Anticipate This!™ | Patent and Trademark Law Blog

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.

Secretary of Commerce Gary Locke on Patent Law Reform.

Posted in Practice Commentary by Jake Ward on May 7, 2010

There is an interesting article at Politico by Gary Locke, Secretary of Commerce, on the reasons that patent law reform should be enacted.  Most notable, in our opinion, are the portions of the current reform bill that were emphasized by the Secretary for their importance.

The Commerce Department just released a white paper that quantifies the effect America’s patent system has on the economy and job creation and describes the benefits of two key elements of pending patent reform legislation.

First, Congress will grant fee-setting authority to the patent office, which will enable it to adjust the actual costs of the services it provides. This could contribute significantly to the office’s ability to reduce the application backlog by 40 percent.

Second, creating an enhanced post-grant review procedure within the office will provide an alternative to costly — and often lengthy — litigation. It could also provide greater marketplace certainty — at lower cost. This review procedure is expected to be 50-100 times less expensive than litigation.

Thoughts from our readership?

USPTO Proposal for “Track One” Accelerated Patent Examination.

Posted in Practice Commentary by Jake Ward on February 2, 2011

Per this press release from the USPTO earlier today .

USPTO to Issue Proposal for “Track One” Accelerated Patent Examination in Flexible “Three Track” Patent Processing Program

Agency also announces plan to clear backlog of oldest unexamined applications by the end of FY 2011

Washington – The United States Patent and Trademark Office (USPTO) today announced new details on its “Three-Track” program designed to enable applicants to choose the speed with which their patent application is processed. On February 4, 2011, the USPTO will publish in the Federal Register a notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date for a proposed fee of $4,000.

U.S. Commerce Secretary Gary Locke highlighted the “Three-Track” patent examination program, first published for public comment in June 2010, at the White House’s launch of the “Startup America” initiative earlier this week.

“The Patent and Trademark Office plays a key role in promoting innovation and entrepreneurship,” Locke said. “This new system will bring the most valuable patents, as determined by inventors, to market faster and will help shrink the backlog by catering to the business needs of America’s innovators.”

The forthcoming Federal Register notice will request comments from the public on a number of different proposed requirements for participation in Track One, including (a) the proposed fee of $4,000 for each application (to recover the full cost of resources necessary to prevent the delay of other, non-prioritized applications); (b) limits on the number of claims to four independent claims and 30 total claims; (c) application filing through the USPTO’s electronic filing system (EFS-Web); and other such requirements. The comment period will close 30 days after the notice is published.

“Since putting our ‘Three-Track’ proposal out for public comment last summer, we have received feedback from innovators across the country supporting these processing options,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. ”Commenters have been particularly enthusiastic about the option to seek faster examination on their most important applications.”

During the program’s first year, the USPTO plans to limit the number of applications in the program to 10,000 to ensure that the USPTO can meet the 12-month goal.

For smaller entities, the USPTO is working to offer a 50 percent discount on any filing fee associated with Track One, as it does with many other standard processing fees. The patent reform legislation recently introduced in the U.S. Senate would enable the USPTO to set its own fees and thereby extend this discount to small entity applicants.

Agency begins effort to clear oldest unexamined patent cases

The USPTO also announced today a new effort to eliminate the “tail” of backlog applications that were more than 16 months old at the beginning of the fiscal year and had not yet received a first Office Action, known as “Clearing the Oldest Patent Applications” (or COPA). This initiative is a critical first step in reaching the agency’s strategic goal of providing first Office Actions on all new applications in an average of 10 months from their date of filing by 2014.

The goal for fiscal year 2011 is to have a first Office Action completed on nearly all of the 313,000 oldest backlog applications. Reaching this goal, however, is highly dependent on the passage of a fiscal year 2011 budget that would provide sufficient resources for hiring and examiner overtime.

“In the long run, COPA will result in lower overall patent pendency – particularly in light of applicants using the Track One option when it becomes available in the coming months,” Kappos said. “Together, these efforts will make a real difference in the speed at which applicants will be able to get a decision on their patent applications.”