4/20. The House Judiciary
Committee's Subcommittee on Courts, the Internet, and Intellectual Property
held a hearing titled "Oversight Hearing on Committee Print Regarding Patent
Quality Improvement". The Subcommittee discussed, and heard testimony on, the
Committee Print of HR __ [52 pages in PDF], the "Patent Act of
The Committee Print would, among other things, provide a first inventor to
file rule, create a duty of candor, and create an administrative post grant
opposition process. It would eliminate the best mode requirement, and make it
harder to recover treble damages and obtain injunctive relief. It would also
require the publication of almost all patent applications after 18 months.
The Subcommittee heard testimony from four witnesses. See,
testimony [22 pages in PDF] of Jeffrey Hawley
(Eastman Kodak, on behalf of the Intellectual Property
testimony of Richard Lutton (Apple, on
behalf of the Business Software Alliance),
(Sidley Austin, on behalf of Genetech),
testimony [pages in PDF] of
LaFuze (Vinson & Elkins, on behalf of the ABA).
The Committee Print includes some of the provisions of prior bills, such
HR 5299 (108th Congress), the "Patent Quality Assistance Act of 2004",
which was sponsored by Rep. Howard Berman
(D-CA) and Rep. Rick Boucher (D-VA). See
also, story titled "Berman and Boucher Introduce Bill to Provide for Post
Grants Reviews of Patents" in
TLJ Daily E-Mail
Alert No. 999, October 19, 2004.
Likewise, the Committee Print addresses some, but not all, of the issues
raised in some recent and lengthy reports that make recommendations for changes
to patent law and procedure. Among these are the
Federal Trade Commission's (FTC) October
28, 2003, report titled "To Promote Innovation: The Proper
Balance of Competition and Patent Law and Policy" (see,
Summary [18 pages in PDF] and
Report [2.28 MB in
PDF]); the National Academies' Board on Science, Technology, and Economic Policy (STEP)
report titled "A
Patent System for the 21st Century" (see also
171 page in paperback version sold by Amazon); the
American Intellectual Property Law Association's (AIPLA)
report [49 pages in PDF] titled "AIPLA Response to the National
Academies Report entitled ``A Patent System for the 21st Century´´"; and the
American Bar Association's (ABA)
Section of Intellectual
Property Law report titled "Response to the Recommendations of the National
Research Council of the National Academies on ``A 21st Century Patent System´´".
The following is a brief, first glance, section by section summary of the contents of the
First Inventor to File. The Committee Print provides for a "first
inventor to file" rule. It accomplishes this by amending
35 U.S.C. § 100, which is the definitional section for
Chapter 10 of the Patent Act, which pertains to patentability of inventions.
See, Committee Print, § 3(a), at pages 2-3.
It adds the following language:
"(f) The term `inventor´ means the person or persons who invented the
subject matter of the invention.
(g) The terms `joint inventor´ and `coinventor´ mean one of the persons
who invented the subject matter of the invention.
(h) The `effective filing date´ of a claimed invention is--
(1) the filing date of the patent or the application for
patent containing the claim; or
(2) if the patent or application for patent is entitled to a
right of priority of any other application under section 119 or section 365(a)
or to the benefit of an earlier filing date in the United States"
This changes the first to invent procedure. The recent history of
debates in the House over patent reform proposals
suggests that this proposal may generate controversy and opposition.
Rewrite of § 102. The Committee Print substantially rewrites
35 U.S.C. § 102, regarding conditions for patentability and prior art. See,
Committee Print, § 3(b), at pages 3-5.
One reason for rewriting this section is to make this section compatible with
the section of the bill which shifts to the first inventor to file system.
