A massive patent reform would be tough on entrepreneurs.

April 19, 2007 CNET News.com

Congress takes new stab at patent system overhaul

WASHINGTON--Politicians from both parties of the U.S. Congress on Wednesday unveiled a new proposal designed to make the most sweeping changes to the nation's patent system in decades.



Patent Reform 2007 Bill S. 1145 Information

THOMAS was launched in January of 1995, at the inception of the 104th Congress. The leadership of the 104th Congress directed the Library of Congress to make federal legislative information freely available to the public. You can check bills, resolutions, activity in Congress, the Congressional Record, schedules, calendars, committee information, etc.
GovTrack.US is a private site that tracks the U.S. government, drawing its information from the THOMAS web site. The layouts are easier to view and understand, though the information may be delayed a little. It's an excellent web site.

BILL S. 1145


(PDF format files can be viewed with Adobe Reader.)

Download Adobe Reader for Free Here


Patent Reform 2007 - Inventors' Voice TM: Instant Action Plan

Note: A bill must be introduced into both the House and the Senate, then it must be approved by a majority of both the House and the Senate, before finally being signed into law by the President. (
For more details about how a bill becomes law, click here.) If either the House or Senate rejects a bill, the bill is dead.

The House already passed bill H.R. 1908 on September 9, 2007. Now bill S. 1145 is pending a vote by the Senate, and is expected to be voted on, at any moment. If the Senate rejects and votes "no" on S. 1145, both bills will be dead! This is the goal!

In our opinion, many inventors are not aware of the changes, and the voice of the independent inventor has not been heard in Washington D.C. You can make a difference! The tipping point can be as few as 100 people contacting their senators to turn the tide!

1. Sample Guide/Outline of How to Write a Message
2. Who to Contact

3. Chain Protest Viral Email Approach: The Power of Multiplication


Note: If possible, try to be original with your message so that they don’t all sound exactly the same. The following only gives you a general idea of what to write. Please be rational, respectful, and professional, and refrain from using profanities and/or negative, emotionally charged comments.

IMPORTANT: You MUST include your name and address in your Congressional correspondence because emails or letters without a full U.S. street address will not be read.

(First, State who you are:)
Dear Honorable (name),
My name is (John Smith) and I'm an (entrepreneur, independent inventor, person with a new idea, small business owner, product developer, etc.). I've been inventing for (x) years, etc. (feel free to add more of your own personalized information here.)

(Next, State your position:)
I am writing to let you know that I just became aware of the proposed patent changes and I strongly oppose bill S. 1145, known as the Patent Reform Act of 2007. (See issues here)(See bill S. 1145 here)

(Then, State your views and opinions:)
I understand that the meetings for these proposed patent changes have been dominated by large corporations, and lack appropriate representation by the small businesses, independent inventors, inventor organizations, and the independent inventor community at large.

I believe that if passed, the Patent Reform Act of 2007 will affect my own ability, as well as other independent inventors, small businesses and innovators, to profit from their inventions and innovations in the future. I believe that making such major changes to the U.S. patent system will impact our economy in a negative way, by removing incentives to invest in innovation e.g., capitalizing on the development, creation and marketing of intellectual property.

(Last, State the conclusion:)
Any one of the issues in bill “S. 1145”, alone, would be a major change to the U.S. patent system that could negatively affect inventors from being granted a patent. Many of the proposed changes in the two bills are tied-in to the worldwide “first-to-file” system. This first-to-file “package of issues” , along with the infringement issues, will destroy the intrinsic incentives and original intention of the U.S. 200-year old patent system, the“First-to-Invent” which favors the creator i.e. inventor.

The U.S. patent system, created by our founding fathers, has been in place for over 200 years and I believe it has been a major catalyst to making the U.S. one of the greatest countries in the world and a leader in the creation of technology and innovation. A strong patent system that supports incentives for independent inventors, that has a level playing field for corporations and entrepreneurs will encourage the spirit of achievement that made this country great.

Please vote "NO" on S. 1145 and the Patent Reform Act of 2007 and maintain the genius of our founding fathers to keep the 200-year old "First-to-Invent" system in place.

Respectfully yours,
(your name)

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The bill S. 1145 is being voted in the Senate. So definitely contact your (2) senators for your state.

U.S. Senate:
Find your state's senators by entering your state at:
It'll bring up a quick form that you can fill out and email to them!

If this is all you have time for, then you're done! But if you have a few more minutes to contact up to five more individuals, the impact will be much greater.

