The Patent Reform Act of 2011 (S. 23) was introduced on January 25, 2011 by Senator Leahy (D-VT) who was joined by eight co-sponsors (all from the Judiciary Committee) that include Senators Coons (D-DE), Franken (D-MN), Grassley (R-IA), Hatch (R-UT), Klobuchar (D-MN), Kyl (R-AZ), Lieberman (I-CT), and Sessions (R-AL). The bill was referred to the Senate Judiciary Committee which unanimously approved the bill. The House of Representatives will likely move more slowly. Although House Judiciary Committee chair Rep. Smith (R-TX) co-sponsored the similar Patent Reform Act of 2009, Rep. Issa (R-CA) is the "patent expert of Congress" and has only tentatively supported the reform bills in the past. [UPDATE – Most Recent Version of S. 23 2/11/11]
First-Inventor-to-File: The reform measure would move the US further toward a first-to-file system. Each patent application would be given an "effective filing date," and the patentability will be judged on whether any prior art was available prior to the filing date. One-year grace period would remain in effect, but only for the inventor's own disclosures (and disclosures derived from the inventor). Obviousness will also be judged as of the effective filing date. Inventors will no longer be able to swear behind prior art nor will they be able to establish priority in an interference proceeding. A new creation in the bill is a "derivation proceeding" that would operate only in times where an original inventor alleges that a patent applicant derived the invention from the original inventor's work.
Damages: Patent defendants have argued that courts often treat damages issues as afterthoughts with little procedural control. The proposed amendment would add specific procedures and checks on how a judge manages the damages portion of a case. The amended statute would require that a court "identify methodologies and factors that are relevant to the determination of damages" and that "only those methodologies and factors" be considered when determining the damage award. In addition, prior to the introduction of damages evidence, the court would be required to consider either party's contentions that the others damage case lacks a legally sufficient evidentiary base. In addition, the statute would require a judge to bifurcate the damages portion of a trial if requested "absent good cause to reject the request, such as the absence of issues of significant damages or infringement and validity." Oddly, the proposed statute seemingly bars a judge from amending the discovery schedule or any "other matters" based upon the trial sequencing.
Enhanced Damages: Although we often discuss enhanced damages for willful infringement, the current Patent Act is not explicitly limited to situations involving willful infringement. Rather, Section 284 simply states that "the court may increase the damages up to three times the amount found or assessed." Over the years, Federal Circuit precedent has limited the statute to only situations where the infringer's actions were at least objectively reckless. The amended statute would codify that holding with the words "Infringement is not willful unless the claimant proves by clear and convincing evidence that the accused infringer's conduct with respect to the patent was objectively reckless. [I.e., that] the infringer was acting despite an objectively high likelihood that his actions constituted infringement of a valid patent, and this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer." The statute also makes clear that accusations of willful infringement must be pled with particularity (following FRCP 9(b)); that proof of knowledge of patent is insufficient to establish willful infringement; that a pre-lawsuit notice of infringement cannot itself establish willfulness unless the notification is fact specific in explaining the infringement; that the failure to obtain the advice of counsel (or to present that advice to the jury) "may not be used" to prove willull infringement or inducement of infringement; and that damages subject to trebling are only those accrued after the infringement became willful; and that in a "close case" there will be no willful infringement (here, the statute requires a judge to "explain its decision" and to make a decision prior to the issue being tried by the jury).
Third-Party Challenges to Patent Rights: The bill includes three expanded ways that a third party can use the USPTO to challenge a patent: Pre-Issuance Third-Party Submissions; Third-Party Requested Post-Grant Review; and Inter Partes Post Grant Review.
Pre-Issuance Third-Party Submissions: Under the amendment, third parties would be allowed to submit any printed publication along with a description of the relevance to the USPTO to be considered during the examination of a pending patent application.
Third-Party Requested Post Grant Review: A post grant review proceeding would be created (similar to our current reexamination proceeding) that could be initiated by any party. The review would allow a third party to present essentially any legal challenge to the validity of at least one clam. A major limitation on the post grant review is the request for review must be filed within nine-months of issuance.
Inter Partes Review Proceedings: Once the nine-month window for post grant review is expired, a party may then file for "inter partes review." This new system would replace inter partes reexamination and would be limited to consideration of novelty & obviousness issues based on prior art patents and printed publications. (It appears that third-party requested ex parte reexamination would remain a viable option as well).
False Marking: A large number of false patent marking cases have been filed in the past year. The bill would eliminate those lawsuits except for ones filed by the US government or filed by a competitor who can prove competitive injury.
Oath: The bill would make it easier for a corporation to file a substitute inventor's oath when the inventor is non-cooperative.
Best Mode: Although an inventor will still be required to “set forth” the best mode for accomplishing the invention, the statute would be amended to exclude failure of disclose a best mode from being used as a basis for invalidating an issued patent. The PTO will still have a duty to only issue patents where the best mode requirement has been satisfied.
Fee Setting Authority: The PTO would be given authority to adjust its fees, but only in a way that "in the aggregate" recover the estimated costs of PTO activities. Along this line, a new "micro" entity would be created that would have additional fee reductions.