Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Spring 2007, Volume 14, Issue 2

2007 Version of Patent Reform Bill Introduced in House and Senate

By Toshiko Takenaka, Ph.D.

A long-waited patent reform bill was introduced in the House and Senate on April 18, 2007.1  An original patent reform bill was introduced in the House subcommittee on June 8, 2005.2  Although the U.S. patent community was eager to introduce a substantial change to the U.S. patent system, an extensive debate with respect to the appropriate patent infringement remedy among different industry sectors significantly delayed its review process.  To accelerate the review, another version of the patent reform bill was introduced in the Senate’s judiciary committee last August.3  Although the debate was on hold when the Supreme Court handed down the e-Bay. decision,4 it was too late to present either bills to the floor last session.

This year, the House and the Senate will review identical bills simultaneously to speed up the process.  The new bill is similar to the last year’s Senate version except that neither reform of inequitable conduct nor a repeal of §271(f) is included.  The first inventor to file provisions remain intact with a refinement of the definition of the prior art.  The proposed bill preserves a one-year grace period, but covers only the inventors’ own disclosures or those by others derived from the inventors.  To determine whether the disclosure is covered by the grace period, the bill proposes a new proceeding for determining the true inventor, which will replace the current interference proceeding. The new bill does not include a definition of “public use or on sale” and thus it is not clear whether the bill eliminates the secret commercial use and experimental use doctrines. 

Other important features in the new bill include: limitation on damages (banning fact finders from applying the entire market value rule in calculating damages in the form of a reasonable royalty); limitation on finding of willful infringement; introduction of prior use defense; introduction of post grant opposition (post grant review is available within 12 months from a patent issuance, when an accused infringer receives an infringement notice, when there is a reason to believe that the infringement accusation causes or is likely to cause a significant economic harm to accused infringers, or when the patent owner agreed to the post-grant review.); limitation on venue for bringing patent infringement suits in district court; and introduction of an interlocutory appeal from claim construction decisions by district courts. 

Although the new bill does not address some of the important aspects proposed by the original House bill, such as the removal of best mode and U.S.-only application exceptions from the 18-month publication, it will still bring the U.S. patent system significantly more in line with the European Patent Convention, Japanese Patent Law and other systems in major jurisdictions once the bill becomes a law.  However, a very limited time is left for the U.S. patent community to support pass of the bill through Congress.  Unless the bill is presented to the floor before the summer recess, the Congress will be too busy for lobbying.     Unless the community creates a uniform voice and moves along the review process very swiftly, it is very unlikely to make patent reform a reality under the current administration.

1. 110th Congress 1st Session, H.R. 1908.

2. 109th Congress 1st Session H.R. 2795

3. 109th Congress 2nd Session, S. 3818.

4. eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837, 164 L. Ed. 2d 641, 78 U.S.P.Q.2d 1577, (U.S. 2006)

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