Even though the House already approved their bill H.R. 1908, if you have a few minutes, it would also help to let your local state representative hear from you, even now, so he/she is aware of your opposition to the patent reform.

U.S. House:
Find your state's representatives by entering your state at:
It'll bring up a chart of the states, click your state, and it'll bring up the web sites for your House representatives. Then look for the email form to contact your representatives.


These next two contacts are the chairmen of the House and Senate committees who "introduced" the bills. It's important that everyone contact these individuals!

Title: Chairman, U.S. Senate Committee on the Judiciary
U.S. Senate
Address: 433 Russell Senate Office Building
Washington DC 20510
Phone: (202) 224-4242
Email: %%%senator_leahy@leahy.senate.gov
Web site: leahy.senate.gov
(Note: remove the three percentage characters [%%%] from the email address, they were added to prevent spam.)

Title: Chairman, House Committee on the Judiciary: Courts, the Internet, and Intellectual Property
Address: 2221 Rayburn House Office Building
Washington, D.C. 20515-0528
Phone: (202) 225-4695
Fax: (202) 225-3196
Web site: www.house.gov/berman
Email: %%%howard.berman@mail.house.gov
(Note: remove the three percentage characters [%%%] from the email address, they were added to prevent spam.)


The U.S. Patent Office is run by the U.S. Department of Commerce. So contacting the U.S. Secretary of Commerce as well as contacting the Director of the Patent and Trademark Office will help alert the top two U.S. officials related to the patent office, that independent inventors do not agree with the proposed patent changes.

Title: U.S. Secretary of Commerce
U.S. Department of Commerce
Address: 1401 Constitution Ave., NW
Washington, DC 20230
Phone: (202) 482-2112
Fax: (202) 482-2741
Email: %%%CGutierrez@doc.gov
(Note: remove the three percentage characters [%%%] from the email address, they were added to prevent spam.)

Title: Under Secretary of Commerce for Intellectual Property, and Director
United States Patent and Trademark Office
Crystal Plz. 3, Rm. 2C02, PO Box 1450
Alexandria, VA 22313
(703) 308-4357
Email: Email Jon Dudas

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I believe that many inventors haven’t been aware about the proposed patent changes, and thus the voice of the independent inventor hasn’t been heard in Washington D.C. So the “Tipping Point” doesn’t require that many individuals, probably as few as 50 to 100 can make the difference and change the direction of Senate bill S.1145. Certainly if thousands, or more, inventors contact our representatives, the independent inventor will surely be acknowledged.

So be sure to email other individuals that you know, who should also let their voice be heard on these important issues. Become an "email-activist" by emailing as many people as you can and asking them to also send an instant email. If, for example, you send out 10, your 10 emails can quickly multiply to 100, then 1000, 10,000, 100,000 and so on. This is a positive way to use the chain letter/networking concept for a good cause, and was the successful approach used by our founding fathers (well with letters, not emails!).

If you can also find time to call the office of your senators, in addition to the emails, it will add much more impact to your effort.

1) Contacting your two senators is the most important right now.
2) Also sending this out to friends, family and small businesses owners, small business networks etc. , be creative.

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To receive updates, please check back regularly in to the Inventors' Voice blog at inventorsvoice.blogspot.com.

INVENTORS' VOICE TM. 8306 Wilshire Blvd., Ste 391 Beverly Hills, CA 90211 / 800 458-5624 / inventorsvoice@inventionconvention.com / inventorsvoice.blogspot.com

Copyright 2007. Stephen Paul Gnass. All Rights Reserved.


Patent Reform 2007 - Guest Commentary - IP Law Briefs Newsletter: Inaugural Issue Fall 2007

By Guest Contributor
John Connors, Patent Attorney
Connors & Associates, Inc.

Inaugural Issue – Fall 2007

Dear Clients, Colleagues and Friends:

We are initiating this periodic newsletter to alert you of important developments in intellectual property law, the most troubling of which is the so-called “comprehensive patent reform” legislation that is rapidly moving through Congress, with the House having passed H. R. 1908 on September 9, 2007.

The American patent system is an open system, which allows people from all walks of life to participate in the "American Dream" at a cost that is affordable by inventing and patenting a product that the public wants. Compared to other nations, the American patent system grants the strongest patent rights in the world for protecting inventions, thus encouraging investment in innovation. The proposed changes, outlined below, would make the American patent system essentially equivalent to foreign patent systems, which are much less favorable to small businesses, entrepreneurs, and independent inventors.

