Anticipate This!™ | Patent and Trademark Law Blog

Patent Reform Act of 2007 – Initiatives Relevant to Prosecution.

Posted in General Commentary, Statute Commentary by Jake Ward on January 27, 2008


Considering the likelihood that we may actually see the Patent Reform Act of 2007 become a legal reality this year, this post highlights initiatives in the bills presently before Congress that may be of particular interest to patent prosecutors.  Much of the following information may also be found in the CRS Report and the Senate Committee Draft Report previously commented on by the AT!.


In an effort to harmonize U.S. law with the rest of the world, the U.S. would shift to a “first-inventor-to-file” from the present “first-to-invent” system in determining which individual has a right to a patent on an invention.  Under the “first-inventor-to file” system, an inventor who first files an application at the patent office will be presumptively entitled to the patent.  Unlike the present “first-to-invent” system, whether the first applicant was actually the first individual to complete the invention in the field will be irrelevant. 

The shift will also eliminate “interference” proceedings.  Interferences are complex and costly administrative proceedings that, although not commonly used, allow the Patent Office to determine the true first inventor of a contested invention.

Notably, the “first-inventor-to-file” system will still prohibit derivation where one individual copies another individual’s invention and then races to the patent office to file first.  To prevent individuals from obtaining patents on inventions obtained by derivation, both bills provide for an “inventor’s rights contest” that will allow the Patent Office to determine which applicant is entitled to a patent on a particular invention.

One-Year Grace Period:

Under current U.S. law, a public disclosure of an invention, such as a public use, sale, or publication thereof, starts a one-year clock running in which an inventor must file a patent application or the invention is dedicated to the public domain. 

According to the present bills, and potentially contingent upon a reciprocal change to European and Japanese patent laws, disclosures will qualify as prior art if they were made by 1) the inventor more than one year before the patent application’s filing date; or 2) a third party prior to the filing date and prior to the inventor’s disclosure.  Thus, an inventor would still be protected from losing a right to a patent by the inventor’s own disclosure.  However, the grace period would not protected the inventor from an earlier disclosure of a third party.

Assignee Filing:

Presently, only an inventor may make an application for a patent.  An inventor is also required to declare by appropriate oath or declaration that he or she is the “original and first inventor”.  The proposed S.1145 initiative allows, however, that a “person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.”  Thus, an assignee-company would be able to file a patent application on behalf of an inventor-employee having an obligation to assign to the company.

Post-Grant Review:

Post issuance review of an issued U.S. patent is currently conducted by reexamination proceedings (available both in ex parte and inter partes types).  To initiate a reexamination, any individual may cite art that raises a new and substantial question of patentability with respect to the issued patent.  For a variety of reasons not discussed here, however, reexamination proceedings have been sparingly used.

The present bills would provide a “post-grant review” proceeding that would begin, for example, within 12 months of the date the patent was issued.  The proceeding would give the patent owner an opportunity to amend to overcome any issues raised.  Importantly, a decision from the Patent Office would be required within one year of commencement of the review, and any patent left standing would be protected from a reassertion in other legal proceedings of the issues raised during post-grant review.

Pre-Grant Publications:

Most patent applications presently publish 18 months after filing, although an applicant may decide to opt out of publication as long as the applicant certifies that the invention will not be the subject of a foreign patent application.  The House and Senate bills would eliminate a possibility of opting out of pre-grant publication.

Pre-Issuance Art Submission:

Under the current law, a protest may be filed by any member of the public against a pending application under certain, and very narrow, circumstances (i.e., prior to the first of the date the application was published or the mailing of a notice of allowance).  Under the proposed initiatives, any person would be able to submit patent documents and other printed publications to the Patent Office within the later of 1) an issuance of a notice of allowance,  or 2) six months after pre-grant publication or the rejection of any claim in the application.  The submission would have to include a concise description of the relevance of each submitted document.

Tax Planning Method Patents:

Under the House proposal, tax planning method patents would be banned.  See the previous AT! post on tax-related patents here.

Mandatory Search Reports (aka Applicant Self-Examination):

Applicants are presently under a duty of disclosure to the Patent Office to indicate any art of which they are aware that may be material to patentability.  See a previous AT! article on the duty of disclosure here.

