Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     Hat tip to Philip Brooks for noting the upcoming Bio/Pharmaceutical Summit on Intellectual Asset Management Strategies to be held in Baltimore, MD, on January 20-21, 2009.  The Summit's organizer, The Center for Business Intelligence (CBI), plans a two-day, CLE-available conference that includes workshops covering the Hatch-Waxman Act, the MMA, the USPTO and expectations for patent reform, and conference presentations covering antitrust law and LCM, the expected implications of the EC Pharma Inquiry on Industry, tips for assessing your patent portfolio to assign value and identify risks and opportunities, and many others.

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     Seven weeks after Senator Jon Kyl (R-AZ) introduced S.3600, the Patent Reform Act of 2008, on September 25, 2008 (source: GovTracks), the reaction has been predictable, with stakeholders on the pro- and anti-reform sides making their views known. The Advanced Medical Technology Association (AdvaMed) said “improving and modernizing the patent system is clearly important to all sectors of the U.S. economy and we applaud Sen. Kyl and his staff for their leadership and inclusive approach to developing this legislation.” The Biotechnology Industry Organization’s (BIO) President and CEO Jim Greenwood immediately praised Kyl’s legislation, stating that "BIO appreciates the efforts of Senator Kyl and his staff to address the concerns of many stakeholders with the patent reform legislation currently pending in the Senate, and commends him for introducing the Patent Reform Act of 2008 (source: IPWatchdog).

     How will other stakeholders react? If past efforts are any indication, technology companies like Blackberry-maker RIM, which reportedly spent hundreds of thousands of dollars lobbying Congress on legislation including patent reform in 2007, may take the same stance with the 2008 legislation, as will Microsoft, Google, and other tech companies, which formed the Coalition for Patent Fairness and fought big pharmaceutical companies to keep portions of the existing patent system in tact during the battle over the 2007 patent reform effort.

     Bloggers have weighed in on the new legislation, too. “There is practically zero chance that this bill will pass in the current [110^th Congress] session” (source: Peter Zura at the 271blog). Ex-AIPLA executive director Michael Kirk agrees. "Even if the Democrats get to 60 seats in the Senate, I would not count on the legislation being passed,” Kirk said in an exclusive interview with IAM (source: IAM Blog).

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• In Re Bilski (Fed. Cir.; October 30, 2008)

     In In Re Bilski, the Court of Appeals for the Federal Circuit in Washington, DC, sitting en banc, considered the issue of whether certain so-called business methods and other “processes” are eligible for patent protection. Less than a day after the court’s eagerly-anticipated decision, general and legal news media outlets proclaimed the end of patent protection for software-related business methods, and shortly thereafter business associations called for patent reform legislation to expand the Patent Act’s scope to reestablish protections for software inventions. It may take days and perhaps weeks for the debate to subside over exactly how far the Bilski court swung the pendulum away from the pro-patent apex. What is clear, however, is that Bilski did not do away with business methods and general software process patents entirely, although it did tighten the patent eligibility standard for inventions involving processes.

     Section 101 of the Patent Act identifies four categories of patent-eligible subject matter: processes, machines, manufactures, and compositions of matter. The patent claims at issue in Bilski involved a computerized process, specifically a method of hedging risk in the field of commodities trading. 

     Drawing extensively from the Supreme Court’s holding and analysis in Diamond v. Diehr, 450 U.S. 175 (1981) and Gottschalk v. Benson, 409 U.S. 63, 67 (1972), the Federal Circuit recognized that “the question before us then is whether Applicants' claim recites a fundamental principle [i.e., "laws of nature, natural phenomena, and abstract ideas"] and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed.” The definitive test, the court said, involves a determination of whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself.

     A claimed process, the court said, is patent-eligible under § 101 if:  (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

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     35 U.S.C. § 156(d)(1) requires the submission of a patent term extension (PTE) application within 60 days from the date the patentee obtains permission from the FDA to commercially market or use a drug product that is the subject of a new drug application (NDA). This provision was enacted because FDA review of NDAs may take years after a patent covering the drug that is the subject of the NDA has issued by the PTO.

     On June 23, 2008, the U.S. House of Representatives passed by voice vote H.R. 6344, which had been introduced the same day by Rep. Delahunt (D-MA), and is similar to a provision included in the House version of the Patent Reform Act of 2007. The current bill is entitled "To provide emergency authority to delay or toll judicial proceedings in United States district and circuit courts, and for other purposes." Sec. 4 states:

"The Director may accept an application under this section that is filed not later than three business days after the expiration of the 60-day period provided in subsection (d)(1) if the applicant files a petition, not later than five business days after the expiration of that 60-day period, showing, to the satisfaction of the Director, that the delay in filing the application was unintentional."

