Follow-up on Senate Reform of Patent Laws

            The Senate is poised to have a final vote this Wednesday on the patent reform bill. As we discussed last week, this bill is designed to considerably revamp U.S. patent practice for the first time in almost 60 years.

            Senators began considering this bill on February 28, 2011, and have spent the last week debating a series of major and minor amendments. Specifically, some of the amendments made to the bill in the past week include:


·        correcting provisions related to the United States Patent and Trademark Office’s (“USPTO”) fee-setting authority;


·        ending diversion of patent fees;


·        creating a pilot program to examine business-method patents in the wake of the U.S. Supreme Court’s Bilski ruling;


·        amending the definition of a “microentity” and striking litigation-related provisions pertaining to damage calculations and venue selection;


·        authorizing the opening of three or more additional USPTO satellite offices around the country over the next year;


·        establishing a small-business ombudsman at the USPTO;


·        prioritizing the review of patent applications “important to the national economy's competitiveness”, such as applications for green energy inventions; and


·        requiring the USPTO to disclose the length of time between when it begins its post-grant review and when it completes the review.


In addition to what we discussed earlier, key components of the bill also include the following:


  • giving third parties the opportunity to submit information relating to a pending patent application to the examiner;
  • improving the current system for making administrative challenges to the validity of a patent throughout its life;
  • setting new fees for applicants who do not use electronic filing methods;
  • precluding individuals from filing lawsuits challenging the validity of patents on marked products; and
  • allowing the USPTO to offset costs by raising fees, resulting in a net increase in USPTO fee collections of about $1.7 billion between 2011 and 2016.

Now that the Senate is poised to pass its patent reform legislation, attention is shifting to the U.S. House of Representatives, which is in the process of developing its own version of the legislation.

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