Patent reform back again for 2009
March 04, 2009

Yesterday Senators Patrick Leahy and Orrin Hatch (chairman and ranking member of the Senate Judiciary Committee) and Representatives John Conyers and Lamar Smith (chairman and ranking member of the House Judiciary Committee) introduced the Patent Reform Act of 2009.

Click below for more detail of the newly-introduced legislation, as well as links to other coverage of the legislation and press releases by the various industry groups who have lobbied heavily on the issue over the past several years.

Many of the provisions from previous patent reform legislation remain, including:

  • Change from first-to-invent to first-to-file system
  • Ease requirements for filing oath when there is a noncompliant inventor (only in Senate version)
  • Reasonable royalty awards must be tied to the "specific contribution of the invention over the prior art"
  • Implementation of post-grant review procedures
  • Provisions for third parties to submit prior art while applications are pending

Other sections are changed from previous patent reform legislation, including:

  • Codification of the Seagate standard for willful infringement
  • Reasonable royalty awards must consider whether there has been any non-exclusive licensing of the invention in the marketplace
  • Adds prior public use or sale to the permissible grounds for reexamination
  • Venue provisions for infringement suits that will largely target suits to the forum where the defendant is located
  • Removal of 50-mile from DC residency requirement for Federal Circuit judges
  • Federal Circuit jurisdiction of interlocutory claim construction appeals

Several provisions were also deleted from previous legislation:

  • Changes to inequitable conduct
  • Applicant Quality Submissions (AQS)
  • Immunity from suit for electronic check processing patents
  • Ending fee diversion
  • 18-month publication requirement

Useful links:

Organizational press releases:

Other coverage:

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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.


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