     The bill would retroactively cover Massachusetts-based The Medicines Company, which filed a PTE application for U.S. Patent No. 5,196,404 on the 62d day after FDA approved its NDA for ANGIOMAX, an anticoagulant.

     Status: Received in the Senate and read twice and referred to the Committee on the Judiciary.

     Hat tip to the Anticipate This! Patent and Trademark Law Blog.

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     Below are links to and highlights of recently published blog posts discussing current events relating to the Patent Reform Act of 2007 (s.1145). It appears from all accounts that Sen. Arlen Specter (R-Pa.), ranking minority member of the Senate Judiciary Committee, and his Republican caucus, may block pending patent reform legislation until there is a "fair and equitable treatment" on the confirmation of federal judges, and resolution of provisions concerning apportionment of damages for patent infringement.

• Patent Bill Hits Impass in the Senate, Wall Street Journal (April 18, 2008)

     Gret Hitt, noting that Patent Reform efforts appear to be stalled in the Senate due to an impass over provisions in S. 1145, quotes Sen. Leahy, Chairman of the Judiciary Committee, as saying, "This was a missed opportunity."

• S.1145: "Not dead, but on ice", IPBIZ (April 17, 2008)

     Quoting a Reuters report, Lawrence Ebert points out that Barack Obama and his patent advisor, Mark Lemley, favor patent reforms, while U.S. trade unions oppose the bill.

• US Patent Reform Stalls as Senate Negotiations Break Down, IP Watch (April 15, 2008)

      Describes how Sen. Leahy's plan to bring s.1145 to a vote was derailed when he failed to agree on several provisions with the panel’s ranking member, Sen. Arlen Specter.

• Cracks Forming in the Passage of Patent Reform Act, 271 Patent Blog (April 9, 2008)

     Peter Zura, one of the first to blog that Sen. Specter was pulling his support for s.1145, quoted a report stating that the Senator "cannot join" his colleagues "on some parts of the bill," citing apportionment of damages as a "principle sticking point."

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     On March 12, 2008, Senate Judiciary Committee Chairman Patrick Leahy (D-VT) issued a press release outlining possible amendments to S.1145, the Patent Reform Act of 2007. As stated in the press release:

"Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.), Committee Member Orrin Hatch (R-Utah), and Ranking Member Arlen Specter (R-Pa.), have been working for months with a bipartisan coalition of senators in preparation of floor consideration of the Patent Reform Act, which would make the first reforms to the country's patent laws in more than 50 years. The Judiciary Committee passed the legislation last July, and Leahy, Hatch and Specter have held dozens of meetings and briefings in the months since, listening to concerns from stakeholders, and working to address the concerns of the wide cross-section of interested parties."

     Apparently, at least some of the Judiciary Committee members and other Senators have been "urging consideration of the legislation in the full Senate for months, and Majority Leader Harry Reid (D-Nev.) has signaled the chamber could take up the bill in April."

     The major proposed amendments to the bill are summarized below and contained in detail here (zip file):

• “Best Mode” – eliminates ‘best mode’ as a ground for invalidating a patent, but maintains it as a requirement to obtain a patent
  
  
• Ex Parte Provision – restores third party ex-parte reexamination
  
  
• Federal Circuit Judges – ensures that any Federal Circuit judge who does not reside within a 50-mile radius of Washington, DC, must use the chambers of an existing courthouse in the district where they reside
  
  
• Interference – provides technical amendment to allow for appeal to the Federal Circuit of USPTO board interference decisions commenced prior to the date of the Act; and amends the bill to delete interference-related provisions and replace with new derivation-related provisions
  
  
• Interlocutory Appeals – limits interlocutory appeals of claim construction orders to those for which the District Court determines there is a reasonable basis for disagreement and the appeal may advance the ultimate termination of the litigation
  
  
• Marking Provision – deletes the marking provision in the bill and maintains the current law
  
  
• “Objective Recklessness” – codifies the Federal Circuit court’s ruling in Seagate, holding that infringement is only willful if the infringer acts with objective recklessness of the patent
  
  
• Patent and Trademark Board Judges – ensures that the appointment of patent and trademark judges is consistent with the Appointments Clause
  
