Patent Reform Act of 2007
Encyclopedia
The Patent Reform Act of 2007 is a proposal introduced in the 110th United States Congress
for changes in United States patent law
. Democratic
Congressman Howard Berman
introduced the House of Representatives
bill on April 18, 2007. Democratic Party Senator Patrick Leahy
introduced the Senate
bill on April 18, 2007. The bills broadly resemble the proposed Patent Reform Act of 2005
which would have enacted many of the proposals recommended by a 2003 report by the Federal Trade Commission
and a 2004 report by the National Academy of Sciences
. Similar acts were introduced as the Patent Reform Act of 2009
in the 111th Congress
and as the America Invents Act
in the 112th
.
(USPTO) to undertake lengthy and complicated “interference” proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend, would inject much-needed certainty into the patent application process. Finally, because every other country is on a first-to-file system, supporters claim that the majority of patent applicants and attorneys are already operating on a first-to-file basis.
reported the bill H.R. 1908, as amended, with the recommendation that it be passed by the House. The House passed the bill by a vote of 220-175 on September 7, 2007. It was favored among Democrats (160 ayes, 58 noes) and disfavored among Republicans (60 ayes, 117 noes). The Senate Committee on the Judiciary marked up the bill on June 16, 2007 and ordered the bill reported. The report, S. Rpt. 110-259, was issued on January 24, 2008.
A number of organizations have lobbied Congress either in favor or opposed to various aspects of the bill.
strongly supports the bill's provisions directed to the improvement of patent quality, beginning at the application stage.
opposes the bill "in its entirety" unless Section 4 of the bill, which proposes changes concerning the "Right of the Inventor to Obtain Damages", is "significantly revised". The Department believes that if Section 4 is not revised, "the resulting harm to a reasonably well-functioning U.S. intellectual property system would outweigh all the bill's useful reforms."
The Indian Pharmaceutical Alliance has pointed out that the provisions of the bill which allow for the validity of a US patent to be challenged shortly after the patent issues, could favor Indian generic drug
manufacturers by lowering the cost and legal risks associated with challenging drug patents of questionable validity.
110th United States Congress
The One Hundred Tenth United States Congress was the meeting of the legislative branch of the United States federal government, between January 3, 2007, and January 3, 2009, during the last two years of the second term of President George W. Bush. It was composed of the Senate and the House of...
for changes in United States patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
. Democratic
Democratic Party (United States)
The Democratic Party is one of two major contemporary political parties in the United States, along with the Republican Party. The party's socially liberal and progressive platform is largely considered center-left in the U.S. political spectrum. The party has the lengthiest record of continuous...
Congressman Howard Berman
Howard Berman
Howard Lawrence Berman is the U.S. Representative for , serving since 2003. He is a member of the Democratic Party. He earlier served in the California State Assembly from 1974 to 1982, and as the U.S...
introduced the House of Representatives
United States House of Representatives
The United States House of Representatives is one of the two Houses of the United States Congress, the bicameral legislature which also includes the Senate.The composition and powers of the House are established in Article One of the Constitution...
bill on April 18, 2007. Democratic Party Senator Patrick Leahy
Patrick Leahy
Patrick Joseph Leahy is the senior United States Senator from Vermont and member of the Democratic Party. He is the first and only elected Democratic United States Senator in Vermont's history. He is the chairman of the Senate Judiciary Committee. Leahy is the second most senior U.S. Senator,...
introduced the Senate
United States Senate
The United States Senate is the upper house of the bicameral legislature of the United States, and together with the United States House of Representatives comprises the United States Congress. The composition and powers of the Senate are established in Article One of the U.S. Constitution. Each...
bill on April 18, 2007. The bills broadly resemble the proposed Patent Reform Act of 2005
Patent Reform Act of 2005
The Patent Reform Act of 2005 was United States patent legislation proposed in the 109th United States Congress. Texas Republican Congressman Lamar S. Smith introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S...
which would have enacted many of the proposals recommended by a 2003 report by the Federal Trade Commission
Federal Trade Commission
The Federal Trade Commission is an independent agency of the United States government, established in 1914 by the Federal Trade Commission Act...
and a 2004 report by the National Academy of Sciences
United States National Academy of Sciences
The National Academy of Sciences is a corporation in the United States whose members serve pro bono as "advisers to the nation on science, engineering, and medicine." As a national academy, new members of the organization are elected annually by current members, based on their distinguished and...
