Draft Committee Report on The Patent Reform Act of 2007.

A draft report on the Patent Reform Act of 2007 by the Senate Committee on the Judiciary is presently circulating the internet.  

The 106-page report includes the following:

I.  Background and Purpose of S. 1145, the Patent Reform Act of 2007
II.  History of the Bill and Committee Consideration
III.  Section-by-Section Summary of the Bill
IV.  Cost Estimate
V.  Regulatory Impact Evaluation
VI.  Changes to Existing Law Made by the Bill, as Reported 

The reported summary of changes is stated as follows:

(1) title the Act the Patent Reform Act of 2007;
(2) change the system to a “first-inventor-to-file” system;
(3) make it simpler for patent applicants to file and prosecute their applications;
(4) codify and clarify the standard for calculating reasonable royalty damage awards, as well as
awards for willful infringement;
(5) create a relatively efficient and inexpensive administrative system for resolution of patent
validity issues before the USPTO;
(6) establish the Patent Trial and Appeal Board;
(7) provide for eventual publication of all applications and enhance the utility of third parties’
submissions of relevant information regarding filed applications;
(8) improve venue in patent cases and provides for appeals of claim construction orders when
warranted;
(9) give the USPTO the ability to set its fees;
(10) remove the residency restriction for judges on the United States Court of Appeals for the
Federal Circuit;
(11) authorize USPTO to require patent searches with explanations when a patent application is
filed;
(12) codify and improve the doctrine of inequitable conduct;
(13) give the Director of the USPTO discretion to accept late filings in certain instances;
(14) limit patent liability for institutions implementing the “Check 21” program;
(15) end USPTO “fee diversion”;
(16) make necessary technical amendments; and
(17) set the effective date of the Act. 

Hat tip to the Patent Docs for bringing this report to the attention of the blogosphere.  Patently-O opines that the bill could pass. 

See also previous AT! posts on this topic here.  Do our readers have any thoughts about particular provisions in the bill?

S. 1145: Patent Reform Act of 2007 - Update.

In case you didn’t have enough to worry about with the upcoming implementation of the new USPTO claims and continuations rules (pending a preliminary injunction in GSK v. USPTO, of course) below is a quick update on the Patent Reform Act of 2007.

S. 1145 is presently being considered by the Senate.  The bill is sponsored by Sen. Patrick Leahy [D-VT], Sen. Robert Bennett [R-UT], Sen. John Cornyn [R-TX], Sen. Larry Craig [R-ID], Sen. Michael Crapo [R-ID], Sen. Orrin Hatch [R-UT], Sen. Ken Salazar [D-CO], Sen. Charles Schumer [D-NY], Sen. Gordon Smith [R-OR], and Sen. Sheldon Whitehouse [D-RI].  

On September 7th, 2007,  identical bill H.R. 1908 passed the House by roll call vote (73% of Democrats supporting, 67% of Republicans opposing.)

Notable provisions of S. 1145 include:

• Defining “inventor” to include a joint inventor and coinventor;
• Switching to a first-to-file system from the present first-to-invent system; 
• Revising procedures for patent interference disputes;
• Revising requirements for an inventor’s oath or declaration to allow substitute statements in specified circumstances (e.g., death or disability) and supplemental and corrected statements;
• Allowing a third party assignee (other than the inventor) or a person with a proprietary interest to file a patent application;
• Modifying provisions relating to damages for patent infringement to: (1) require a court to conduct an analysis of a patent’s specific contribution over prior art; (2) allow increased damages for willfull patent infringement; and (3) expand the prior user defense;
• Renaming the Board of Patent Appeals and Interferences as the Patent Trial and Appeal Board and revising provisions relating to the Board’s composition, duties, and authorities;
• Allowing a person who is not the patent owner to file a petition with the Board to cancel a patent as invalid (post-grant review), and setting forth procedures for the consideration of such petitions, including provisions to prevent harassment of patent owners and abuse of process;
• Allowing third parties to submit documents relevant to the examination of a patent application; and
• Revising venue requirements for civil patent actions against individuals and corporations to allow actions to be brought in the judicial district where either party resides (currently, where the defendant resides) or where the corporation has its principal place of business or was incorporated.

