:: Proposed Patent Reform Legislation Under Consideration in the US Congress

:: Unscheduled Closing of Federal Government

:: Upcoming Federal Government and BSKB Holidays

:: Electronic Version Requested

:: Communicating with BSKB via E-Mail

Proposed Patent Reform Legislation Under Consideration in the US Congress

Congressman Lamar Smith (R-TX), chairman of the House subcommittee on Courts, the Internet and Intellectual Property, introduced HR 2795, the Patent Reform Act of 2005, on 8 June 2005. This legislation proposes the most sweeping changes to U.S. patent law since the Patent Act of 1952. As with any proposed legislation, it is not known if any or all of these changes will ultimately go into effect.

Proponents of this legislation argue the need to improve patent quality, harmonize U.S. law with other major patent systems worldwide, and reduce costs of (and abuses in) patent litigation in the U.S. today.  Many of the proposed changes were recommendations contained in recent reports on the U.S. patent system by the Federal Trade Commission (FTC) and the National Academy of Sciences (NAS).

Some of the most important issues under consideration are:

First-Inventor-to-File- this legislation would change the U.S. patent system to a “first- inventor-to-file” system from the current “first-to-invent” system.  The U.S. is the only country under a “first-to-invent” system and harmonizing to the standard used worldwide would simplify obtaining global patent rights, eliminate interference practice, and simplify the definition of “prior art”.

Grace Period- the U.S. would maintain a one-year grace period in which to file a patent application after publicly disclosing the subject matter. The legislation also states that if Japan and Europe adopt a one year grace period, the U.S. would recognize the foreign filing date instead of the U.S. filing date for purposes of calculating the grace period, essentially eliminating the so called “Hilmer doctrine”.

Assignee Filing- assignee filing would be permitted.

Best Mode- the best mode requirement of 35 U.S.C. sec. 112 would be eliminated.

Post Grant Opposition- a post grant opposition procedure would be established in the United States Patent and Trademark Office ("USPTO") during which anyone could challenge the validity of a patent on any ground.  The opposition would have to be filed within a 9-month “window” after issuance of the patent and the USPTO would be required to complete the review within 1 year.

Pre-Grant Prior Art Submissions- interested third parties would be permitted to submit prior art to the USPTO for consideration during the examination process.  The third party would be required to submit a description of the relevance of each document included.

Publication of Applications- all applications would be published 18-months after the earliest filing date, eliminating the ability to “opt out” of publication if the application is not filed abroad.

 Duty of Candor- procedures would be established within the USPTO to investigate violations of the duty of candor standards for applicants and their representatives. The issue of inequitable conduct would be dealt with in the USPTO rather than in the courts.

Willful Infringement- the standards for awarding treble damages for willful infringement would be defined and available only in limited circumstances.

Apportionment- in the case of a combination, the courts would consider only the portion of the “realized value” of the inventive contribution when determining reasonable royalty damages. 

Venue- civil suits could only be filed in the judicial district that the defendant resides or has an established place of business.

Two other controversial issues appeared in earlier versions of the bill, but have been removed from the current version.  They are limits on injunctive relief, and limits on continuation applications.  However, the Supreme Court has agreed to hear the eBay v. MercExchange case that deals with the issue of injunctive relief.  Additionally the USPTO is considering rule changes that would limit the filing of continuation applications.

The debate within Congress on patent reform will likely continue into next year.  While some experts predict that the prospects for passage of patent reform legislation are good, it remains to be seen if the issues can be resolved before the end of the current session of Congress. As these proposals are debated in Congress, modifications are likely.  We will continue to monitor the progress of patent reform legislation and report the status in future BSKB IP Updates.

See www.ipo.org/Template.cfm?Section=Patent_Reform1&CONTENTID=

19482&TEMPLATE=/

ContentManagement/ContentDisplay.cfm

Summary supplied by Nicholas P. Godici.

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Unscheduled Closing of Federal Government

When the Washington, D.C. area experiences severe weather, power outages, etc., the Federal Government (including the U.S. Patent and Trademark Office (USPTO)) sometimes does not open for business that day. When this occurs, our firm's Falls Church office will also be closed for business. However, all USPTO filings due on a day where the Federal Government has closed for the day will be considered as being timely filed on the next business day that the USPTO is open.

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Upcoming Federal Government and BSKB Holidays

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Electronic Version Requested

This is a reminder that in view of the requirements set by the USPTO, we request that you forward an electronic version of all new applications (specification, claims and abstract) at your earliest convenience, preferably together with your new application order letter. This can be done by either secure e-mail or diskette in Microsoft Word®-compatible format. Since it is necessary to provide substitute paragraphs when making amendments to both the specification and claims, it is of great assistance to us to have an electronic version available. The availability of an electronic version not only assists us in accuracy, but also reduces the attorney time/cost involved in reviewing the amendments. We appreciate your cooperation in this regard.

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Communicating With BSKB Via E-Mail

When communicating with members of BSKB via e-mail concerning business matters, please "cc" mailroom@bskb.com. This will ensure that your communication will be seen by our staff in the event that the BSKB member to whom you sent the message is out of the office. Please also feel free to contact BSKB regarding encryption of confidential communications before sending any e-mails.

When forwarding new U.S. Patent and Design applications to us for filing in the USPTO through our firm, please be sure to use our most current Combined Declaration and Power of Attorney and Assignment Forms. Current versions of these forms are available on our web page in both "fillable" and "downloadable" formats. Word processing versions are also available upon request. Please go to http://www.bskb.com/ and click on "Download Forms".

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