Proposed Patent Reform Is Back
Douglas A. Miro - 3/5/2009
After failing once already, the U.S. House of Representatives introduced a Bill this week to amend title 35, USC, entitled the "Patent Reform Act of 2009." A counterpart bill was also introduced in the Senate. To view the text of the complete Bill Click here.
Some of the major provisions in the Bill include a provision precluding one from obtaining a patent if the claimed invention "was described … in a [published patent] application" and "filed before the effective filing date of the claimed invention." This provision arguably eliminates the current 35 U.S.C. §102(g) so-called first to invent system to a first inventor to file system. Also, the bill proposes several post-patent issuance changes, including a standard to calculate reasonable royalties in cases of infringement, post-grant review proceedings and revised reexamination proceedings. Also, the bill replaces the current Board of Patent Appeals and Interferences with a Patent Trial and Appeal Board for hearing reexamination and infringement trials.
Many of the proposals contained in the bill were debated in their current or related forms during the last Congress, which adjourned without taking action on the measure. The present bill has already been met with opposition, and faces an uphill battle to passage in its current form. The bill will almost certainly be amended as the legislative session progresses.
Ostrolenk Faber remains on the cutting edge of patent legislative developments to advise our clients how to best protect their Intellectual Property rights. For more information, please contact any of our attorneys or professionals as (212) 382-0700.