Information available via GovTrack:  An independent, non-partisan and non-commercial website that brings together information on the status of federal legislation, voting records, and other congressional data from official sources.  Also includes floor speeches on the legislation, which are quite interesting to read.

See also comments from Patently-O related to the bi-partisan nature the present lack of the requisite 60 votes to close debate on the bill.

Patent Reform Bill Stalling?

According to a number of reputable sources in the patent blogosphere (e.g., Promote the Progress, Patent Prospector, 271 Patent Blog), the Patent Reform Act of 2007 may be stalling in the U.S. Senate.  Following the hearings on June 6th, a number of Senators have issued a letter asking for more hearings, with notable concerns being stated as follows: 

Specifically, we believe that the issue of mandatory apportionment of damages, post-grant opposition, and broad rulemaking authority for USPTO need to be more carefully examined to ensure that they do not undermine innovation, increase frivolous litigation, or undermine property rights.

The Patent Prospector has provided a copy of the letter here.

Patent Reform Act of 2007.

Well, a new set of patent-related legislation has arrived in the U.S. Congress.  In recent years, patent reform legislation has been proposed, but has stalled each time the topic was raised.  It remains to be seen whether this round will be different.

Prof. Joe Scott Miller at The Fire of Genius has provided the text versions of the the Senate and House Patent Reform Acts of 2007 here:  Senate S.1145 and House H.1908.

We also suggest perusal of an interesting article on the Patent Reform Act of 2007 from the Washington Post.  This article points out the industry giants (Big Pharma versus High Tech, for example) taking sides on patent reform, and their clashing views of how the patent system should work.  A good read if you have a few minutes.

Are You Sure You Want Six Paragraphs?

For a variety of reasons, many practitioners don’t.  35 U.S.C. § 112, sixth paragraph, has been a subject of contentious debate in patent practice.  The AIPLA has previously passed a Resolution to amend Section 112, sixth paragraph.  See AIPLA Bulletin, October-November-December 1994, 137-138.  Additionally, the ABA had previously considered a Resolution to delete the paragraph altogether.  See ABA Intellectual Property Law Section Proposed Resolution 152-3, Deletion of Sixth Paragraph of 35 U.S.C. Sect. 112. 

Why, you may ask?  Well let me explain. 

The sixth paragraph of Section 112 states:  “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

The PTO, in making a determination of patentability used to interpret a “means or step plus function” limitation by giving it the “broadest reasonable interpretation.” Under the former practice, a limitation was interpreted as reading on any prior art means or step which performed the function specified in the claim without regard for whether the prior art means or step was equivalent to the corresponding structure, material or acts described in the specification. 

Those days are long gone, however, and the PTO currently interprets means-plus-function language in accordance with the CAFC rulings in In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994) and In re Dossel, 115 F.3d 942 (Fed. Cir. 1997).  According to the guidelines at MPEP 2181, the PTO interprets means-plus-function claims in accordance with the corresponding structures, materials, or acts describe in the specification, and equivalents thereof.  Means-plus-function elements are therefore limited to what is disclosed in the written description and equivalents.

Well, you many notice that the PTO guidelines for interpreting means-plus-function language can result in some interesting and problematic situations.  For instance, it is technically possible for patents covering different inventions to issue with identical claims, since the claims are distinguished during prosecution through incorporation of “corresponding structures” from the specification! Furthermore, these guidelines can constrain the scope of the claims to no more than the preferred embodiment regardless of the actual scope of the invention!  There is also serious risk of indefiniteness related to the questions of what disclosure and how much of the disclosure should be incorporated.

As far as I am aware, these issues continue to be relevant. Although I am not in favor of completely removing the paragraph, since the section could be very useful in providing the true scope of an applicant’s invention (without the need for listing a multitude of alternatives in the specification), the paragraph needs some well-planned revising to avoid the aforementioned problems.   

As a potential topic for discussion or future posts, I’m curious whether the proposed Patent Reform Act of 2005 or other patent legislation affects this issue?