McHale Slavin NewsletterMchale Slavin

JUNE 2011

PATENT  REFORM  ADVANCES  THROUGH  CONGRESS

     The first major change in U.S. Patent Law since the 1950’s is ready to take place. The U.S. Senate recently voted 95-5 to pass the Patent Reform Bill, sending the Bill to the House of Representatives for consideration, where the House Judiciary Committee voted 32-3 to recommend its enactment. Known as the America Invents Act, S. 23, H.R. 1249, the Bill represents a major change in U.S. Patent Law and enjoys broad bipartisan support from legislators, the White House, and the current USPTO Director. Three areas are of particular interest:


      1) First-to-File: The Bill will implement a first-to-file system that revises 35 U.S.C. § 102(a) by focusing on the effective filing date and generally expanding the scope of prior art to encompass all references that existed prior to the filing date. The Bill will eliminate 35 U.S.C. § 102(g) interference proceedings, in favor of legal action when the first to file a patent application "derived" its claimed invention from another, if the USPTO has issued two patents directed to the same subject matter. Under 35 U.S.C. § 103 the Bill proposes that obviousness will now be considered as of the effective filing date, rather than the invention date. The Bill also rewrites the scope of obviousness. A patent for a claimed invention would be unobtainable if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.


      2) Fee Structure: The Bill includes a provision that allows the USPTO to set its own fee structure and keep the generated revenues. The fee structure allows the USPTO to keep any excess fees it generates with the intent to implement changes that will reduce the large backlog of unexamined patent applications. The result will be a fee structure revision, the contents of which have yet to be released.


      3) False Marking: The Bill makes two changes to 35 U.S.C. § 292, the current false patent marking statute. First, the Bill removes the right of private citizens to sue on behalf of the U.S. government to recover half of the per-article penalty for mismarking. Only the government will be able to bring an action to recover such a penalty. Second, the Bill limits the right of private citizens to sue under § 292 to those who can prove a "competitive injury" caused by the false marking, and limits economic recovery to damages adequate to compensate for the injury. These provisions would apply to all litigations pending on the date that the Bill is enacted into law. The result would be the dismissal of most of the false marking cases currently pending in the courts, since very few of these cases have been brought by the U.S. government or a competitor claiming injury. The House Judiciary Committee has included an amendment to the Bill barring a false marking claim based solely on an expired patent marking during the first three years after the patent expires.


      It is believed the House will follow the Judiciary Committee’s recommendation and approve the Bill. In previous years, the House had passed similar legislation, only to see it stalled in the Senate. Now that the Senate has passed the Bill, it is believed the House will follow with its approval. It is reported that the Bill could be signed into law by the end of the summer.

By:

Brian Taillon

Intellectual Property Attorney

Michael Slavin

Registered Patent Attorney