Patent Reform Act of 2005
Encyclopedia
The Patent Reform Act of 2005 was United States patent legislation
proposed in the 109th United States Congress
. Texas
Republican
Congressman Lamar S. Smith
introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act." The Act proposed many of the recommendations made by a 2003 report by the Federal Trade Commission
and a 2004 report by the National Academy of Sciences
.
The 109th Congress concluded on January 3, 2007 without enacting H.R. 2795. Much of the proposed Act was carried into the proposed Patent Reform Act of 2007
, which was introduced in the 110th Congress
on 18 April 2007. A similar act was introduced as the Patent Reform Act of 2009
in the 111th Congress
.
Switch from first to invent
The United States is currently the only country in the world that gives priority to the application that claims the earliest invention date, regardless of which application arrives first. The first-to-invent system is thought to benefit small inventors, who may be less experienced with the patent application system. Critics of the first-to-file system also contend it will create a “race to the mailbox,” and result in sloppier, last-minute patent applications. The first-to-invent system, however, requires the United States Patent and Trademark Office
(USPTO) to undertake lengthy and complicated “interference” proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend, would inject much-needed certainty into the patent application process. Finally, because every other country is on a first-to-file system, supporters claim that the majority of patent applicants and attorneys are already operating on a first-to-file basis.
A first-to-file priority rule does not permit one individual to copy another’s invention and then, by virtue of being the first to file a patent application, be entitled to a patent. All patent applicants must have originated the invention themselves, rather than derived it from another person. In order to police this requirement, the proposed H.R. 2795 provided for “inventor’s rights contests” that would have allowed the USPTO to determine which applicant is entitled to a patent on a particular invention.
of 1999 established a “first inventor defense,” but limited the defense to patents on “methods of doing or conducting business;” H.R. 2795 would have extended it to all subject matter.
allowed pre-grant publication 18 months after filing unless the inventor certified that he would not be seeking patent protection abroad. H.R. 2795 would have closed this loophole.
severely limited protests, but H.R. 2795 would have eliminated those limitations.
Expand use of post-issuance reexamination
Since 1981, the U.S. patent system has incorporated “reexamination
” proceedings, during which third parties can submit information challenging the validity of a patent. In order to discourage abuse of these proceedings, third-party participants may not later assert that a patent is invalid “on any ground that [they] raised or could have raised during the inter partes reexamination proceedings.” Some observers believe that this estoppel dissuades potential requesters from use of reexamination, forcing them into federal court. H.R. 2795 would have deleted the phrase “or could have raised” from the statute, so that reexamination requesters would be limited only with respect to arguments that they actually made before the USPTO.
H.R. 2795 would have also established post-grant opposition proceedings, a feature that is common in foreign patent regimes. Oppositions allow a wide range of potential invalidity arguments and are conducted through adversarial hearings that resemble courtroom litigation, but because they limit discovery
and involve a lower burden of proof, oppositions are cheaper and faster than lawsuits.
report as one of the three subjective elements that contribute to high patent litigation costs. H.R. 2795 would have eliminated it.
are currently available if the court finds the infringement was “willful.” This is the second subjective factor that has been identified as increasing the length and cost of patent infringement suits. To avoid an allegation of willful infringement, many inventors purposely ignore learning about new patents, which contravenes one of the central purposes of the patent system, the dissemination of scientific knowledge. H.R. 2795 would have limited treble damages
to cases in which the plaintiff notified the defendant of the patent, claims and violation, and permit pleading willful infringement only after a court finds that the patent was valid, enforceable, and infringed.
Modify the patent law doctrine of inequitable conduct
Defendants in infringement suits are currently allowed to allege that the patent is unenforceable because the patent holder did not operate honestly and in good faith when it applied for a patent. This is the third subjective factor that has been identified as increasing the length and cost of infringement suits. H.R. 2795 would have eliminated this defense, instead codifying a duty of candor for all parties in proceedings before the USPTO, and providing authority for the PTO to investigate allegations of inequitable conduct
and impose civil penalties.
s are currently awarded in patent infringement cases if the plaintiff satisfies a four-part test. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies are not available at law; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserviced by a permanent injunction. H.R. 2795, as originally introduced, would have required a court to consider the “fairness” of an injunction in light of all the facts and the relevant interests of the parties, and allow an injunction to be stayed pending appeal upon an affirmative showing that the stay would not result in irreparable harm to the owner.
