Damn the Torpedoes! Patent Reform Moving Ahead in House, Senate

Today the full House Judiciary Committee voted to advance the Patent Reform Act of 2007 to a full vote. The full committee follows a Judiciary Subcommittee on Courts, the Internet and Intellectual Property mark-up that was recently released. The Senate Judiciary Committee is scheduled to continue its debate tomorrow (Thursday).

Rep. Howard Berman released a statement saying "the time to reform the system is way past due . . . I hope to take this bill to the full House for a vote before we break for August recess."

A second Manager's Amendment was released which purportedly "addressed the concerns" of critics. You be the judge. Some highlights of the second mark-up:

Broadedning of Prior User Rights:

Prior user rights is a defense to infringement if the accused infringer was commercially using the invention 1 yr. before the patent application is filed. Currently, the defense may be asserted only by the person who performed the acts that constitute the defense. This change broadens standing to include affiliates of that person.

PTO Funding:

Under existing law, the significant patent and trademark fees are set by statue. Thus, it takes an act of Congress to change such fees, which causes delay and complicates this process. In order to keep up with the hundreds of thousands of patent and trademark applications filed each year, the PTO needs to be able to set its own fees. This change gives the Director authority to do so, with several conditions that provide notice and input from Congress, the PTO's advisory committees and the public.

Marking:

Currently, the law requires that patented “articles” must be “marked” in order to give constructive notice to the public so as not to infringe. Failure to mark prohibits the patentee from obtaining back damages prior to giving “actual” notice to the infringer (e.g., by way of letter or the filing of a complaint). However, some patents (e.g., method patents and in particular business method patents) have no such marking requirements. They can receive 6 years of back damages in every case. This bill reduces that number to 2 years from actual notice.

Secret Prior Art:

In addition to patents and printed publications, prior art includes all information that was available to the “public” before the application was filed. Current law uses the phrase “public use or on sale” to categorize this type of information. As a result, there has been much litigation, and thus uncertainty, over whether, e.g., secret collaboration agreements between companies constitutes prior art under this definition. The amendment would add “otherwise available to the public” to make clear that secret collaborative agreements, which are not available to the public, are not prior art.

And of course, everyone's favorite provision - "Applicant Quality Submissions"

Ready? (Deep breath . . .)

The Director shall, by regulation, require that applicants submit a search report and other information and analysis relevant to patentability. An application shall be regarded as abandoned if the applicant fails to submit the required search report, information, and analysis in the manner and within the time period prescribed by the Director. Applicants from micro-entities, as defined in section 124 of this title, shall not be subject to the requirements of any regulations promulgated pursuant to this section.

From the Patently-O comment board: "I say file in the PCT, designate the US as the searching authority, nationalize back into the US and submit of the ISR and IPER. Let the USPTO try to argue that their own search isn't good enough."

View/download 2nd Manager's Amendment here (link)

View/download (Lehy) Manager's Amendment here (link)