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  • Writer's pictureCassandra L. Wilkinson

Here We Go Again: Patent Reform Act of 2011

On January 25, 2011, Senator Patrick Leahy (D-VT), chairman of the Judiciary Committee, introduced his latest bill on patent reform. The Patent Reform Act of 2011was unanimously approved by the Senate Judiciary Committee, including Senators Orrin Hatch (R-UT) and Charles Grassley (R-IA), and now moves to the Senate floor.If the bill survives the Senate floor relatively intact, it will then make its way to the House of Representatives, where similar bills in the past have only received tentative support.
As approved by the Senate Judiciary Committee, the Patent Reform Act of 2011 can be summarized as follows:1
(Sec. 2)
Amends federal patent law to define the “effective filing date” of a claimed invention as the actual filing date of the patent or the application for patent containing a claim to the invention (thus establishing a first-to-file system to replace the current first-to-invent system), except as specified. Requires the effective filing date for a claimed invention in an application for reissue or reissued patent to be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
Establishes a one-year grace period (a prior art exception) for inventors to file an application after certain disclosures of the claimed invention by the inventor or another who obtained the subject matter from the inventor. Revises provisions concerning novelty and nonobvious subject matter (commonly referred to as conditions for patentability).
Repeals provisions relating to inventions made abroad and statutory invention registration.
Permits a civil action by a patent owner against another patent owner claiming to have the same invention and who has an earlier effective filing date if the invention claimed by the earlier patent owner was derived from the inventor claimed in the patent owned by the person seeking relief. Requires such an action to be filed within a specified one-year period. Replaces interference proceedings with derivation proceedings.
Replaces the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board (the Board).
Requires reports from: (1) the Small Business Administration (SBA) on the effects of eliminating the use of dates of invention in the patent application process, particularly on small businesses, and (2) the U.S. Patent and Trademark Office (USPTO) on the operation of prior user rights in selected countries in the industrialized world.
(Sec. 3)
Modifies requirements regarding the oath or declaration required of an inventor.
Allows a person to whom an inventor has assigned (or is under an obligation to assign) an invention to make an application for patent.
(Sec. 4)
Sets forth a damages determination procedure that requires the court or jury to consider only court-identified methodologies and factors. Authorizes the court to increase damages up to three times (treble damages) the amount found or assessed (inapplicable to specified royalties for provisional rights to inventions claimed in published applications). Allows any party to request that the trier of fact decide infringement and validity questions before the issues of damages and willful infringement are tried (commonly referred to as sequencing or bifurcation). Revises specified defenses and evidentiary requirements, including a bar on using an accused infringer’s failure to obtain the advice of counsel to prove that any infringement was willful or induced.
(Sec. 5)
Allows a person who is not the patent owner to request to cancel as unpatentable one or more claims of patent by filing a petition with the USPTO to institute: (1) post-grant review on any ground that could be raised under specified provisions relating to invalidity of the patent or any claim, and (2) inter partes review (replaces inter partes reexamination procedures) on specified novelty and nonobvious subject matter grounds based on prior art consisting of patents and printed publications. Limits the filing of petitions for post-grant review to the nine-month period beginning after the grant of patent or issuance of a reissue patent. Requires any petition for inter partes review to be filed after the later of: (1) nine months after the grant or reissue, or (2) the date of termination of a post-grant review.
Disallows both forms of review if the petitioner (or real party in interest or privy) has filed: (1) a related civil action, or (2) the petition more than six months after being served with a complaint alleging infringement. Prohibits the petitioner from asserting claims in certain proceedings before the USPTO and International Trade Commission (ITC) and in specified civil actions if such claims were raised or reasonably could have been raised in the respective reviews (in the case of post-grant review, prohibits only raised claims from ITC proceedings and civil actions) that resulted in a final Board decision.
Prohibits the USPTO Director (Director) from authorizing: (1) inter partes review unless information in the petition and any response shows a reasonable likelihood that the petitioner would prevail on at least one of the challenged claims; or (2) post-grant review unless information in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable, or unless such petition raises a novel or unsettled legal question important to other patents or applications. Sets forth a deadline for the Director to make such determinations, which are deemed final and nonappealable.
Requires the Director to prescribe related regulations.
Authorizes the Director to determine whether a substantial new question of patentability is raised by patents and publications discovered by the Director or cited under provisions related to the citation of prior art or reexamination requests.
Allows any person, at any time, to cite to the USPTO: (1) prior art bearing on the patentability of a claim, and (2) statements of the patent owner filed in a proceeding before a federal court or the USPTO in which the patent owner took a position on the scope of any claim of a particular patent. Requires, on written request of the person citing prior art or written statements, that that person’s identity be kept confidential.
(Sec. 6)
Sets forth the Board’s required composition and duties. Allows appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC) from specified Board decisions, including examinations, reexaminations, post-grant and inter partes reviews, and derivation proceedings.
(Sec. 7)
Allows any third party to submit any publication of potential relevance to a patent application.
(Sec. 8)
Requires a district court to transfer a civil patent action if another venue is clearly more convenient than the venue in which the action is pending.
Amends a variety of patent provisions plus the Act commonly known as the Trademark Act of 1946 or the Lanham Act to substitute references to the U.S. District Court for the Eastern District of Virginia for the current references to the U.S. District Court for the District of Columbia.
(Sec. 9)
Authorizes the Director to set or adjust by rule any fee established or charged by the USPTO. Establishes a $400 fee for original patent applications filed non-electronically.
(Sec. 10)
Establishes supplemental examinations to consider, reconsider, and correct information. Requires the Director to order reexamination if a substantial new question of patentability is raised by at least one item of information in the request.
(Sec. 11)
Eliminates the requirement that certain CAFC judges must reside within 50 miles of the District of Columbia.
(Sec. 12)
Defines the term “micro entity” for both an assigned and unassigned application, including specifying for both that an entity qualifies as a small entity if it is so defined in regulations issued by the Director and has not been named on five or more previously filed patent applications.
(Sec. 13)
Decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and correspondingly increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government owned, contractor operated facility. (An existing provision defines the term “funding agreement” as a contract, grant, or cooperative agreement entered into between a federal agency and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the federal government.)
(Sec. 14)
Deems any strategy for reducing, avoiding, or deferring tax liability insufficient to differentiate a claimed invention from the prior art when evaluating specified conditions of patentability.
(Sec. 15)
Prohibits using a failure to disclose the best mode as a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.
(Sec. 17)
Intellectual Property Jurisdiction Clarification Act of 2011 - Amends the federal judicial code to deny to state courts jurisdiction over legal actions relating to patents, plant variety protection, or copyrights.
Grants exclusive jurisdiction to the CAFC of appeals relating to patents or plant variety protection.
Provides for the removal to a U.S. district court of legal actions involving patents, plant variety protection, or copyrights, and for the remand of unrelated matters.
Requires the CAFC to transfer any appeal dealing with designs and unfair competition to the court of appeals for the regional circuit embracing the district from which the appeal has been taken.

UPDATE: The Senate passed the Patent Reform Act of 2011, with certain changes, on March 8, 2011. The vote was 95 for and 5 against. The Act will now be considered by the House of Representatives.

[1] Bill Summary & Status, 112th Congress (2011 - 2012), S.23, CRS Summary; Available from: Thomas (Library of Congress),; Accessed: 2/23/2011.
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