. Similar acts were introduced as the Patent Reform Act of 2009
Patent Reform Act of 2009
The Patent Reform Act of 2009 was a set of proposals introduced in the 111th United States Congress for changes in United States patent law. Senators Orrin Hatch and Patrick Leahy introduced a Senate bill on March 3, 2009. Representative John Conyers introduced the House version, H.R. 1260, the...
in the 111th Congress
111th United States Congress
The One Hundred Eleventh United States Congress was the meeting of the legislative branch of the United States federal government from January 3, 2009 until January 3, 2011. It began during the last two weeks of the George W. Bush administration, with the remainder spanning the first two years of...
and as the America Invents Act
America Invents Act
The Leahy-Smith America Invents Act is a United States federal statute that was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. The law represents the most significant change to the U.S...
in the 112th
112th United States Congress
The One Hundred Twelfth United States Congress is the current meeting of the legislative branch of the United States federal government, composed of the United States Senate and the United States House of Representatives. It convened in Washington, D.C. on January 3, 2011, and will end on January...
.
Proposed changes in U.S. patent law
In certain respects, H.R. 1908 and S. 1145 would make American patent law more similar to patent laws of many other countries. H.R. 1908 would effect the following changes in U.S. patent law:Switch from first to invent to first to file
The United States is currently the only country in the world that gives priority to the application that claims the earliest invention date, regardless of which application arrives first. The first-to-invent system is thought to benefit small inventors, who may be less experienced with the patent application system. Critics of the first-to-file system also contend it would create a “race to the mailbox,” and would result in sloppier, last-minute patent applications. However, the first-to-invent system requires the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO) to undertake lengthy and complicated “interference” proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend, would inject much-needed certainty into the patent application process. Finally, because every other country is on a first-to-file system, supporters claim that the majority of patent applicants and attorneys are already operating on a first-to-file basis.
Other proposed provisions
The bill would also make the following changes:- Defining "inventor" to include a joint inventor and coinventor.
- Revising procedures for patent interference disputes.
- Revising requirements for an inventor's oath or declaration to allow substitute statements in specified circumstances (e.g., death or disability) and supplemental and corrected statements.
- Allowing a third party assignee (other than the inventor) or a person with a proprietary interest to file a patent application.
- Modifying provisions relating to damages for patent infringement to:
- require a court to conduct an analysis of a patent's specific contribution over prior art;
- allow increased damages for willfull patent infringement; and
- expand the prior user defense.
- Renaming the Board of Patent Appeals as the Patent Trial and Appeal Board. (Also, revising provisions relating to the Board's composition, duties, and authorities).
- Allowing a person who is not the patent owner to file a petition with the Board to cancel a patent as invalid (post-grant review). Would also set forth procedures for the consideration of such petitions, including provisions to prevent harassment of patent owners and abuse of process.
- Allowing third parties to submit documents relevant to the examination of a patent application.
- Revising venue requirements for civil patent actions against individuals and corporations to allow actions to be brought in the judicial district where either party resides (currently, where the defendant resides) or where the corporation has its principal place of business or was incorporated.
- Banning tax planning patentTax patentA tax patent is a patent that discloses and claims a system or method for reducing or deferring taxes. Tax patents have been granted predominantly in the United States but can be granted in other countries as well. They are considered to be a form of business method patent. They are also called...
s.
- Allowing financial institutions to infringe patents on check collection systems, such as those owned by DataTreasuryDataTreasuryDataTreasury, located in Plano, Texas, United States, develops, acquires and licenses technology for secure check image capture and storage. The company has a patent portfolio relating to these technologies which it is has been enforcing since 2002 through several patent infringement lawsuits...
.
Status
The House version of this bill passed; the Senate version failed to pass in the 110th Congress. On September 4, 2007 the United States House Committee on the JudiciaryUnited States House Committee on the Judiciary
The U.S. House Committee on the Judiciary, also called the House Judiciary Committee, is a standing committee of the United States House of Representatives. It is charged with overseeing the administration of justice within the federal courts, administrative agencies and Federal law enforcement...
reported the bill H.R. 1908, as amended, with the recommendation that it be passed by the House. The House passed the bill by a vote of 220-175 on September 7, 2007. It was favored among Democrats (160 ayes, 58 noes) and disfavored among Republicans (60 ayes, 117 noes). The Senate Committee on the Judiciary marked up the bill on June 16, 2007 and ordered the bill reported. The report, S. Rpt. 110-259, was issued on January 24, 2008.
