A proposal that patents be awarded on a first-to-file ratherthan a first-to-invent basis could help to eliminate time-consuming and costly patent interference court cases.

That's the view of industry patent specialists.of a proposal,part of an advisory committee report to the Secretary ofCommerce on U.S.patent law reform made public this week.Among the other proposals are that patents be publishedwithin 24 months of submission rather than after the patenthas issued and that their ownership be extended from 17 to 20years.

In the U.S., a patent is currently awarded to the person who isthe first to make an invention. Elsewhere in the industrialworld, the patent is awarded to the first person to apply. Thecommission said its first-to-file proposal is intended topromote "harmonization of the world's patent laws."

The proposed first-to-file changes "do away with much of therationale for interference," said Bruce Eisen, chief patentcounsel for Genetics Institute Inc. of Cambridge, Mass. Ideally,"if you file first, you have it," he said.

"A number of key products are the subject of interferenceproceedings," Eisen said. "The current situation is a greatwaste of time and resources. ... Clearly something has to bedone."

"The first-to-file issue has been around for many years," saidGeoffrey Karny, chairman of the Association of BiotechnologyCompanies' patent committee. But now these recommendationshave "provided an opportunity for people to focus on it."

However, Karny is concerned about the first-to-file system. "Iwant to be assured that it will have little to no impact onsmall biotech companies," he said. "That's where much of theinnovation comes from."

The ABC hasn't taken a position yet, he said. "We still need tostudy its effect on small companies."

-- Jennifer Van Brunt BioWorld Staff

(c) 1997 American Health Consultants. All rights reserved.

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