America Invents Act Passes Senate With Broad Support

Posted on March 14, 2011 by Brian Wm. Higgins

S.23 America Invents Act          By an overwhelming vote of 95-5 in favor of reforming U.S. patent laws, the Senate on March 8, 2011, passed S.23, the America Invents Act, originally dubbed the "Patent Reform Act of 2011" when it was introduced January 25, 2011.  The bill, as amended, is now headed to the House where it is likely to be further amended when it reaches the House Judiciary committee (or replaced with a companion bill introduced in the House).

          To pass the legislation, the Senate considered 44 amendments and took six floor votes over a week's period of time, including a vote on a motion to invoke cloture to prevent filibuster.

          Both Maryland Senators--Cardin and Mikulski--voted in favor of the bill (the 5 Nay votes came from Boxer (D-CA), Crapo (R-ID), Risch (R-ID), Ensign (R-NV), and Cantwell (D-WA)). 

          The full text of the amended bill sent to the House is available by clicking on the image below.  A list of the major provisions is also shown.

 

The Senate passed S.23 "America Invents Act" on March 8, 2011

 

          Sec. 1. Short title; table of contents.

          Sec. 2.  First inventor to file. 

          An amendment (S. Amend. 133) to strike the first-to-file provision in S.23 and retain the present first-to-invent system was tabled during debate, by a vote of 87-13.  Sponsored by Sen. Feinstein (D-CA) and co-sponsored by six (including four of the five Senators who did not vote for passage of S.23), the first-to-invent system would continue the long-standing rule that the first person to invent gets the patent, not the first person who files a patent application for the invention.  Noting broad support for maintaining the status quo, Sen. Feinstein stated in her floor remarks:

"[W]e have been the world's leader in innovation, and the first-to-file countries have been playing catchup with our technological advances. So with all due respect, I wouldn't trade America's record of innovation for that of virtually any other country or certainly any first-to-file country.  The genius of America is inventions in small garages and labs, in great ideas that come from inspiration and perspiration in such settings and then take off. So many of America's leading companies--Hewlett Packard, Apple, Google, even AT&T arising from Alexander Graham Bell's lab, for example--started in such settings and grew spectacularly, creating jobs for millions of Americans and lifting our economy and standard of living."
 

                        Sec. 3. Inventor’s oath or declaration. 

          Sec. 4. Virtual marking and advice of counsel. 

          Most of the "Damages" provisions in the version of the bill that was reported out of the Senate Judiciary committe was struck.

          Sec. 5. Post-grant review proceedings. 

          Added "(b) Preliminary Injunctions- If a civil action alleging infringement of a patent is filed within 3 months of the grant of the patent, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed or that such a proceeding has been instituted."

          Sec. 6. Patent Trial and Appeal Board.

          Sec. 7. Preissuance submissions by third parties.

          Sec. 8. Venue.

          Sec. 9. Fee setting authority.

          Sec. 10. Supplemental examination.

          Sec. 11. Residency of Federal Circuit judges.

          Sec. 12. Micro entity defined.

          Sec. 13. Funding agreements.

          Sec. 14. Tax strategies deemed within the prior art.

          Sec. 15. Best mode requirement.

          Sec. 16. Technical amendments.

          Sec. 17. Clarification of jurisdiction.

          Sec. 18. Transitional program for covered business-method patents.

          Sec. 19. Travel expenses and payment of administrative judges.

          Sec. 20. Patent and Trademark Office funding.

          Sec. 21. Satellite offices.

          Sec. 22. Patent Ombudsman Program for small business concerns.

          Sec. 23. Priority examination for technologies important to American competitiveness.

          Sec. 24. Designation of Detroit satellite office.

          Sec. 25. Effective date.

          Sec. 26. Budgetary effects.

 
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Senate Patent Reform Moving Forward

Posted on March 16, 2008 by Brian Wm. Higgins

     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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