This is among the most controversial issues in patent reform. Software and information technology companies generally support limiting injunctions, because their products often involve hundreds or thousands of patents, and a dispute over any of them can result in an injunction that halts production on the entire item. Biotechnology and pharmaceutical companies, on the other hand, generally oppose limiting injunctions, because the items they manufacture are easily analyzed and reproduced and generally involve only one or two patents.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
proposed in the 109th United States Congress
109th United States Congress
The One Hundred Ninth United States Congress was the legislative branch of the United States, composed of the United States Senate and the United States House of Representatives, from January 3, 2005 to January 3, 2007, during the fifth and sixth years of George W. Bush's presidency. House members...
. Texas
Texas
Texas is the second largest U.S. state by both area and population, and the largest state by area in the contiguous United States.The name, based on the Caddo word "Tejas" meaning "friends" or "allies", was applied by the Spanish to the Caddo themselves and to the region of their settlement in...
Republican
Republican Party (United States)
The Republican Party is one of the two major contemporary political parties in the United States, along with the Democratic Party. Founded by anti-slavery expansion activists in 1854, it is often called the GOP . The party's platform generally reflects American conservatism in the U.S...
Congressman Lamar S. Smith
Lamar S. Smith
Lamar Seeligson Smith is the U.S. Representative for , serving since 1987. The district includes most of the wealthier sections of San Antonio and Austin, as well as nearly all of the Texas Hill Country...
introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act." The Act proposed many of the recommendations made by a 2003 report by the Federal Trade Commission
Federal Trade Commission
The Federal Trade Commission is an independent agency of the United States government, established in 1914 by the Federal Trade Commission Act...
and a 2004 report by the National Academy of Sciences
United States National Academy of Sciences
The National Academy of Sciences is a corporation in the United States whose members serve pro bono as "advisers to the nation on science, engineering, and medicine." As a national academy, new members of the organization are elected annually by current members, based on their distinguished and...
.
The 109th Congress concluded on January 3, 2007 without enacting H.R. 2795. Much of the proposed Act was carried into the proposed Patent Reform Act of 2007
Patent Reform Act of 2007
The Patent Reform Act of 2007 is a proposal introduced in the 110th United States Congress for changes in United States patent law. Democratic Congressman Howard Berman introduced the House of Representatives bill on April 18, 2007. Democratic Party Senator Patrick Leahy introduced the Senate bill...
, which was introduced in the 110th Congress
110th United States Congress
The One Hundred Tenth United States Congress was the meeting of the legislative branch of the United States federal government, between January 3, 2007, and January 3, 2009, during the last two years of the second term of President George W. Bush. It was composed of the Senate and the House of...
on 18 April 2007. A similar act was introduced as the Patent Reform Act of 2009
Patent Reform Act of 2009
The Patent Reform Act of 2009 was a set of proposals introduced in the 111th United States Congress for changes in United States patent law. Senators Orrin Hatch and Patrick Leahy introduced a Senate bill on March 3, 2009. Representative John Conyers introduced the House version, H.R. 1260, the...
in the 111th Congress
111th United States Congress
The One Hundred Eleventh United States Congress was the meeting of the legislative branch of the United States federal government from January 3, 2009 until January 3, 2011. It began during the last two weeks of the George W. Bush administration, with the remainder spanning the first two years of...
.
Proposed changes in U.S. patent law
H.R. 2795 would have harmonized American patent law with the patent laws of the rest of the world by making the following changes in U.S. patent law: Switch from first to inventFirst to file and first to inventFirst to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
to first to fileFirst to file and first to inventFirst to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
The United States is currently the only country in the world that gives priority to the application that claims the earliest invention date, regardless of which application arrives first. The first-to-invent system is thought to benefit small inventors, who may be less experienced with the patent application system. Critics of the first-to-file system also contend it will create a “race to the mailbox,” and result in sloppier, last-minute patent applications. The first-to-invent system, however, requires the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) to undertake lengthy and complicated “interference” proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend, would inject much-needed certainty into the patent application process. Finally, because every other country is on a first-to-file system, supporters claim that the majority of patent applicants and attorneys are already operating on a first-to-file basis.
A first-to-file priority rule does not permit one individual to copy another’s invention and then, by virtue of being the first to file a patent application, be entitled to a patent. All patent applicants must have originated the invention themselves, rather than derived it from another person. In order to police this requirement, the proposed H.R. 2795 provided for “inventor’s rights contests” that would have allowed the USPTO to determine which applicant is entitled to a patent on a particular invention.