Advocacy for and against
A number of organizations have lobbied Congress either in favor or opposed to various aspects of the bill.
For
Organizations lobbying Congress in favor of various aspects of the bill generally view the bill as needed reform to reduce the abuses of the patent system which are stifling innovation. These organizations include:- American Institute of Certified Public AccountantsAmerican Institute of Certified Public AccountantsFounded in 1887, the American Institute of Certified Public Accountants is the national professional organization of Certified Public Accountants in the United States, with more than 370,000 CPA members in 128 countries in business and industry, public practice, government, education, student...
(supports a single provision) - Business Software AllianceBusiness Software AllianceThe Business Software Alliance is a trade group established in 1988 and representing a number of the world's largest software makers and is a member of the International Intellectual Property Alliance...
- Coalition for Patent FairnessCoalition for Patent FairnessThe Coalition for Patent Fairness is an ad hoc organization of companies who are lobbying for reforms to the US patent system. In general they believe that the United States Patent and Trademark Office is too prone to grant overly broad patents...
- Electronic Frontier FoundationElectronic Frontier FoundationThe Electronic Frontier Foundation is an international non-profit digital rights advocacy and legal organization based in the United States...
Patent quality
The United States Department of CommerceUnited States Department of Commerce
The United States Department of Commerce is the Cabinet department of the United States government concerned with promoting economic growth. It was originally created as the United States Department of Commerce and Labor on February 14, 1903...
strongly supports the bill's provisions directed to the improvement of patent quality, beginning at the application stage.
Against
Organizations lobbying Congress in opposition to various aspects of the bill generally view the bill as weakening the rights of patent holders and/or favoring larger and foreign corporations, which in turn will stifle American innovation and contribute to the outsourcing of U.S. jobs to other nations. These organizations include:- AFLCIO, United Steel Workers and other unionTrade unionA trade union, trades union or labor union is an organization of workers that have banded together to achieve common goals such as better working conditions. The trade union, through its leadership, bargains with the employer on behalf of union members and negotiates labour contracts with...
s. - American Family AssociationAmerican Family AssociationThe American Family Association is a 501 non-profit organization that promotes conservative Christian values, such as opposition to same-sex marriage, pornography, and abortion, as well as other public policy goals such as deregulation of the oil industry and lobbying against the Employee Free...
, Eagle ForumEagle ForumEagle Forum is a conservative interest group in the United States founded by Phyllis Schlafly in 1972 and is the parent organization that also includes the Eagle Forum Education and Legal Defense Fund and the Eagle Forum PAC. The Eagle Forum has been primarily focused on social issues; it describes...
and other conservative groups - BioTechnology Industry Organization
- Coalition for 21st Century Patent ReformCoalition for 21st Century Patent ReformThe Coalition for 21st Century Patent Reform is an ad hoc organization of companies who are lobbying for reforms to the US patent system...
- Change To Win Labor Federation
- IEEE
- Innovation Alliance
- National Association of Patent PractitionersNational Association of Patent PractitionersThe National Association of Patent Practitioners is a United States non-profit organization of patent attorneys and patent agents and those working in the patent field. The NAPP was founded in 1996...
- National Small Business Association
- POPAPopa-People:Popa is a common family name in Romania. Persons named Popa include:*Celestina Popa, Romanian, artistic gymnast*Constantin Popa, Romanian-Israeli basketball player*Gabriel Popa, Romanian painter*Loredan Popa, Romanian canoer...
, the union of US patent examiners - Professional Inventors Alliance, PIAUSA.ORG
- American Innovators for Patent ReformAmerican Innovators for Patent ReformAmerican Innovators for Patent Reform , a non-profit organization based in New York City, NY, is a coalition of inventors, patent owners, researchers, engineers, entrepreneurs, corporate executives, patent agents and attorneys, and others involved in creating or protecting innovation and advocating...
Damages
The United States Department of CommerceUnited States Department of Commerce
The United States Department of Commerce is the Cabinet department of the United States government concerned with promoting economic growth. It was originally created as the United States Department of Commerce and Labor on February 14, 1903...
opposes the bill "in its entirety" unless Section 4 of the bill, which proposes changes concerning the "Right of the Inventor to Obtain Damages", is "significantly revised". The Department believes that if Section 4 is not revised, "the resulting harm to a reasonably well-functioning U.S. intellectual property system would outweigh all the bill's useful reforms."
