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Senator Schumer Asks PTO to Delay Implementing New Rules.

Posted in Practice Commentary by Jake Ward on October 30, 2007

On Thursday, October 25, 2007, Senator Charles Schumer (D-NY), a Judiciary Committee member, sent the USPTO a letter raising concerns about the claims and continuations rules and requesting a delay in implementation of the new rules so that all parties can make further inquiries. 

The letter and further commentary are available via Gene Quinn at the PLI Blog.

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

Posted in Statute Commentary by Jake Ward on October 30, 2007

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.