The much-anticipated Patent Reform Act of 2007 got its first airing in the House of Representatives and the Senate in April. Jones Day partner Robert Lindefjeld and associate Cecilia Dickson explain why the US patent system will undergo its most substantial overhaul in decades

On 18 April 2007, the much anticipated, most recent incarnation of patent reform legislation in the US was introduced concurrently in both the House of Representatives and the Senate. The bill amends Title 35 of the US Code relating to the procurement, enforcement and validity of patents. While several amendments are expected in the coming months, if the bill becomes law, the legislation will affect virtually every facet of the US patent process, and is therefore of keen interest to companies and individuals with substantial IP portfolios trading in the US.

Key features
The Reform Act (S1145) will align the US patent system more closely to European standards by shifting from a ‘first to invent’ system to a ‘first to file’ system when it comes to determining who is entitled to patent protection for a given invention. This shift will require all companies to re-evaluate their strategies relating to US patent prosecution. Applicants will also have to perform a prior art search – not required under current law – and provide any documentation relevant to an invention’s patentability to the US Patent and Trademark Office (USPTO) as part of a patent application. This move is designed to reduce the level of work required by the USPTO to determine the validity of ‘first to invent’ claims and, therefore, the speed in which applicants are processed.

‘While there is still much work to do before the Coalition can support the legislation, we are encouraged by the incremental progress made.’
- Gary Griswold, 3M

Other proposals include updating the definition of ‘inventor’ to allow for the possibility of co- or joint inventors and allowing third-party assignees to file patent applications or patent claims on an inventor’s behalf. Another key component of the act centres on damage analysis. As well as revising the patent dispute procedures, proposals aim to modify the scope of damages analysis in the courts to allow for increased damages in cases of wilful patent infringements.

The Act also hopes to replace the Board of Patent Appeals and Interferences with a new Patent Trial and Appeal Board. This would alter the location and jurisdiction of patent cases and provide for appeals to be made after a claim decision. However, it does not look as if the proposed bill will be the final say in changes to the patent system. Within days of its airing, US Senator Patrick Leahy, one of the sponsors of the original bill, called for substitute amendments to be made in the  areas relating to jurisdiction over foreign companies and the number of post-grant petitions allowed for the same patent. It remains to be seen whether these changes will be incorporated into the final act.

Industry reaction
So far, the act has received a mixed reception from the business world. In general, industry bodies are supporting the move towards improvement, even if they are not wholly convinced by all the proposed changes. ‘While there is still much work to do before the Coalition can support the legislation, we are encouraged by the incremental progress made,’ says Gary Griswold of 3M, and member of the Coalition for 21st Century Patent Reform, a group of over 40 global corporations including 3M, Caterpillar Inc, General Electric and Johnson & Johnson.

Testimony from industry groups, legal organisations and other think tanks will be solicited as hearings are held in both the House and Senate subcommittees charged with reviewing the pending legislation.

User Comments

Post a comment