The bill would change the U.S. patent system from a first-to-invent systems into a first-to-file system, something Lofgren supports. But in a phone interview Friday, Lofgren also said “there are some serious defects in the bill.”
Once a supporter who helped push the bill out of committee, Lofgren voted against The Leahy-Smith America Invents Act. The bill passed by a 304-117 vote. Lofgren’s primary complaint is that unlike the Senate’s bill, the House version does not ban the diversion of fees to the U.S. Patent and Trademark office.
“Although there was some window dressing, the fact is, that has not changed,” Lofgren said. “The major rationale behind this bill, they took out.”
The bill would also allow patents to be challenged based on evidence of prior use or sale, factors that can’t be considered under current rules. Lofgren said she received several emails from general counsel at Silicon Valley tech companies during the House debate who said the provision could ultimately hurt inventors.
“Inventors could be forced to pay licensing fees for something they’ve invented,” Lofgren said. “That’s a tremendous concern.”
Lawyers in Silicon Valley agree that there’s not much left in the bill after provisions designed to rein in patent infringement damage awards were stripped from both the Senate and House versions.
The bill “won’t significantly change the amount or nature of patent litigation,” said Mark Lemley, director of the Stanford Program in Law, Science and Technology and a partner at Durie Tangri. “Though patent prosecution lawyers will have to learn new rules for the first-to-file system, and eventually litigators will too.”