Senate passes patent reform bill

March 8, 2011 | Intellectual Property News

The Senate has passed a patent reform bill that would incorporate several significant changes including a first-to-file system, enlarged post-grant patent review procedures, and many others. Although the bill still faces challenges before being enacted into law, the Senate’s approval in a vote of 95 in favor and 5 opposed suggests a strong likelihood that much of this bill will ultimately be enacted. Among the more significant features are:

First to file. The bill would end the long history in the United States of granting patents to the first to invent, rather than the first to file a patent application. Most other countries around the world follow a system in which patents are awarded to the first inventor to file a patent application even if another patent applicant could prove to have conceived it first.

Grace period. Current law also allows inventors a one-year grace period between the time of any public disclosures of the invention and the date of the patent application. Under this grace period, public disclosures by anyone—whether by the inventor or any third party—do not work against the inventor as long as the inventor conceived of the invention before the public disclosures and the patent application is filed within a year of the disclosures. The patent reform bill would modify this grace period such that the inventor’s own disclosures do not bar patentability, but the application would not get the benefit of a grace period with respect to third party disclosures.

False marking. The bill seeks to reduce the flood of false marking litigation by eliminating a provision allowing any member of the public to file such a lawsuit. Instead, only those who can prove to have suffered a competitive injury could assert a false marking claim.

Willful infringement. Recent Federal Circuit Court of Appeals decisions have held that an infringer is liable for enhanced damages and attorneys’ fees if it was aware of the patent and was objectively reckless in proceeding with the infringing activity. The bill essentially codifies this prior law, adding that it must be shown by clear and convincing evidence and that close cases should be resolved against a finding of willfulness.

Post grant review. The bill includes new provisions for “post-grant review” of patents, allowing the public additional mechanisms to challenge the propriety of the granting of a patent.