  
• Patent Board Judges – technical amendment to clarify that the Patent Board’s duties include the conduction of derivation proceedings
  
  
• Post-Grant Review – provides technical amendment to delete a redundancy in sec. 338 as created in S. 1145; corrects an inconsistency between S 337 (1) and (2), to preclude requesting or maintaining a post-grant review proceeding after a final decision in litigation on the same patent, based on any issue that was raised or could have been raised, in the litigation; defines “final decision” in the estoppel provision; and provides for technical amendment to delete a redundancy
  
  
• Severability – establishes a severability clause in the bill 
   

    Several sources have reported in the last few weeks that proponents of the bill may not have the required votes to invoke the Cloture Rule, which limits the amount of debate on the floor prior to a vote (thereby blocking any filibuster).

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     A search of Google© on February 4, 2008 (Monday) using the search terms "patent reform" and the date limiter "last 24 hours" returned "about 13,400" hits.  That compares to 15,400 hits for the entire previous week (same search terms, but using the date limiter "last week").  The 24-hour statistic is interesting, because the time period included Super Bowl Sunday when, presumably, even the most staunch advocates for and against patent reform took time off to watch the big game. Today, a search for "patent reform" and "last 24 hours" returned 14,600 hits. Clearly, reporting about patent reform efforts has increased on the Internet. This may be due to the fact that this week and next are considered by many to be the home stretch before the Senate votes on its current version of S.1145, the Patent Reform Act of 2007.

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     The following Notice concerning patent reform was posted on the USPTO website today. Clearly, the Bush Administration is concerned about a potential vote on the Senate's version of the Patent Reform Act of 2007 (S.1145), which was placed on the Senate Calendar in late January. In a letter to Sen. Leahy, dated today, Nathaniel Wienecke, Assistant Secretary of Commerce for Legislative and Intergovernmental Affairs, writes:

"The Administration continues to oppose Section 4, "Right of the Inventor to Obtain Damages." Consequently, we continue to oppose S. 1145 - in its entirety - unless Section 4 is significantly revised, as we believe the resulting harm to a reasonably well-functioning U.S. intellectual property system would outweigh all the bill's useful reforms.

* * *

"Downstream litigation costs can be minimized through patent clarity - offered through such early elucidation mechanisms as applicant quality submissions and post-grant procedures. Flexibility in assessing damages ensures that results can be tailored, avoiding a "one-size-fits-all" approach that pleases no one."

     The entire Notice, which involves a media call tomorrow, is after the jump...

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• IPO Predicts Senate May Attempt to Pass Patent Reform Bill in February

According to the Intellectual Property Owners Association website earlier this week, the "IPO believes Sen. Patrick Leahy (D-VT) will attempt to pass a revised version of S. 1145 [the Patent Reform Act of 2007] in the Senate in February. Major amendments likely will not be available more than a few days in advance of Senate consideration. It is unclear whether the Senate has the votes to pass a bill. If the Senate does pass a bill, it likely will be sent to the House for swift passage by the House without amendments, eliminating the need for a Senate-House conference." 

See this earlier post that discusses some of the obstacles to major patent reform.

• Chart Compares Senate and House Versions

Thanks to lawyer Mark Walters over at the Washington State Patent Law blog for pointing out a useful side-by-side comparison of the House and Senate versions of patent reform legislation currently pending in Congress. The comparison, in the form of a chart, was apparently put together by Foley Hoag last year (so it does not benefit from the Senate's recent Judiciary Committee report) and is available from the Licensing Executive Society website.

• Patent reform comparisons on this blog

     For coverage and comparisons of the patent reform legislation on this blog, see the following previous Patent Reform Act posts: Part 8: Attorney misconduct; Part 7: Submission of prior art search reports; Part 5: 35 U.S.C. § 103(a) (Part II); Part 4: 35 U.S.C. § 103(a) (Part I); Part 3: 35 U.S.C. § 102(a).

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     Several sources (see 271 Blog, for example) are reporting that another obstacle facing patent reform was overcome yesterday when the Senate Judiciary Committee reported on S. 1145, the Patent Reform Act of 2007. According to the Intellectual Property Owners Association (IPO), the "106-page draft report explains in depth the provisions of the bill as approved by the Senate on July 19, 2007, but does not contain any new or compromise provisions."

