Patent reform 2009 – bills introduced in Congress

The 2009 edition of the U.S. patent reform debate has begun.  On March 3, 2009, HR 1260 was introduced into the House of Representatives, while S. 515 reached the U.S. Senate.  The bills are not identical, but they are similar to patent reform legislation that died in 2008.  The 2009 version’s includes many of the 2008 bills’ controversial limitations on damages. 

My colleague Dan Scolnick of Pepper Hamilton LLP has prepared the following summary, with key differences between the 2008 and 2009 bills. 

Features of the 2009 patent reform bills include:

  • Changing the U.S. patent system from a first-to-invent to a first-to-file system.
  • Changing what is prior art to include inventions that were “otherwise available to the public.”
  • Allowing a company to file an application on behalf of an inventor when there is an obligation to assign–easing the requirement of having a signed declaration.
  • Linking damages to the patent’s “specific contribution of the invention over the prior art.”
  • Allowing evidence of non-exclusive licenses to be used to set royalties.
  • Implementing post-grant review procedures, including opposition procedures similar to those available in Europe.
  • Eliminating interferences (although derivation proceedings would be available to determine if the invention was derived from another inventor).
  • Adding procedures third parties to submit prior art while applications are pending.
  • Expanding inter partes reexamination.

New features in the 2009 bill include:

  • Codification of the Seagate standard for willful infringement.
  • Allowing evidence of prior public use or sale as permissible grounds for reexamination.
  • Limiting venue selection for a patent plaintiff to that related to the defendant’s principal place of business, place of incorporation, or where the defendant has committed substantial acts of infringement and has a regular and established physical facility that the defendant controls and that constitutes a substantial portion of the operations of the defendant.
  • Giving the Federal Circuit jurisdiction over interlocutory claim construction appeals

The Senate Version also requires that all examination of U.S. applications be done by U.S. Citizens and in the United States.


Provisions deleted from 2008 legislation include:

  • Changes to the standard of invalidity for inequitable conduct.
  • Requirements that patent applicants peform a search before filing.
  • Immunity from suit for electronic check processing patents.
  • Ending fee diversion.
  • Requiring all applications (including those not filed outside of the United States) be published at 18 months.

Thanks, Dan, for the useful summary.  Senator Patrick Leahy, co-sponsor of S. 515, also provides a information about the Senate version and its history here.

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