Report from Governmental Affairs

Bright Ideas

  • Print

Congress is considering a fundamental shift in the way patents are approved.

A provision that would replace the “first to invent” standard for approving patents with a “first to file” rule is part of a comprehensive intellectual property bill introduced in the House of Representatives by Rep. Lamar S. Smith, R-Texas. He chairs the Judiciary Subcommittee on Courts, the Internet and Intellectual Property.

In the Senate, the Judiciary Committee has held hearings this year on proposals to change the patent approval process, but no bills have been submitted.

The ABA House of Delegates endorsed the first to file approach in February. In April, William L. LaFuze of Houston presented the association’s position at a hearing sponsored by Smith’s subcommittee.

LaFuze, then the chair of the ABA Section of Intellectual Property Law, described the current U.S. patent approval system as “complicated and cumbersome.” The “proof of invention date” principle on which the system is based can result in lengthy, convoluted, expensive contests between rival inventors, and the right to obtain a patent can be lost on the basis of technicalities, he said.

The United States stands alone in the world today in awarding patents based on proof-of-invention date, LaFuze testified. Adopting a first-inventor-to-file method would improve the U.S. system and bring it into greater harmony with patent systems around the globe, he said.

“In recent years, the U.S. patent system has come to work progressively less well when measured against characteristics that best serve the interest of promoting invention and innovation, and today operates with an unacceptable degree of uncertainty and unpredictability,” LaFuze testified.

The ABA also supports legislation to eliminate “user fee diversion”—the practice Congress uses to spend some of the user fees collected by the Patent and Trademark Office on other things. In addition, across-the-board user fee increases enacted in 2004 with a two year sunset provision would be made permanent under H.R. 2791. (Under current budget projections, user fee diversion will not occur in fiscal year 2006.)

Ending user fee diversion has been high on the ABA’s legislative priorities list for years. The ABA also maintains that it is essential to link user fee increases to a guarantee that the fees will be used exclusively to fund the PTO.

Seeking a Single Standard

The ABA endorses federal legislation to confirm what standards courts should apply in deciding cases involving so called famous trademarks after the U.S. Supreme Court’s 2003 ruling in Moseley v. V Secret Catalogue Inc., 537 U.S. 418.

Since 1995, the Federal Trademark Dilution Act has protected famous trademarks from commercial use by others in a way that lessens their distinctive quality. In Moseley, the Supreme Court ruled that courts should use an “actual dilution” standard in applying the law. But the PTO’s Trademark Trial and Appeal Board has used a “likelihood of dilution” standard.

The proposed Trademark Dilution Revision Act, which has passed in the House, would amend the 1995 law to affirm the intention of Congress that the standard for determining whether dilution of famous trademarks occurred should be likelihood of dilution. The legislation also would affirm that the 1995 law provides for a cause of action based on dilution of a famous trademark by tarnishment. Language in the Moseley decision had put the existence of such a cause of action under the earlier law into question.


This column is written by the ABA Governmental Affairs Office and discusses advocacy efforts by the ABA relating to issues being addressed by Congress and the executive branch of the federal government.

Rhonda McMillion is editor of Washington Letter, an ABA Governmental Affairs Office publication.

Give us feedback, share a story tip or update, or report an error.