     So, will patent reform actually happen this year, as some predict? Gene Quinn over at the PLI Blog notes that "patent legislation usually has a gestation period of between 2 to 3 years, and given that Congress began working seriously on some form of patent reform in 2005 the timing is right." On the other hand, industry associations, individuals, and other stakeholders have been pulling Congressional ears in different directions as long as patent reform legislation has been around, so I'm not sure that we'll see significant patent reforms, especially when you consider that several contentious provisions are still present in the Senate bill. However, it seems likely that at least some reforms will be seen this year, as long as Congress doesn't wait too long and get distracted by the election cycle, and some of those anticipated "compromise provisions" make their way into the legislation before the Senate votes.

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     Peter Zura suggested in his article "R.I.P. Patent Reform" (271 Patent Blog) that the Senate will not take action on the Patent Reform Act of 2007, S. 1145, this year. His prediction is based on comments by Matthew Sandgren, counsel to Sen. Orrin Hatch (R-Utah), that were presented at a speech in Washington, D.C. in early November. Peter noted that the biggest sticking points preventing a full Senate vote today are the second window of post-grant review and apportionment of damages provisions. The FDANews Drug Daily Bulletin for Nov. 19, posted a similar summary of Sandgren's comments. The Intellectual Property Owners Association reportedly expects the Senate will consider patent reform in February 2008. 

     The BNA Daily Report for Executives, Nov. 7 and 16, 2007 (subscription required), and other sources suggest that the following stakeholders have been or are still opposed to portions of the Patent Reform Act, and many may continue to yield as much influence as possible to win over Senators: the venture capital industry (at least 30 members who sent Senators a letter earlier in November); Innovation Alliance; American Bar Association's Intellectual Property Law Section; AFL-CIO; Paul R. Michel, Chief Judge of the U.S. Court of Appeals for the Federal Circuit; The Patent Officials Professional Association (the union representing patent examiners); Coalition for 21st Century Patent Reform, whose members include the American Intellectual Property Law Association, as well as companies from the manufacturing, information technology, consumer products, energy, financial services, medical products, pharmaceutical, and biotechnology industries.

     Of course, there are many in favor of the current bill, and would love to see an up vote sooner rather than later. Certain technology companies strongly back patent reform legislation because of provisions they see as leveling the playing field in lawsuits brought by non-practicing entities and so-called "patent trolls."

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Summary:  Patent Reform Act of 2007 would require courts to forward the identify of registered patent practitioners to the Patent Office if practitioners' conduct is linked to an act of inequitable conduct.

     It's not everyday that patent agents and attorneys registered to practice before the U.S. Patent & Trademark Office are found to have committed inequitable conduct by a court of law, despite the fact that inequitable conduct is "indiscriminately pled in nearly every case" as a defense to patent infringement (AIPLA Reports 2007). Nevertheless, patent reformers in Congress have proposed new provisions to the Patent Act, as shown below, which require the Patent Office to consider "appropriate disciplinary action" under 35 U.S.C. § 32 where inequitable conduct is attributed to a registered patent attorney:

"ATTORNEY MISCONDUCT- Upon a finding of inequitable conduct, if there is evidence that the conduct is attributable to a person or persons authorized to practice before the Office, the court shall refer the matter to the Office for appropriate disciplinary action under section 32, and shall order the parties to preserve and make available to the Office any materials that may be relevant to the determination under section 32."

That excerpt is from Section 12 of the Patent Reform Act of 2007, H.R. 1908.

     In case you're a patent practitioner and haven't read section 32 since your patent bar exam days, it says:

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     During the floor debate in Congress over H.R.1908, the Patent Reform Act of 2007, on September 7, 2007, Maryland’s 6th District Representative, Roscoe G. Bartlett, a Republican, rose to criticize last-minute efforts by colleagues whom he contends pushed amendments to the proposed legislation through the House of Representatives.  Apparently, those amendments found their way into the legislation in the late evening hours the night before the full House vote (no doubt by overworked staffers). Dr. Bartlett knows a few things about patents: a scientist himself, one of only three in the House of Representatives, he is the named inventor or co-inventor on several U.S. patents, including those listed below. Of the eight Maryland Representatives in Congress, Bartlett was the only one to vote against passage of H.R.1908 (see related post here). For those interested, the amendments to H.R. 1908 may be viewed here (then scroll down to the 1:33 pm entry).

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Summary: The House version of the Patent Reform Act of 2007 would bar submission of search reports prepared by non-U.S. citizens.