International reaction
Yongshun Cheng, former Deputy Director of the IP Division of the Beijing High People's Court, has criticized the bill as being hypocritical. He asserts that the US should not be weakening the rights of US patent holders at the same time it is pressuring the Chinese government to strengthen the rights of Chinese patent holders.The Indian Pharmaceutical Alliance has pointed out that the provisions of the bill which allow for the validity of a US patent to be challenged shortly after the patent issues, could favor Indian generic drug
Generic drug
A generic drug is a drug defined as "a drug product that is comparable to brand/reference listed drug product in dosage form, strength, route of administration, quality and performance characteristics, and intended use." It has also been defined as a term referring to any drug marketed under its...
manufacturers by lowering the cost and legal risks associated with challenging drug patents of questionable validity.
External links
- From First-to-Invent to First-to-File: The Canadian Experience, Robin Coster, American Intellectual Property Law Association, April 2002.
- First-to-file or First-to-invent?, Charles L. Gholz, Journal of the Patent and Trademark Office Society, 82 JPTOS 891, December 2000.
- A Patent System for the 21st Century by the National Academy of SciencesUnited States National Academy of SciencesThe National Academy of Sciences is a corporation in the United States whose members serve pro bono as "advisers to the nation on science, engineering, and medicine." As a national academy, new members of the organization are elected annually by current members, based on their distinguished and...
, 2004 - Patent Reform in the 110th Congress: Innovation Issues Library of Congress report posted on Anticipate This! : Patent and Trademark Law Blog, January 26, 2008
- Patent bill would make sweeping changes by Declan McCullaghDeclan McCullaghDeclan McCullagh is an American journalist and columnist for CBSNews.com. He specializes in computer security and privacy issues. He is notable, among other things, for his early involvement with the media interpretation of U.S...
, News.com, September 13, 2005 - Elimination of the Best Mode Requirement: Throwing the Baby Out with the Bathwater? by Matthew J. Dowd, IPL Newsletter, Fall 2005
- Inventors wishing to keep First to Invent in the U.S.
- Don't Adopt Oppositions by Dale L. Carlson, Special to the National Law Journal, September 17, 2007 (con)
- Patent reform is crucial for innovators, consumers by Mark Chandler, CiscoCiscoCisco may refer to:Companies:*Cisco Systems, a computer networking company* Certis CISCO, corporatised entity of the former Commercial and Industrial Security Corporation in Singapore...
, San Francisco ChronicleSan Francisco Chroniclethumb|right|upright|The Chronicle Building following the [[1906 San Francisco earthquake|1906 earthquake]] and fireThe San Francisco Chronicle is a newspaper serving primarily the San Francisco Bay Area of the U.S. state of California, but distributed throughout Northern and Central California,...
, November 15, 2007 (pro) - Patents Pending, Claude Barfield & John E. Calfee, The AmericanThe American (magazine)The American is an online magazine published by the American Enterprise Institute , a conservative think tank in Washington, D.C. The magazine's primary focus is the intersection of economics and politics...
, January/February 2008 (con) - Bush Administration Opposes S. 1145 on Patent Reform, Nathaniel F. Wienecke, Assistant Secretary for Legislative and Intergovernmental Affairs of the United States Department of CommerceUnited States Department of CommerceThe United States Department of Commerce is the Cabinet department of the United States government concerned with promoting economic growth. It was originally created as the United States Department of Commerce and Labor on February 14, 1903...
, February 5, 2008 (con) - There Is a Role for Congress in Patent Litigation Reform by Ted FrankTed FrankTheodore H. Frank is an American lawyer, legal writer and blogger, based in Washington, D.C.. He is the founder and president of the Center for Class Action Fairness , established in 2009...
, AEI Legal Center for the Public InterestAEI Legal Center for the Public InterestAEI Legal Center for the Public Interest was formed when the National Legal Center for the Public Interest was merged into the conservative think tank American Enterprise Institute in September 2007...
, February 21, 2008 (pro) - Unions Pounce on Patent Reform, Associated PressAssociated PressThe Associated Press is an American news agency. The AP is a cooperative owned by its contributing newspapers, radio and television stations in the United States, which both contribute stories to the AP and use material written by its staff journalists...
, April 2, 2008