Expand prior user rights
Even under a first-to-invent system, the first-inventor-in-fact does not always obtain entitlement to a patent. If, for example, a first-inventor-in-fact maintained his invention as a trade secret for many years before seeking patent protection, he may be judged to have “abandoned, suppressed or concealed” the invention. Well-established patent law provides that an inventor who makes a secret, commercial use of an invention for more than one year prior to filing a patent application at the USPTO forfeits his own right to a patent. If an earlier inventor made secret commercial use of an invention, and another person independently invented the same technology later and obtained patent protection, then the trade secret holder could face liability for patent infringement. Many foreign patent regimes, on the other hand, protect prior user rights, which are often seen as assisting small entities that may lack the sophistication or resources to pursue patent protection. The American Inventors Protection ActAmerican Inventors Protection Act
The American Inventors Protection Act is a United States federal law enacted on November 29, 1999 as Public Law 106-113. In 2002, the Intellectual Property and High Technology Technical Amendments Act of 2002, Public Law 107-273, amended AIPA....
of 1999 established a “first inventor defense,” but limited the defense to patents on “methods of doing or conducting business;” H.R. 2795 would have extended it to all subject matter.
Publish patent applications
Outside the United States, pending patent applications are published 18 months after they are filed, which forewarns competitors that a patent is pending. Prior to 2000, American patent applications were never published. The American Inventors Protection ActAmerican Inventors Protection Act
The American Inventors Protection Act is a United States federal law enacted on November 29, 1999 as Public Law 106-113. In 2002, the Intellectual Property and High Technology Technical Amendments Act of 2002, Public Law 107-273, amended AIPA....
allowed pre-grant publication 18 months after filing unless the inventor certified that he would not be seeking patent protection abroad. H.R. 2795 would have closed this loophole.
Allow pre-issuance protests by third parties
Historically, interested individuals could enter a "protest" against a pending patent application. Critics contended that protests serve mainly to permit third parties to slow down the process for competitors. On the other hand, protests are the only way for third parties to challenge a patent prior to approval, when recourse is only available through the court system. The American Inventors Protection ActAmerican Inventors Protection Act
The American Inventors Protection Act is a United States federal law enacted on November 29, 1999 as Public Law 106-113. In 2002, the Intellectual Property and High Technology Technical Amendments Act of 2002, Public Law 107-273, amended AIPA....
severely limited protests, but H.R. 2795 would have eliminated those limitations.
Expand use of post-issuance reexaminationReexaminationIn United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable...
and opposition proceedings
Since 1981, the U.S. patent system has incorporated “reexaminationReexamination
In United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable...
” proceedings, during which third parties can submit information challenging the validity of a patent. In order to discourage abuse of these proceedings, third-party participants may not later assert that a patent is invalid “on any ground that [they] raised or could have raised during the inter partes reexamination proceedings.” Some observers believe that this estoppel dissuades potential requesters from use of reexamination, forcing them into federal court. H.R. 2795 would have deleted the phrase “or could have raised” from the statute, so that reexamination requesters would be limited only with respect to arguments that they actually made before the USPTO.
H.R. 2795 would have also established post-grant opposition proceedings, a feature that is common in foreign patent regimes. Oppositions allow a wide range of potential invalidity arguments and are conducted through adversarial hearings that resemble courtroom litigation, but because they limit discovery
Discovery (law)
In U.S.law, discovery is the pre-trial phase in a lawsuit in which each party, through the law of civil procedure, can obtain evidence from the opposing party by means of discovery devices including requests for answers to interrogatories, requests for production of documents, requests for...
and involve a lower burden of proof, oppositions are cheaper and faster than lawsuits.
Eliminate the “best mode” requirement
Patent applications are currently required to “set forth the best mode contemplated by the inventor of carrying out his invention.” This requirement is unique to American patent law, and was identified in the 2004 National Academy of SciencesUnited States National Academy of Sciences
The National Academy of Sciences is a corporation in the United States whose members serve pro bono as "advisers to the nation on science, engineering, and medicine." As a national academy, new members of the organization are elected annually by current members, based on their distinguished and...
report as one of the three subjective elements that contribute to high patent litigation costs. H.R. 2795 would have eliminated it.
Modify the patent law doctrine of willful infringement
In patent infringement cases, treble damagesTreble damages
Treble damages, in law, is a term that indicates that a statute permits a court to triple the amount of the actual/compensatory damages to be awarded to a prevailing plaintiff, generally in order to punish the losing party for willful conduct. Treble damages are a multiple of, and not an addition...
are currently available if the court finds the infringement was “willful.” This is the second subjective factor that has been identified as increasing the length and cost of patent infringement suits. To avoid an allegation of willful infringement, many inventors purposely ignore learning about new patents, which contravenes one of the central purposes of the patent system, the dissemination of scientific knowledge. H.R. 2795 would have limited treble damages
Treble damages
Treble damages, in law, is a term that indicates that a statute permits a court to triple the amount of the actual/compensatory damages to be awarded to a prevailing plaintiff, generally in order to punish the losing party for willful conduct. Treble damages are a multiple of, and not an addition...
to cases in which the plaintiff notified the defendant of the patent, claims and violation, and permit pleading willful infringement only after a court finds that the patent was valid, enforceable, and infringed.
