The attached legislative proposal was prepared by the House Subcommittee on Intellectual Property chaired by Congressman Lamar Smith (R Tex). Although the proposal is merely a discussion draft at this point, it is expected that a parallel Bill will be introduced within the next few days. The Senate’s newly formed Subcommittee on Intellectual Property is scheduled to hold a hearing on the patent system April [25th]. It is quite possible that this proposal will serve as an agenda for the Senate hearings.
The proposed legislation includes changes to:
- Creating a post-grant opposition procedures;
- Willfulness: Increased damages may not be awarded based merely on the knowledge of a patent or its contents;
- Taking away the clear right for an injunction for infringing activity;
- First-to-file (rather than first-to-invent) rights;
- Expanded definitions of prior art;
- Assignee may file for the application and be granted a patent (rather than the inventor);
- Elimination of the best mode requirement;
- Changes to the duty of candor and unenforceability;
- Damages: when invention is a portion of a larger product, royalties are only calculated for a portion of the product;
- Publication of all patent applications after 18 months;
- Prior user rights;
- Overruling Microsoft v. Eolas — component must be tangible;
- and more.
Over the past year, the AIPLA, IPO, Microsoft, and others have all been beating the patent reform drum — each with a separate agenda. This proposal appears to be an amalgamation of all the proposals — with enough controversial points to get most everyone up in arms.