     H.R.1908, the Patent Reform Act of 2007, was introduced in the House of Representatives on April 18, 2007. As proposed, the Bill did not include Section 12, entitled "Additional Information," which made its way into the legislation when the House debated, and eventually passed, H.R.1908 on September 7, 2007. The table below, left column (after the jump), shows the original language of the provision, which would add a new Sec. 123 to Title 35 U.S.C. and grant the PTO authority to require prior art search reports. House Report 110-314 describes the measure as follows:

"The USPTO has discussed the need for some sort of examination support document [ESD] or applicant quality submission to improve the examination process. It may include a thorough search of the art in the field of the invention and in related fields in which one skilled in the art pertaining to the invention would expect to find information applicable to the invention. It is also expected that the information discovered by the search that is material to the patentability of the claimed invention be disclosed to the USPTO along with an analysis of how the information relates to the claimed invention and how the claimed invention is distinguished over the prior art information."

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     The table below shows how Maryland was represented on the House floor during yesterday's vote on passage of H.R.1908, the Patent Reform Act of 2007. 

Comments:

• To see how other legislators voted, click on Final Vote Results for Roll Call 863
  
  
• The see the resolution that was approved by an earlier vote, click on House Report 110-319
  
  
• Click on the Patent Reform Act link to the right for more on this topic

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     The House of Representatives today voted to pass H.R.1908, which is entitled the "Patent Reform Act of 2007."  The final vote, covered live by C-SPAN this afternoon, was 220 in favor of passage, 175 against. The House Report 110-319 can be found here, and includes several Amendments not included in the introduced version of the bill.

Comments:

• Attention now turns to the Senate to see if patent reform will finally see passage in Congress after three years of debate
  
  
• To illustrate how divisive patent reform has become, one Representative called H.R.1908 the "Steal America's Inventions Act" during the debate

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     In an earlier post this week--Seagate vs. Patent Reform Act of 2007--I included a link to R. David Donoghue's Chicago IP Litigation Blog and his post "Is the Patent Reform Act Stalled?"  David may have been onto something, as only a day later blogger Dennis Crouch reported in his post "Congressional Patent Reform is Dead; Long Live Adminstrative Patent Reform" that Congressional Republicans have asked Speaker Pelosi to put the brakes on patent reform legislation. In their letter to Pelosi (D-CA) dated August 30, 2007, available here, Representatives Boenner (R-OH) and Blunt (R-MO) asked for the reprieve to allow additional consensus building "so that all U.S. companies benefit from reforming the patent system rather than advantaging one business model over another." 

Comments:

• The introduced Senate and House versions of patent reform legislation are: S.1145 and H.R.1908, respectively
  


• A search of the Internet revealed Patent Reform Acts of 2005, 2006, and 2007; perhaps we should start looking forward to the 2008 or 2009 versions
  


• The Pelosi letter was copied to Representatives Conyers (D-MI), L. Smith (R-TX), Berman (D-CA), and Coble (R-NC), all members of the House Judiciary Committee (Subcommittee on Courts, the Internet, and Intellectual Property)

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Summary:  Don't get too comfortable with Seagate's "objective recklessness" standard for determining willfulness in patent litigation: the Patent Reform Act of 2007 could change everything.

     35 U.S.C. § 284, enacted in 1952, provides that a court "may increase damages up to three times the amount found or assessed" in the case of willful patent infringement. In 1983, the Federal Circuit established the standard for evaluating willfulness: 

“Where . . . a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”

Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983)(emphasis added).  Thus, an accused infringer could establish that its continued accused activities were done in good faith if it reasonably relied on advice from counsel. The duty of care standard survived until just recently, when the Federal Circuit overruled the standard and held that:

"Proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness." 

In re Seagate Technology, LLC, Civ. No. 830 (Fed. Cir. 2007) (en banc) (Newman, J., Garjarsa, J., concurring).  Under Seagate, a patentee must show by clear and convincing evidence "that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent."  Once the threshold objective standard is satisfied, the patentee "must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." According to the Federal Circuit, the state of mind of the accused infringer is not relevant to this objective inquiry.

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     In an earlier post, the proposed new 35 U.S.C. § 103(a), set forth in the Patent Reform Act of 2007, was summarized.  To illustrate how an obviousness analysis might be approached under the new § 103(a), assume I “invent or discover” a new invention on Day 1 in the U.S., reduce the invention to practice on Day 60, file a provisional patent application in the PTO on Day 80 (without any claims), and file a nonprovisional application on Day 250 (claiming the invention).  Under this scenario, Day 80 could be my “effective filing date” even though the provisional application did not include any claims:

“The ‘effective filing date of a claimed invention' is--(1) the filing date of the patent or the application for patent containing the claim to the invention; or `(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.”   See proposed new § 100(h).

