IP Update – Patent Law Reform 2011

Finnegan attorneys closely track patent law reform efforts, most recently the Patent Reform Act of 2011, which was passed by the U.S. Senate on March 8, 2011, with the updated title “America Invents Act.” Through IP Updates, webinars, conferences, articles, and this resource page, Finnegan provides information on important legislative developments, public statements and testimony, and commentary from Finnegan attorneys on the impact of legislative and regulatory changes on U.S. and international businesses.

The Patent Reform Act of 2011 was introduced on January 25, 2011, by Senator Patrick Leahy. It addresses significant changes to the patent system, including first-to-file; post-grant review proceedings (oppositions); inter partes review; preissuance submission by third parties; USPTO fee-setting authority and USPTO funding; supplemental examination; micro entity fees; tax strategy patents; best mode; residency for Federal Circuit judges; creation of special post-grant review for business method patents; USPTO authority to establish satellite offices; creation of a USPTO ombudsman; and USPTO authority to prioritize inventions of national importance. The Senate Judiciary Committee amended the bill and unanimously approved it on February 3, 2011. After lively debate and a variety of amendments proposed, the Senate passed the legislation on March 8, 2011, by a wide 95-5 margin.

Congressman Lamar Smith introduced H.R. 1249 “America Invents Act” on March 30, 2010, to the House of Representatives, which has also held extensive hearings on patent law reform. The House version of the legislation is very similar in many ways to the legislation passed by the Senate. The House has made notable changes, however, and Congressman Smith has indicated one of his goals is to make interpartes reexamination more “user-friendly.” In this respect, the House changes the threshold for inter partes review, automatically stays subsequent declaratory judgment litigation, and gives a longer time window for initiating a proceeding if litigation has commenced. The House version provides additional opportunities for post-grant review by lengthening the time period allowed for this procedure. It also adds restrictions on litigation for business method patents. Additionally, with respect to defense of infringement based on earlier inventor, the house bill eliminates the requirement that the defense is only available for business methods. But, the House adds the limitation that the defense is not available if the patent-at-issue was funded by an institution of higher education or its technology transfer organization, and if it did not receive funding from a private business enterprise.