The incentive to invest in inventions fostered by strong United States patents has nurtured our economy, the most dynamic in the world, and made us the world’s technology leaders. It is vital for the continued health of the American Spirit of Invention and Free Enterprise that you speak out against the dangerous changes being proposed that will weaken our economy, favoring transnational corporations over those companies that do business primarily in the United States.


We are strongly recommending that our clients—and anyone else wishing to maintain America’s technology leadership—oppose enactment of Senator Leahy’s Companion Senate Bill S. 1145. Here are the facts. The S.1145 and H.R. 1908 patent bills call for:

1. A first-to-file system rather than a first-to-invent system;

2. The elimination of the grace period that gives an inventor one year to file a patent application after the first public use, offer to sell, or publication of his or her invention;

3. The publication of all United States patent applications even through a patent may never be granted;

4. An administrative hearing in the Patent Office (called an opposition) rather than a jury trial as a means of challenging the validity of a granted United States patent; plus

5. Several other provisions diminishing damage awards that will further devalue a United States patent.

A first-to-file system encourages applications to be filed covering an invention that is inadequately developed. Thus, instead of spending money on testing the invention to confirm its viability, the money will be spent on attorney fees and filing costs. Moreover, the elimination of the one-year grace period means the invention cannot safely be tested in the public marketplace. Currently, an inventor can perfect his or her invention before filing a patent application and trust they are protected if first to invent. This time-tested and uniquely American standard has resulted in only a few hundred pending disputes over who is the first inventor.

Our international competitors’ patent systems are modeled after the German patent system that evolved during the 19th century under that nation’s military-industrial economy, which was dominated by cartels. Clearly, these cartels biased the German patent system to favor their interests; namely, that the German system and others like it are not based on a fair bargain of a patent in exchange for public disclosure. The patent application is published, effectively destroying any trade secrets, and the patent may never be granted. Even if granted, it may be opposed and revoked in an opposition conducted in the patent office without a jury trial. Applications may be filed in the name of a corporation. And the most inequitable and Anti-American feature is this: the first one to file is granted the patent instead of the first to invent. Consequently, there is no one-year grace period.

I went to Washington D. C. in 2006 and 2007 with the Orange County Business Council’s delegation to urge California’s representatives to oppose this legislation. Congressman Rohrabacher, a Republican, has been especially helpful, and has spoken out on the House floor in opposition to H.R. 1908 and voted against it. So did Congressman Baca, a Democrat. This is a non-partisan issue. Unfortunately, Senator Feinstein apparently supports S. 1145.

A delegation from the Orange County Business Council met in 2006 with Senator Diane Feinstein (fourth from left). Mr. Connors is shown second from left.
Photo courtesy of Orange County Business Council

I suspect that Senator Feinstein and others in Congress have been misled by a lobbying and public relationship campaign paid for by a consortium of transnational corporations that have conspired to sell a phony story to many members of Congress that the American patent system is broken. The truth is that the courts are doing their job, but the Patent Office is malfunctioning. Here’s why:

(1) There is a backlog of about 800,000 patent applications, which means the average time to patent grant is at least three years, and, in some cases, in excess of five years.

(2) The number of new patent applications filed annually is rapidly approaching 500,000, and a patent examiner is on average allowed only about 20 hours to examine an application regardless of its length or complexity. Given the shortfalls of budgeting and staffing, the Patent Office will, in a few short years, be unable to do the job that inventors and the public expect from it.

(3) To the disadvantage of inventors, the Patent Office is in the process of changing its rules to limit the number of claims and the number of continuation applications that can be filed. This is a vain effort to reduce its backlog. Clearly, one way to avoid the anticipated crushing backlog is for Congress to avoid imposing on the Patent Office the excessively burdensome task of conducting post-grant oppositions. The resources of the Patent Office should be devoted to training the examiner corps and focusing their efforts on greater efficiency by simplifying the rules to expedite examination and reduce the burden on both the applicant and the examiner.

The backlog problem has been created over at least the last 16 years by diverting fees collected by the Patent Office to other branches of government and mismanagement by both Democratic and Republican administrations. Sadly, S.1145 and H.R. 1908 do nothing to fix the situation in the Patent Office. The proposed changes will only compound this problem by switching to a first-to-file system and mandating that oppositions be conducted in the Patent Office.

