Anticipate This!™ | Patent and Trademark Law Blog

Patent Reform Act of 2009.

Posted in General Commentary by Jake Ward on March 3, 2009

As anticipated earlier today by Promote the Progress, new patent reform legislation was introduced today in both the Senate and the House of Representatives.  A copy of the Senate bill may be viewed here.  An identical bill (here) was introduced in the House.

The following list of sources provides some coverage and commentary related to this new legislation.  Enjoy!

  • A report from CNET News on the introduction of the Patent Reform Act of 2009 may be found here.
  • A breakdown of the various provisions, as well as differences from earlier patent law reform legislation, is provided by Professor Crouch at Patently-O here.
  • On a related note, the Toledo Intellectual Property Law Association (TIPLA) recently submitted a letter to Congress on reform measures endorsed by the association (and notably not present in the draft bills).  A copy may be found here
  • A statement from the Pharmaceutical Research and Manufacturers of America (PhRMA), voicing concerns over the damages provisions, is found here.
  • A press release from The Software & Information Industry Association (SIIA), lauding the damages provisions, may be read here.
  • Peter Zura at the 271 Patent Blog (newly redesigned) also discusses highlights and comparison to the previous legislation here.  His noted omissions and highlights are reproduced below for the convenience of our readers.

The notable omissions in the latest draft include:

• No broad USPTO rulemaking authority
• No “Check-21” exemption;
• No “Applicant Quality Submission” provision that would have required all applicants to submit and characterize prior art searches;
• No “automatic publication” at 18 months for all applications;
• No provisions on inequitable conduct.

Highlights include:

• “Hard” First-To-File Rule – providing no grace period, the first person to file gets the patent. Secret prior art (i.e., 102(e)) cannot be sworn behind.

• Damage Apportionment – Damages are determined by looking at the invention’s “specific contribution over the prior art.” Also, reasonable royalties may be calculated by looking at the price of licensing a “similar noninfringing substitute in the relative market.”

• Willfulness – Treble Damages will be limited to instances where the patent owner presents clear and convincing evidence that the defendant(s) acted with “objective recklessness” when infringing (intentionally copied, continued conduct that was not “colorably different” from previous infringement).

• Reexamination – expands reexamination requests so that “any person at any time may file a request for reexamination by the Office of any claim on a patent on the basis of any prior art or documentary evidence.”

• Post Grant Review – “‘‘A post-grant proceeding may be instituted under this chapter pursuant to a cancellation petition filed under section 321 only if—‘‘(1) the petition is filed not later than 12 months after the issuance of the patent or a reissue patent, as the case may be.” [as the case may be?]

• Interlocutory Appeals – “of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.’’

• Venue – ‘‘(1) where the defendant has its principal place of business or in the location or place in which the defendant is incorporated or formed . . . (2) where the defendant has committed substantial acts of infringement and has a regular and established physical facility that the defendant controls and that constitutes a substantial portion of the operations of the defendant; (3) where the primary plaintiff resides, if the primary plaintiff in the action is—‘‘(A) an institution of higher education . . . or (B) a nonprofit organization . . . or (4) where the plaintiff resides, if the sole plaintiff in the action is an individual inventor . . .”

One Response

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  1. Josh Kay said, on April 8, 2009 at 2:15 pm

    So I have read some other articles on this and it seems like the “hard” first to file rule may not be the greatest thing. A lot of people have commented that after the initial switch it will not be a big deal and possibly better. However, others suggest it is not within the scope of the purpose of the constitutions provision for patents and that the system will make it more difficult to obtain patents with regard to overcoming foreign inventions. See http://www.napsnet.com/articles/61068.html. Further, many lawyers seem worried over liability for not filing in time and consequently are not pleased over the prospect of producing patents of a poorer quality to create a faster filing date. See http://www.patentlyo.com/patent/2009/04/law-student-interns-at-pto.html. I am wondering what types of changes will be made to the legislation before enacted in response to these concerns.


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