The new section is as follows:
"(a) NOVELTY; PRIOR ART. -- A patent for a claimed invention may not be
(1)(A) the claimed invention was patented, described in a printed
publication, or otherwise known more than one year before the effective filing
date of the claimed invention; or
(B) the claimed invention was patented, described in a
printed publication, or otherwise known before the effective filing date of the
claimed invention, other than through disclosures made by the inventor or by
others who obtained the subject matter disclosed directly or indirectly from the
(2) the claimed invention was described in a patent issued under section
151, or in an application for patent published under section 122(b), in a case
in which the application or the patent names another inventor and the
application was effectively filed before the effective filing date of the
"(b) COMMONLY ASSIGNED INVENTION EXCEPTION. -- Subject matter developed by a
person other than the inventor that would have qualified as prior art under
subsection (a)(2) but not under subsection (a)(1) shall not be prior art to a
claimed invention if the subject matter and the claimed invention were, not
later than the effective filing date of the claimed invention, owned by the same
person or subject to an obligation of assignment to the same person."
"(c) REASONABLE AND EFFECTIVE ACCESSIBILITY REQUIREMENT.
(1) IN GENERAL. -- For the purposes of subsection (a)(1), subject matter
is known when it becomes reasonably and effectively accessible, either through
its use or through its disclosure by other means, or when it has been made
inherently known from subject matter that has become reasonably and effectively
(2) REASONABLY AND EFFECTIVELY ACCESSIBLE. In this section, subject
matter is ‘reasonably and effectively accessible’ if the subject matter can be
accessed and comprehended, without resort to undue efforts, by persons of
ordinary skill in the art to which the subject matter pertains."
"(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVELY FILED. -- A patent or
application for patent is effectively filed under subsection (a)(2) with respect
to any subject matter described in the patent or application--
(1) as of the filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to a right of
priority of any other application under section 119 or 365(a) or to the benefit
of an earlier filing date in the United States under section 120, 121, or 365(c)
based upon one or more prior filed applications for patent, as of the filing
date of the earliest such application in which the claimed invention is
disclosed in the manner provided by section 112."
Amendment to § 103. The Committee Print amends
35 U.S.C. § 103, regarding conditions for patentability and non-obviousness.
This change pertains to accommodating the change to a first inventor to file
system. See, Committee Print, § 3(c), at pages 5-6.
Repeal of § 104. The Committee Print repeals
35 U.S.C. § 104, regarding inventions made abroad.
See, Committee Print, § 3(d), at page 6.
Repeal of § 157. The Committee Print repeals
35 U.S.C. § 157, regarding invention registration.
See, Committee Print, § 3(d), at page 6.
Amendment of § 120. The Committee Print amends 35 U.S.C. § 120 with
respect to the earlier filing date for inventor and joint inventor. See,
Committee Print, § 3(f), at page 6.
Repeal of § 291. The Committee Print repeals 35 U.S.C. § 291,
regarding interfering patent remedies. See, Committee Print, § 3(h), at page 7.
Revision of § 135. The Committee Print also rewrites
35 U.S.C. § 135(a), regarding institution of interferences. See, Committee
Print, § 3(i), at page 7-8.
Patentable Subject Matter.
35 U.S.C. § 101 currently provides that "Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title." The Committee Print would replace
this with "The inventor of any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, has the right
to apply for and to obtain a patent for the invention, subject to the conditions
and requirements of this title." See, Committee Print, § 4(a), at page 9.
Filing by Other Than Inventor. The Committee Print
35 U.S.C. § 118. See, Committee Print, § 4(a), at pages 9-10. The new
language provides, in part, that "A person to whom the inventor has assigned or
is under an obligation to assign the invention may make an application for
Elimination of Best Mode Requirement. This is a short, but critical,
change. The Committee Print revises
35 U.S.C. § 112 by removing the clause "and shall set forth the best mode
contemplated by the inventor of carrying out his invention". See, Committee
Print, § 4(d), at page 10.
Proponents of this change state that this will have the effect of
eliminating a subjective element in patent litigation, thereby reducing
litigation costs, and increasing the predictability of litigation.
Duty of Candor. The Committee Print includes a lengthy section
that imposes duties of candor
on persons associated with the filing and prosecution of patents, and persons
adverse to patent applications. See, Committee Print, § 5, at pages 10-29.