Another OCBC delegation visited members of Congress in the spring of 2007. SEC Chairman Christopher Cox is shown in the center. Mr. Connors is at the far right.
Photo courtesy of Orange County Business Council

In the European Patent Office about 7% of the granted patent applications are opposed. The number of U. S. patent applications filed will soon be 500,000 annually, with the number of patents being granted approaching 50% of the filed applications. Assuming the same proportion as encountered in the European Patent Office, the U. S. Patent Office should reasonably expect to be handling about 17,500 new opposition cases annually-this in the face of the office’s huge backlog. Moreover, these oppositions are adversarial proceedings deciding disputed factual issues; a job Patent Office personnel are unsuited to perform and that is now reserved to the province of a jury. The result will be a specialized corps of high paid bureaucrats, rather than a jury, who will take an unknown amount of time to decide cases, further increasing the backlog. These bureaucratic elites will make a judgment without the benefit of live testimony to evaluate witness credibility, and after reviewing stacks of papers representing deposition testimony and legal arguments prepared by armies of lawyers hired by a Goliath competitor or competitors (they can gang up) to break the granted patent.

In many cases, the legal costs associated with oppositions will prohibit small businesses and independent inventors from enforcing their patents. The proposed legislative changes, if enacted, will also create an additional hurdle for entrepreneurs to jump that just might be too high, since prospective investors will be reluctant to advance money in launching a start-up business based on an invention when the patent may be bogged down in an opposition while Goliath competitors freely compete with an infringing product or service. Many contingent fee trial lawyers will now accept a patent case because there is a good chance they can get the case to a jury, giving small businesses, entrepreneurs, and independent inventors a real opportunity to enforce their United States patents. An opposition will be a major deterrent to such contingent fee patent litigation.

In the final analysis, an opposition proceeding is not needed. It would only expand the patent bureaucracy and delay enforcing patents. It is being proposed because of alleged deterioration in the quality of United States patents being granted. If this is true (which is highly debatable), the lack of quality needs to be overcome by the Patent Office doing a better job of examination. (Don’t close the barn door after the horse has escaped.) Only commercially important patents are asserted anyway, and through the litigation process they have their validity tested where the facts are determined by a jury in accordance with over 200 years of American patent law jurisprudence. Much of this established law will be set aside if S.1145 and H.R. 1908 become the law. Some Big Tech Firms and Big Banks don’t like the current situation and assert that “trolls” are making them unfairly pay royalties because their high-tech products or services may be covered by many patents. They assert that this creates a barrier to innovation. They are disingenuous! Such Big Tech Firms often assert hundreds of patents against infringers. The number of pending patent lawsuits does not indicate that the federal courts are overloaded. Quite the contrary! The statistics strongly support the view that the patent enforcement component of the American patent system is working:

(1) The average number of patent lawsuits filed annually, including declaratory judgment suits involving a claim of patent infringement, is only a few thousand and is only gradually growing.

(2) The average number of such lawsuits going to trial annually is less than about 10% of those filed.

(3) In recent decisions addressing standards of patentability, issuance of injunctions, “willfulness,” and other important areas, the Supreme Court and the Court of Appeals for the Federal Circuit continue to monitor the patent system and balance the interest of the patentee and the alleged infringer.

(4) And, as the courts have almost always done, they set aside large jury verdicts—for example, the $1.5 billion judgment against Microsoft—that are not supported by the evidence.

I urge you to write your Senator to oppose Leahy S.1145.

Attorney John Connors, right, shown with Congressman Dana Rohrabacher at a social event discussing the pending patent legislation.

New Rules
Very important changes in the Patent Office rules concerning claiming and continuation applications go into effect November 1, 2007. More on these new rules in the coming issues of this newsletter.

Electronic Publication
All future issues of IP Law Briefs will be published electronically and distributed by email. If you wish to be added to our emailing list, please send your email address to ipbriefs@connorspatentlaw.com. His web site is at: www.connorspatentlaw.com

John J. Connors
Patent Attorney



Patent Reform 2007 - Guest Commentary - Patent Reform Act or Patent Dilution Act?

by Guest Contributor
Mark David Torche, Esq.,
Registered Patent Attorney, Patwrite LLC

First let me say that I am a strong believer in the free enterprise system of economics and have nothing against big business and large corporations per se. Of course my law firm specializes in working with private inventors and small businesses, so I naturally tend to identify with the issues most important to them.

The United States Constitution (Article 1, Section 8) empowers Congress: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." Since its inception in 1790 with the passage of the first Federal Patent Act, the US patent system has arguably been the most successful promoter of private innovation in recorded history.

Of course there have been many changes in the system since then, but it has remained a system that tended to equal the playing field and even a poor person with a great invention could force the "big boys" to play nice because of the patent system. We merely have to look to other parts of the world to see the difference in patent philosophies and the way they impact their respective societies.

