Category Archives: Patent Reform

Senate Votes on Two Patent Reform Amendments

Senators have completed votes on two amendments to the patent reform legislation (America Invents Act – S. 23) currently being debated.

The first was a managers’ amendment offered by Judiciary Committee Chairman Pat Leahy (D-VT) and Ranking Member Chuck Grassley (R-IA). It was adopted by a vote of 97-2.

A press release from Leahy’s office notes the key provisions in this amendment:

  • Change the short title of the legislation to “The America Invents Act”
  • Correct the fee setting section to avoid any potential “blue slip” issues
    • BACKGROUND: Revenue raising legislation must begin in the House of Representatives.  This provision will address any possible concerns that the bill as originally drafted could lead to so-called blue slip concerns regarding its origin.
  • Provide a 50 percent reduction in application and search fees for small entities requesting accelerated patent examination at the U.S. Patent and Trademark Office (USPTO)
    • BACKGROUND: The USPTO recently created a “fast track” process to allow applicants to pay an additional fee to cover the cost of having examiners work overtime on certain applications.  This provision will ensure that small businesses and inventors receive a 50 percent reduction in the fee.
  • Require the creation of three new USPTO satellite offices, subject to the availability of funds; require the USPTO to ensure geographic diversity in the selection of offices; and require reports to Congress on the rationale for the selection of locations
    • BACKGROUND: The USPTO announced in December its intention to open a satellite office in Detroit, Michigan.  The USPTO intends to open three more satellite offices in the next several years.
  • End fee diversion at the U.S. Patent and Trademark Office; establish a revolving fund to ensure that funds collected by the USPTO can be used at the USPTO
    • BACKGROUND: This provision will benefit users of the patent system who expect the money they pay in fees to be used for patent services and operations, and will benefit the patent office, which is completely user-funded, by allowing the USPTO to budget for the future.
  • Create a pilot program to review the validity of business method patents
    • BACKGROUND: Many business method patents are of dubious validity because they are not truly inventive.  This provision will create a temporary, limited proceeding at the USPTO to challenge business method patents.
  • Strike provisions related to damages and venue
    • BACKGROUND: These provisions as currently drafted do not make substantive changes to existing law.  The current damages provisions establish a gatekeeper role for the court, but do not change the actual legal standard for awarding damages.  The current venue provisions codify recent circuit court decisions, provide useful clarity, but make no meaningful change to applicable law.  Striking these provisions will address recent concerns of the high tech community, and address concerns of certain Members of the House.
  • Change the definition of a “micro entity”
    • BACKGROUND: This provision will provide more clarity and increase the income threshold.
  • Technical changes
    • BACKGROUND: This provision makes minor modifications to effective dates, federal jurisdiction and residency requirements of Federal Circuit judges.

The second amendment, offered by Senators Pat Toomey (R-PA) and David Vitter (R-LA), was tabled by a vote of 52-47.

It contained provisions of Toomey’s Full Faith and Credit Act, which would “ensure that the U.S. government does not default on its debt by requiring the Treasury to prioritize payments on the debt in case the debt ceiling is not raised,” according to a press release from his office.

Vitter’s portion of the amendment would introduce the same protections for Social Security payments.

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Senate to Begin Debate on Patent Reform Act

The Senate on Monday “will begin debating a bill that critics say will undermine American strength abroad, plunder the United States economy and exceed the government’s constitutional authority,” the New York Times reports.

The subject: patent reform.

Rarely has the Patent and Trademark Office elicited such passions. But included in the bill is a long-debated feature that would change the federal patent system to a “first to file” protocol of determining patent priority — one used by nearly all of the rest of the world — from its current “first to invent” system.

Opposition:

“This bill would be death to innovation in America,” said Phyllis Schlafly, the conservative writer and activist who has rallied opposition to the bill among conservative groups like the Gun Owners of America and the Christian Coalition.

Those groups have joined in opposition with small-business advocates and groups of professional engineers, who say that the change would favor big corporations over small inventors and make it harder for start-ups to ward off people seeking to steal their ideas.

Support:

David J. Kappos, the director of the patent office and under secretary of commerce for intellectual property, disagrees, as do the Obama administration and scores of technology and manufacturing companies whose success can be traced, in large part, to the patents they received on their creations.

“This would be an enormous improvement,” Mr. Kappos said of the bill. The current, first-to-invent system does no more than grant an inventor “a lottery ticket,” with the right to defend in court whether he was the first to come up with an idea, Mr. Kappos said. A first-to-file system “adds transparency and objectivity” in the form of a clear line of priority — that is, who arrived first at the patent office.

The bill would “also change procedures for challenging patents, before and after they are issued, alter how damages can be assessed and allow the patent office to set its own fees for applicants.”

It also contains “an odd provision that would outlaw patenting ‘any strategy for reducing, avoiding or deferring’ federal, state or local taxes.”

Senate Judiciary Committee Chairman Pat Leahy (D-VT), Ranking Member Chuck Grassley (R-IA) and Senator Orrin Hatch (R-UT) are leading the charge on the Patent Reform Act (S. 23), which “appears to be on a bipartisan path to approval in both houses of Congress, each of which has approved similar legislation in the past.”

The United States Patent and Trademark Office is an agency of the Department of Commerce.

The office is one of the few government agencies whose specific duties are enumerated in the United States Constitution. Article 1, Section 8 calls on Congress to promote scientific progress by securing to inventors the exclusive right to their discoveries for a limited time.

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Senate to Debate Patent Reform Legislation after Break

A bill to “reform the U.S. patent process will be the second major piece of legislation taken up by [the] Senate when it returns from the Presidents Day break on Feb. 28,” according to The Hill.

The Patent Reform Act of 2011, S. 23, was reported to the full Senate in early February by the Judiciary Committee, and is supported by Chairman Patrick Leahy (D-Vt.), ranking member Chuck Grassley (R-Iowa) and Sen. Orrin Hatch (R-Utah). Two similar versions of the bill have been passed by the committee since 2008 but have failed to advance.

The bill would modernize the U.S. patent system, moving it from a first-to-file system to a first-to-invent system. That change, aimed at reducing patent litigation costs, would bring the U.S. system in line with those of almost every other country in the world.

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Judiciary Committee Approves Patent Reform Act

A unanimous vote “by the Senate Judiciary Committee Thursday sent comprehensive patent reform legislation to the full Senate for the third time since 2008,” according to a press release.

The Patent Reform Act is authored by Senators Pat Leahy (D-VT), Orrin Hatch (R-UT) and Chuck Grassley (R-IA).

Some general information on the bill:

The Patent Reform Act makes changes to inter partes review, Patent and Trademark Office funding, and supplemental examinations.  The legislation will also transition the nation’s patent system to a first-inventor-to-file system, create a first-window post-grant review process, provide certainty in damages calculations and findings of willful infringement, and includes important provisions to improve patent quality.  The bill is based largely on a bill introduced in the 109th Congress by House Judiciary Committee Chairman Lamar Smith (R-Texas) and Congressman Howard Berman (D-Calif.).

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