First, the Committee Print adds a new section to the Patent
Act that imposes a duty of candor. It creates a new § 136 that provides, in
part, that the USPTO shall promulgate regulations that "impose a duty of candor
and good faith on individuals associated with the filing and prosecution of an
application for patent and on individuals assisting a patent owner in
proceedings before the Office involving a patent."
It further provides, in part, that "The duty shall require each such
individual to timely disclose information known to that individual to be
material to any issue before the Office in connection with the application or
patent, and to not materially misrepresent information."
It further provides that if the Director of USPTO finds that an individual
who owes a duty of candor and breached that duty, then that shall constitute
"misconduct". The consequences of such a finding include that "A
patent may be held unenforceable". The new section also sets out other
It also provides that no court or other state or federal government entity,
other than the USPTO, "may investigate or make a determination or an
adjudication with respect to an alleged violation of the duty of candor and good
faith". See, Committee Print at pages 10-26.
Committee Print adds a separate new section to the Patent Act that imposes a
duty of candor on parties adverse to a patent application. It creates a new §
137, that requires the USPTO to promulgate regulations. The penalties for
violation include imposition of civil monetary penalties. See, Committee Print
at pages 26-28.
Third, as a consequences of the two
new sections imposing duties of candor, the Committee Print removes various
provisions throughout the Patent Act that reference "deceptive intent" and
deceptive intention". See, Committee Print at pages 28-29.
Damages for Infringement. The Committee Print limits a patent holder's
ability to obtain treble damages, and limits the size of some damage awards.
This is another key part of the bill. See, Committee Print, § 6, at pages 29-31.
First, it limits the situations in which treble damages may be assessed
against an infringer, pursuant to
35 U.S.C. § 284. For example, the Committee Print provides that "The absence
of an opinion of counsel shall not create an inference that the infringement was
willful." It also provides that "Increased damages may not be awarded based
merely upon the knowledge of a patent or its contents by the defendant prior to
Second, this section provides that a claimant may recover treble
damages, after providing a detailed written notice. It provides that,
"Increased damages may be awarded for any infringement--
(A) occurring after the defendant receives from the plaintiff written
(i) contains a charge of infringement,
(ii) identifies the specific patent, claims, and allegedly
infringing products or processes infringed, and
(iii) is sufficient to give the defendant an objectively
reasonable apprehension of suit on such patent, unless the defendant had an
informed good faith belief that a court would reasonably hold that the patent is
invalid, not infringed, or unenforceable;
(B) in which the defendant intentionally copied the patent subject matter
with knowledge that it was patented, unless the defendant had an informed good
faith belief that a court would reasonably hold the patent is invalid, not
infringed, or unenforceable; or
(C) if the patent was asserted against the defendant in a previous
judicial proceeding in a Federal court, and the present infringement is not more
than colorably different from the conduct asserted to be infringing in the
This section may be intended to force attorneys for patent
holders that might sue for infringement to provide specific and detailed written
notices in advance. Several persons stated at the Subcommittee's hearing that
many attorneys now send out vague form letters.
Third, this section provides that "Whenever the invention is incorporated
into, or is made part of, a method or apparatus otherwise known in the art, or
is an approved method or apparatus including within it elements otherwise known
in the art, then any award of a reasonable royalty or other damages shall be
based only upon such portion of the total value of the method or apparatus as is
attributable to the invention alone and shall not include value attributable to
the method, apparatus, or elements otherwise known in the art or contributed by
the infringer or its licensors."
This section may most benefit software and computer industry companies found
to have infringed one patent, but where hundreds or thousands of inventions are
incorporated into the infringing product.
Injunctions. The Committee Print amends the Patent Act with respect to the
availability of injunctive relief in patent infringement actions. It makes it
harder to get an injunction. This is another short, but important, section of
the bill. See, Committee Print, § 7, at pages 31-32.
It provides that "A court shall not grant an injunction under
this section unless it finds that the patentee is likely to suffer irreparable
harm that cannot be remedied by the payment of money damages. In making such a
finding, the court shall not presume the existence of irreparable harm, but
shall consider and weigh evidence that establishes or negates any equitable
factor relevant to a determination of the existence of irreparable harm,
including the extent to which the patentee makes use of the invention."