Almost all countries have a patent system of sorts, but if you look at who is filing and enforcing those patents, you'll see that the U.S. system is well represented by the private inventor. In other countries, the vast majority of patents are filed by large corporations. Additionally, the court systems in other countries are much less accessible to private inventors so even if they have a patent, it is very difficult for them to enforce it.

In spite of its tremendous success record, or perhaps because of it, every few years the U.S. patent system comes under tremendous pressure to fundamentally change it. It is relatively easy to see where this pressure is coming from: big business.

Large multinational corporations do not want to have to deal with a strong independent inventor class that forces them to pay millions in royalties and license agreements. Even though these corporations hold and file many patents themselves, they have the deep pockets necessary to enforce their market share even without a strong patent system.

The U.S. patent system is about to quietly undergo a radical change if the bill that is currently under consideration in the U.S. Senate and recently passed by the House becomes law. Most people are unaware of the drastic changes proposed to the patent system as it seems to be overshadowed by more publicized issues like the war in Iraq or the coming presidential elections.

Changes proposed:

I will not attempt to outline all the changes addressed by this legislation; only the ones that I feel are the most serious to the well being of the private inventor and small businesses that depend on the patent system to protect their inventions.

1. First-to-invent to First-to-file:

This is a fundamental change. Since its inception, the U.S. patent system has always held the basic philosophy that the first person to invent something should be rewarded even if someone else beats them to the patent office. Of course this is not without controversy and expense, but it meshes well with the American sense of "rightness" and has served the private inventor reasonably well throughout its history.

At the very least, a fundamental change of this magnitude deserves a thorough and public discussion allowing all the issues to be presented. This legislation has been mostly 'submarining" through the legislative process with little public debate. Most of the rest of the world already has the first to file system, but again, there is not nearly as robust a private inventor class in these countries. We should be very careful before making such a major change.

2. Patent Searches, Patent Office to Patent Applicant:

Of course I always advise my clients to get a good search before filing a patent application and the U.S. system does not allow patents on inventions that are not unique and new. If your invention is already in the public domain, you are not entitled to a patent.

A good patent search can save would-be inventors lots of money if it turns out that the invention is already known. However, the patent office still performs its own patent search, with full disclosure on the part of the inventor (i.e. the inventor has a legal duty to disclose all known prior art that he or she believes is related to patentability) and relies on its own search to determine patentability.

If the current legislation passes, each applicant would be required to perform the search that the patent office will rely on. While this may sound like a minor change, in reality, this effectively guts the patent system. How, you ask? Because, no patent search is perfect, not the one performed by the applicant (or representative like patent attorney or agent) or the one by the patent office.

The problem with this proposal is on the enforcement side. If it can be shown that the applicant deliberately didn't reveal something germane to patentability, the patent can be invalidated along with civil and criminal penalties. This means that the private inventor presenting an issued patent to a large corporation faces the likely challenge to the patent by the company's legal department. If the search overlooked something - not something that would preclude patentability since that could be used even now to invalidate a patent - but merely something that was relevant to patentability but not disclosed, then the patent will likely be invalidated for fraud on the patent office. This means that basically every patent that has any economic advantage will be subject to invalidation.

There are other major problems with this legislation such as a new way to compute damages, etc. but in my opinion, the two issues above are the most important to the private inventor and small business and should be voted down.

We need to be very careful before radically changing the system that has allowed individuals such as Thomas Edison and George Washington Carver access to a strong patent system. Our system is unique to the United States and is part of the American reality of the "rags to riches" mentality that is unequaled in the rest of the world.

If you have any questions regarding this legislation or other intellectual property law issues, please feel free to contact us toll free at 866-424-7529 or email mark@patwrite.com. His web site is at www.patwrite.com

How to Instantly Find and Email Your Elected Officials

U.S. Senate web site:
Find your state's senators by entering your state at:

It'll bring up a quick form that you can fill out and email to them!

U.S. House Web site:
Find your state's representatives by entering your state at:

It'll bring up a chart of the states, click your state, and it'll bring up the web sites for your House representatives. Then look for the email form to contact your representatives.

Then be sure to email other individuals that you know, who should also let their voice be heard on these important issues.


Why You, Just One Individual, Can Make a Difference

by Stephen Paul Gnass

In our U.S. democratic government, wouldn't it be great if our elected officials frequently contacted us to find out our positions on proposed laws and issues, and made their decisions to vote on legislation, based upon what the majority of their constituents wanted? [Definition of constituent: a person who authorizes another to act in his or her behalf, such as a voter in a district represented by an elected official.]

