When a patent is infringed for the benefit of the government, the patentee may have rights but cannot sue to stop the infringement. Under cucombine_p44_cartoon_us_reform_to_45rrent U.S. federal regulations ,the only remedy available to a patentee whose patented product or method is used “for the Government” is to sue the government for reasonable royalties in the United States Court of Federal Claims in Washington.
The court would eliminate the one-year grace period unless the inventor was the”first-discloser.” A”derivation” proceeding would replace interferences. The Patent Reform Bill 2010 is the latest incarnation of an initiative that has been in the pipeline for several years. In 2005, 2007 and 2008 senators tried to pass reform bills, but they petered out in the face of opposition or ran out of time in the congressional session. In April 2010 Managers Amendment is an amended version of the 2009 iteration, proposed by Republican and Democrat senators. Given that US patent laws have not been significantly reformed in more than 50 years, most agree that some updating is necessary, and if only to take account of the changes to the IP landscape that have taken place in the interim.
First-To-File: The proposed reform would largely eliminate US’s unique first-to-invent priority system. The bigger deal is that the proposal False Marking: The proposed reform would eliminate the right of “any person” to file a false marking claim. Rather, those claims would be limited to individuals who have “suffered a competitive injury.” This change would apply to eliminate standing of already-filed cases.
Willful Infringement:
The third subjective element in patent litigation addressed by the NAS is “willful infringement” under which a court may increase damages up to three times if the court or jury determines that the accused infringer willfully infringed a patent. During the period when the NAS reviewed this doctrine, there was no effective threshold test for alleging willful infringement, therefore the required level of pre-filing investigation by the plaintiff was relatively modest and willfulness was asserted in most cases. NAS found that the doctrine of enhancing damages against defendants, who knew of patents that they were later found to infringe and who were found to not have complied with the Federal Circuit’s judicially created doctrine to exercise”duty of care” to avoid such patents, resulted in unforeseen and wasteful consequences. The fact that a defense to a claim of willful infringement was good-faith reliance on an opinion by counsel that the patent was invalid or not infringed resulted in a cottage industry of lawyers providing such opinions at cost reaching $100,000 or more. Worse, NAS found that in some business sectors, exposure to claims of willful infringement led to a practice of deliberately avoiding learning about issued patents, thereby undermining the Framers’ desire that patents promote the sciences and useful arts. NAS recommended that the doctrine of willful infringement be eliminated.During the Congressional consideration of how to respond to the NAS recommendation, however, the issue was overtaken by the Federal Circuit’s en banc decision in are Seagate Tech., LLC, 497 F.3d 1360 (2007). In Seagate, the Court found the”duty of care” rule which it created in 1983 was inconsistent with the Supreme Court’s view that, to be willful, some level of “objective recklessness” must be involved.
Post-Grant Review:
The statute would provide for a whole new system of post-grant reviews that would be handled directly by the patent appeals board. The proposal also calls for a new “supplemental examination” to ensure that the patentee has fulfilled the duty of disclosure.
Pre-Issuance Submissions of Prior Art by Third Parties: These would be allowed.
Litigation Venue: Cases should be transferred to venues that are “clearly more convenient.”
Fee Setting Authority: The USPTO would be given authority to adjust its fees so long as the fees are “in the aggregate set to recover the estimated cost to the Office for processing, activities, services and materials relating to patents and trademarks, respectively.”
Federal Circuit Judicial Residency: Judges for the Federal Circuit would no longer be required to live in the DC area.
Micro-Entity: A new type of entity defined as a “micro entity” that has fewer than 5 patent applications that would qualify for even further reduced fees.
Best Mode Requirement: The best mode requirement would remain as part of the law. However, failure to fulfill the best mode requirement would no longer be an invalidity defense nor could it serve as a basis for holding a patent unenforceable.