Continuation Applications. The Committee Print adds a new § 123
to the Patent Act titled "Limitation
on enlargement of claim". This is targeted at eliminating the enlargement
of claims through continuing applications. See,
Committee Print, § 8, at pages 32-33.
Publication of Patent Applications After 18 Months. The Committee
Print includes a lengthy section pertaining to post grant procedures. See,
Committee Print, § 9, at pages 33-49. First, § 9(a) would have the effect of
requiring that almost all patent applications be published within 18. See, §
9(a), at pages 33-34.
Post Grant Opposition Procedure. One of the most important, and
longest, provisions of the Committee Print would add a new Chapter 32 to the
Patent Act, titled "Post-Grant Opposition Procedures". See, Committee Print, §
9(f), at pages 35-49.
This language is not new. Much of it is a verbatim copy of the parallel
HR 5299 (108th Congress).
This bill provides that "A person may request that the grant or reissue of a
patent be reconsidered by the Office by filing an opposition seeking to
invalidate one or more claims in the patent".
This would be a public proceeding, with the contents of the file open to
public inspection. However, the bill also provides that "if requested by the
person making the request under section 321, the identity of a real party in
interest shall be kept separate from the file of the opposition and made
available only to Government agencies upon written request, or to any person
upon a showing of good cause."
This procedure would not be available "if the opposer relies
upon factual evidence or expert opinions in the form of affidavits or
declarations during the opposition proceeding or if the opposer exercises the
right to appeal under section 141".
An opposition request must be made within nine months of the grant (or
issuance of a reissue patent), unless the patent holder otherwise consents in
The bill further provides that the Director of the
U.S. Patent and Trademark Office (USPTO)
"may dismiss an opposition request that the Director determines lacks
substantial merit." However, such a "dismissal of an opposition request shall
not be admissible in any civil action related to the patent against which a
dismissed request was filed."
The bill provides that "The Director shall assign the opposition proceeding
to a panel of three administrative patent judges ... The panel shall decide the
questions of patentability raised in each opposition request for which an
opposition has been instituted. The decision shall be based upon the prosecution
record that was the basis for the grant of the patent and the additional
submissions by the parties to the opposition proceeding authorized under this
The bill provides that the patent owner may file responses to opposition
requests, and may request amendment of any claims that are the subject of an
opposition request. It further provides for limited discovery, hearings, briefs,
and written decisions.
It also addresses the burden of proof. "The opposer in an opposition
proceeding under this chapter shall have the burden to prove the invalidity of a
claim by a preponderance of the evidence. The determination of invalidity shall
be based upon the broadest reasonable construction of the claim."
Then, "the determination with respect to an issue of invalidity raised by an
opposer shall bar the opposer from raising, in any subsequent proceeding
involving that opposer under this title, any issue of fact or law actually
decided and necessary to the determination of that issue."
However, the bill provides one exception. "If an opposer in an opposition
proceeding demonstrates ... that there is additional factual evidence that is
material to an issue of fact actually decided in the opposition proceeding, and
necessary to the final determination in the opposition proceeding, that could
not reasonably have been discovered or presented in the opposition proceeding by
that opposer, the opposer may raise, in that subsequent proceeding, that issue
of fact and any determined issue of law for which the issue of fact was
There is wide support for creating a post grant opposition procedure. However,
supporters differ with respect to the procedural details.
Components and Combinations. The Committee Print amends 35 U.S.C. §
271(f) by adding at the end the following language: "An item
supplied in or from the United States is not a `component´ under this section
unless the item is a tangible item that is itself combined physically with other
components to create the combination that is alleged to infringe." See,
Committee Print, § 10, at page 49.
Transitional Provisions. Section 11 of the Committee Print, at pages 49-51,
contains transitional provisions.
Harmonization. Section 11 of the Committee Print, at pages 51-52,
pertains to harmonization with Europe and Japan.