While our elected officials have a postage budget for mailings within their districts, the sad reality is that we only seem to get personalized mail or phone calls from their staff during election time. It’s extremely rare that we hear from them since our elected officials are not pro-active in reaching out to us, their constituents.

So, the bottom line is that, we the people, are the ones that need to contact our elected officials to let them know what our positions are on proposed laws and issues. Yet it’s understandable that most of us are so busy with our daily lives - commuting to and from work, dropping off and picking up the kids, working, doing the daily chores around the house, etc., that we just don’t have time for researching and studying the many proposed laws and issues or how our elected officials are voting.

Why "He Who Has the Gold Makes the Rules"

What’s ironic is that a corporation has no vote. However, corporations can contribute campaign funding to legislators, which legislators need to get re-elected. But even though legislators may feel obligated to these corporations, the bottom line is that the corporations cannot legally bribe our legislators to make certain decisions. Our legislators have the ultimate decision making ability. So what makes corporations so influential in D.C.?

I believe that once most people vote, they tend to feel that they've done their patriotic duty - we’re taught the importance of voting. But we're not taught the importance of participating in how our system of laws works during our K-12 educations - how to keep up with new bills, the status, etc.. So after voting, people go on with their busy lives.

But it's the gap throughout the periods between voting, that’s really the most important part about a democracy. This is the period when the elected representatives are making the country’s laws - the laws that rule our lives. This is the time when the people, the constituents who have entrusted their representatives with the power to make laws, need to contribute their input, to make laws that benefit them.

But our elected often only hear from lobbyists on behalf of corporations during these crucial times. It seems that the only ones who have time for this are the big corporate interests, who are well funded and can afford to pay lobbyists to focus 100% of their time on specific issues, go to Washington D.C. and personally spend time with our elected officials to let them know what “their” positions are. However, these lobbyists are working for the corporation’s own interests, not the people’s interests.

Since our elected officials often only hear from lobbyists from these corporate interests, too many times they end up basing their decisions on corporate views.

And so it happens that approximately 500 legislators - just 100 senators (2 per state) and about 435 state representatives - determine the laws for the entire country - many times with little input from the American people.

When Democracy “Really” Works

On the other hand, individuals collectively make up the country - about 400 million strong (though of course a portion are children under age 18). So think about it - if you have 10s or 100s of “millions” of individuals who can vote contacting our elected officials about certain issues, who do you think will be listened to? In their own self interests of re-election, do you think that our elected officials will most likely listen to the majority? (Note: Every letter/email/phone call that our elected representatives receive is multiplied by a formula to determine an estimated percentage of the population that thinks the same way, similar to the TV Nielsen ratings. So your one contact really counts as more than just your individual comment.)

And so it turns out that when huge numbers of people get interested in a proposed law or issue and contact their elected representatives, that’s when democracy works! You can see that the “many versus the few” has worked with many key issues, such as with smoking, etc.

But the catch is that, we the people, need to be pro-active and reach out to our elected representatives - in-between the voting seasons, when they’re making the laws of our land.

And that's when our government becomes "by the people, for the people" as envisioned by our founding fathers.

Otherwise, by default, if we don't participate in the lawmaking process, our government could become "by the multinationals, for the multinationals".

Inventors' Voice TM Mission

So the challenges to our government system working by the people, for the people, and to individuals making a difference, would seem to be:

1) informing enough people to help them become aware of proposed legislation

2) getting them up to speed quickly on what's important since people don't have much time in their lives

3) having ways of being able to quickly and easily contact our elected official for little or no cost and with minimal time

This is the goal of Inventors Voice TM in relation to independent inventors and the 200 year old U.S. Patent System. Fortunately, due to access to the internet today, you can quickly and easily contact your elected officials through email forms on their web sites, which takes just a few minutes.

And by reading through this blog, hopefully it'll bring understanding of what the issues are facing independent inventors. If you have any questions, feel free to email us at inventorsvoice@inventionconvention.com

How to Instantly Find and Email Your Elected Officials

U.S. Senate web site: Find your state's senators by entering your state at:

It'll bring up a quick form that you can fill out and email to them!

House Web site: Find your state's representatives by entering your state at:
It'll bring up a chart of the states, click your state, and it'll bring up the web sites for your House representatives.

Then be sure to email other individuals that you know, who should also let their voice be heard on these important issues.

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