The Senate has a substitute bill titled the Patent Reform Act of 2010. Below is a summary of this bill:
A. Patent Application Related.
- First to File System. The one-year grace period would be eliminated unless the inventor was the first discloser.
- Micro-Entity. A new entity called a “micro entity” is created for entities with less than 5 patent applications that quality for reduced fees (less than small entity fees).
- Post-Grant Review. A new system of post-grant reviews handled by the appeals board.
- Third-Party Prior Art Submissions. Pre-issuance submissions of prior art would be allowed.
- Fees. The USPTO would be given authority to adjust its fees.
B. Patent Litigation Related.
- Venue. Specifies that cases should be transferred to venues that are “clearly more convenient.”
- Right to Trial in Segments. Creates a right to split a trial into segments (infringement/validity; damages; willfulness).
- Enhanced Damages Requirements. Specifies that enhanced damages are for “willful infringement” wherein knowledge alone of the patent is insufficient and that any close case should be decided against willfulness.
- False Marking Lawsuits. To bring a false patent marking claim you would now need to have “suffered a competitive injury.”
- Best Mode Requirement. Best mode would still be required, but failure to fulfill the best mode requirement would no longer be an invalidity defense or a basis for holding a patent unenforceable.
The USPTO filed a joint motion with GlaxoSmithKline to dismiss the lawsuit related to regulations affecting the ability to secure patent protection for inventions. Director of the USPTO David Kappos stated:
The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market. These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public. We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the appeal and vacate the district court’s decision. This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.
While the USPTO’s decision was expected based upon prior comments from the USPTO, this joint motion is excellent news for all patent applicants to avoid being severely limited in seeking patent protection on important technology.
LITIGATION HISTORY. In August 2007, the USPTO published new rules intended to help improve examination efficiency and quality. The proposed rules would have permitted a patent applicant to only file two (2) continuation applications and one (1) request for continued examination (RCE) per application family as a matter of right. For a third or subsequent continuation application or RCE, the applicant would have had to make a case to the USPTO to show why the additional filing was needed. In the fall of 2007, GlaxoSmithKline and Dr. Tafas filed a lawsuit against the USPTO in U.S. District Court of the Eastern District of Virginia seeking a preliminary injunction to stop the new rules. In April 2008, the Court granted a permanent injunction against the new rules and the USPTO appealed to the U.S. Court of Appeals for the Federal Circuit which partially ruled in favor of the USPTO. A rehearing was granted by the Federal Circuit with additional briefing to have started in the coming weeks.
The Senate Judiciary Committee has approved an amended form of S.515. One of the biggest changes to the patent system is the “first to file” system which would replace the current “first to invent” system. This will encourage patent applicants to file earlier to establish an earlier filing date instead of relying upon their date of invention for priority because patent applicants will no longer be able to “swear behind” another patent reference. S 515 as Amended