     However, if the invention is not adequately disclosed in the provisional application, my “effective filing date” could be Day 250. 

Comments:

• Clearly the proposed new § 103(a) statutory framework encourages me to rush to the Patent Office to file a patent application as soon as possible after my invention/discovery on Day 1.
  
  
• It wouldn't be too much of a stretch to say that many organizational patent departments operate in a somewhat leisurely manner (or carefully and calculating, depending on your perspective) when it comes to processing invention disclosures.  That's understandable, given that under the first-to-invent system currently in place in the U.S., there is no real urgency when it comes to submitting a patent application to the PTO (absent the need to protect the invention for foreign filing purposes, or if there is a current infringer in the market knocking off your invention).  Invention disclosures will obviously need to be handled in a more expeditious manner under the first-to-file system.

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          The doctrine of obviousness has been called the “cornerstone of American patent law.” That could explain why the Supreme Court’s KSR v. Teleflex decision, which arguably tightened the doctrine in a way that could make it increasingly harder for inventors to obtain patents in the U.S., has resonated so loudly over the last several weeks. On the heels of KSR, however, is another possible shake up of the doctrine, this time emanating from the Legislative Branch in the name of Patent Reform. While it may be too early to ascertain whether the Patent Reform Act of 2007 will make the prospects of obtaining patents in the U.S. more uncertain, it is clear that it will affect the way inventions are analyzed under the doctrine of obviousness.

          Traditionally, the question of whether an invention was obvious under 35 U.S.C. § 103(a) involved considering the four “Graham factors”: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Graham v. John Deere, 383 U.S. 1 (1966). However, under the proposed new § 103(a), as shown in the table below (juxtaposed with the current version of the law and showing proposed changes), the Graham factors may need to be applied in a different manner in the future.

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Although the Senate and House versions of the Patent Reform Act of 2007 (S.1145 and H.R.1908, respectfully) may not find their way into a compromise bill that lands on the President's desk in 2007, the bills provide a glimpse into what the final legislation may look like.  For example, the new law will apparently contain substantial changes to section 102--Conditions for Patentability; Novelty--in order to implement the much-debated "first to file" system of granting patents.

Not everything will change, however.  A new section 102(a)(1)(A) of the law, which may look like the identical versions introduced in the Senate and House, could include some familiar provisions:

"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(A) more than one year before the effective filing date of the claimed invention"

That provision looks like the tried and true absolute novelty bar that patent practitioners are accustomed to (note the familiar one-year grace period).

Section 102(a)(1)(B) of the law, however, could be completely new:

"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(B) one year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"

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No sooner had I posted on this blog that the Senate had not voted a patent reform bill out of the Senate Judiciary Committee, the Committee, like the House Judiciary Committee a few days earlier, produced its own version of patent reform legislation for the full Senate to consider.  Based on a statement by Sen. Patrick Leahy, the Senate bill would:

• Reduce the incentives for patent litigation by making it harder for patent owners to show that another company has willfully infringed its patents (and consequently making it harder to receive an award of treble damages and possibly attorney’s fees);
  
  
• Establish regulatory procedures for re-evaluating patents after they are granted;
  
  
• Include limitations on the availability of jurisdictions where patent holders can file lawsuits by requiring suits to be filed where the plaintiffs or defendants are located, where the alleged infringement took place, or where the parties were incorporated or formed (this limitation could affect the number of filings in popular forums like the plaintiff-friendly Eastern District of Texas, which in 2006 surpassed the Central District of California as the hot-bed of patent litigation in the U.S., according to statistics provided by The Patent Troll Tracker).

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          The U.S. House of Representatives Judiciary Committee this week unanimously voted to move patent reform legislation out of committee and onto the floor of the House of Representatives, a move that makes the Patent Reform Act of 2007 closer to becoming law.  The Senate Judiciary Committee, however, is still evaluating similar legislation and has yet to vote a similar bill out of committee.  It's anyone's guess as to when a final bill will be sent to the President for his signature.

           Those who have followed patent reform legislation will be familiar with the current Judiciary Committee bill, which would, among other things, change the US patent system from one that awards priority of invention to the first person to file a patent application for an invention, regardless of whether someone else came up with the idea first.  The Judiciary Committee's bill retains reforms that would affect the course and outcome of future patent litigation matters in the US.

• Manager's Amendment for the Patent Reform Act of 2007

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