Modify the patent law doctrine of inequitable conductInequitable conductIn United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
Defendants in infringement suits are currently allowed to allege that the patent is unenforceable because the patent holder did not operate honestly and in good faith when it applied for a patent. This is the third subjective factor that has been identified as increasing the length and cost of infringement suits. H.R. 2795 would have eliminated this defense, instead codifying a duty of candor for all parties in proceedings before the USPTO, and providing authority for the PTO to investigate allegations of inequitable conductInequitable conduct
In United States patent law, inequitable conduct is a defense to allegations of patent infringement. Even in the instance that a patent is valid and infringed, the court ruling on infringement may exercise its equitable discretion not to enforce the patent if the patentee has engaged in inequitable...
and impose civil penalties.
Allow patent applications to be submitted by an assignee
Most foreign countries already allow patent applications to be submitted by an assignee as long as the oath of invention is signed. H.R. 2795 would have adopted a similar rule in the United States.Limit access to injunctions
InjunctionInjunction
An injunction is an equitable remedy in the form of a court order that requires a party to do or refrain from doing certain acts. A party that fails to comply with an injunction faces criminal or civil penalties and may have to pay damages or accept sanctions...
s are currently awarded in patent infringement cases if the plaintiff satisfies a four-part test. A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies are not available at law; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserviced by a permanent injunction. H.R. 2795, as originally introduced, would have required a court to consider the “fairness” of an injunction in light of all the facts and the relevant interests of the parties, and allow an injunction to be stayed pending appeal upon an affirmative showing that the stay would not result in irreparable harm to the owner.
This is among the most controversial issues in patent reform. Software and information technology companies generally support limiting injunctions, because their products often involve hundreds or thousands of patents, and a dispute over any of them can result in an injunction that halts production on the entire item. Biotechnology and pharmaceutical companies, on the other hand, generally oppose limiting injunctions, because the items they manufacture are easily analyzed and reproduced and generally involve only one or two patents.
See also
- Intellectual property legislation pending in the United States Congress
- Method of exercising a catMethod of exercising a catwas granted by the United States Patent and Trademark Office on August 22, 1995 for a method of exercising a cat by getting it to follow a spot generated by a laser pointer. The patent has been taken as an example of a "goofy" , "seemingly absurd" or questionable patent justifying, in the...
, famous granted US patent - Patent Reform Act of 2007Patent Reform Act of 2007The Patent Reform Act of 2007 is a proposal introduced in the 110th United States Congress for changes in United States patent law. Democratic Congressman Howard Berman introduced the House of Representatives bill on April 18, 2007. Democratic Party Senator Patrick Leahy introduced the Senate bill...
- Patent Reform Act of 2009Patent Reform Act of 2009The Patent Reform Act of 2009 was a set of proposals introduced in the 111th United States Congress for changes in United States patent law. Senators Orrin Hatch and Patrick Leahy introduced a Senate bill on March 3, 2009. Representative John Conyers introduced the House version, H.R. 1260, the...
External links
- Text of the Patent Reform Act
- News release
- To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy by the Federal Trade CommissionFederal Trade CommissionThe Federal Trade Commission is an independent agency of the United States government, established in 1914 by the Federal Trade Commission Act...
, October 2003 - A Patent System for the 21st Century by the National Academy of SciencesUnited States National Academy of SciencesThe National Academy of Sciences is a corporation in the United States whose members serve pro bono as "advisers to the nation on science, engineering, and medicine." As a national academy, new members of the organization are elected annually by current members, based on their distinguished and...
, 2004 - Library of Congress Issues Report on Proposed Patent Reform, Patently-O: Patent Law Blog, July 19, 2005
- Promote the Progress, a patent blog
- Patent Law Changes Pending, CIO.com, August 15, 2005
- Patent Reform and Why You Should Care by Philip H. Albert, CIO Today, August 16, 2005
- Patent bill would make sweeping changes by Declan McCullagh, News.com, September 13, 2005
- Elimination of the Best Mode Requirement: Throwing the Baby Out with the Bathwater? by Matthew J. Dowd, IPL Newsletter, Fall 2005