The Senate bill would also require that “applicants submit a search report and other information and analysis relevant to patentability”.  As compliance with this requirement would be costly (not even to mention the potential for inequitable conduct ramifications), an applicant would be exempted if it would qualify as a “micro-entity”.  This determination would be based on an enumerated list of factors including: income level; number of patent applications filed; small entity status; and assignment activity.

Inequitable Conduct:

See the previous AT! article on inequitable conduct here

The H.R. 1908 bill would provide that a holding of inequitable conduct is appropriate only if the patentee, its agents, or another person with a duty of disclosure to the USPTO intentionally misrepresents or fails to disclose material information, such that the USPTO would “have made a prima facie finding of unpatentability.”  S. 1145 would provide that information is material if it is not cumulative to evidence already before the Examiner, and “a reasonable patent examiner would consider such information important in deciding whether to allow the patent application.”  The standard for proving inequitable conduct would be set at “clear and convincing”.

USPTO Rulemaking Authority:

The Patent Office is currently limit to establishing regulations that govern the conduct of proceedings before it, and the recognition and conduct of patent attorneys.  The Senate bill would further grant the authority to “set or adjust by rule any fee established or charged by the Office”.  The House bill would authorize the Patent Office to “promulgate regulations to ensure the quality and timeliness of applications and their examination”.  The language of the House bill could greatly affect the Patent Office’s proposed claims and continuations rules presently being litigated, and that have been enjoined from becoming effective pending the outcome of the litigation.  See AT! post on the claims and continuations rules here, here, and here.

JW Note:  We would be greatly interested in hearing about the concerns of our practitioner-readers relating to the legislation.  Leave your comments as you may!

CRS Report – Patent Reform in the 110th Congress.

Posted in General Commentary, Statute Commentary by Jake Ward on January 26, 2008

The Congressional Research Service (CRS) is a research arm of the United States Congress that has been in operation since since 1914 (first established as the Legislative Reference Service).   CRS provides policy and legal analysis to committees and Members of both the House and Senate, regardless of party affiliation.  CRS experts assist at every stage of the legislative process, from the early considerations that precede bill drafting, through committee hearings and floor debate, and to the oversight of enacted laws and various agency activities. 

John R. Thomas, Professor of Law at the George Washington University and visiting scholar for the CRS, has prepared a CRS Report for Congress, titled Patent Reform in the 110th Congress:  Innovation Issues.  The 46-page report covers both similarities and differences between H.R. 1908 (having already passed the House) and S. 1145 (widely predicted to pass the Senate this term).  The below simple chart provided by the report nicely shows a high-level overview of the various initiatives being considered:

  PRA Inits

The report is also surprisingly well balanced, and clearly identifies many of the arguments typically made by parties both pro- and con- particular reform initiatives.  We consider this report a “must read” for any practitioner who might want a good overview of the various reforms being considered, as well as rationale and potential pitfalls associated with each.

Senator Harry Reid on Patent Reform – A Priority For The First Session of 2008.

Posted in General Commentary, Statute Commentary by Jake Ward on January 23, 2008

Via the Tahoe Daily Tribune, majority leader Sen. Harry Reid outlined Democrats’ legislative priorities for the first session of 2008 during a statement on the U.S. Senate floor today.  Regarding patent law reform:

Once we work these issues out, time permitting, we will also turn to two other priorities in this first work period: patent reform and an energy package. On patent reform, we must carefully strike the right balance with a bill that promotes rather than blocks innovation from enterprising entrepreneurs. The energy package consists of dozens of land and water bills that have already passed the House and the Senate Energy committee by overwhelming bipartisan margins. Among these worthy and non-controversial measures are Senator Murray’s ‘wild sky wilderness’ bill, which she has championed now for more than five years.

If not for the obstruction of just a few Senators, we would have passed these bills last year. I am hopeful that the overwhelming majority of Senators – Democrats and Republicans alike – will have their voices heard this year.

Hat tips to Zura and Patently-O.

See also a previous AT! post on the Draft Committee Report for the Patent Reform Act of 2007 here.

Draft Committee Report on The Patent Reform Act of 2007.

Posted in Statute Commentary by Jake Ward on January 15, 2008

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
(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
(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.

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.

Patent Reform Bill Stalling?

Posted in Statute Commentary by Jake Ward on June 12, 2007

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.

Posted in Statute Commentary by Jake Ward on April 19, 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?

Posted in Statute Commentary by Jake Ward on May 23, 2006

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?