by Dennis Crouch
Senator Coons is expected to introduce his competing patent reform bill into the Senate this week under the title Strong Patents Act. As the name suggests, these provisions here tend to strongly favor patent holders. With his usual understated tone, Herb Wamsley writes that Coons’ bill “will differ substantially from Rep. GOODLATTE’s bill H.R. 9.” In the current political state, this provision has no hope of being enacted. However, I suspect that supporters of provision see it as having strong gridlock-creating potential.
The following is a fairly high-level review of the particular proposals as well as a link to the text of the bill.
Provisions related to PGR/IPR/Reexams:
Claim Construction during Post-Issuance Review Proceedings shall be according to the “ordinary and customary meaning” and in the same way that a court would construe the claim in an action to invalidate a patent. This provision would have the beneficial impact of better-linking the parallel court and PTO proceedings. The provision would also make it more difficult for the PTAB to invalidate patents because the claims would no longer be given their broadest reasonable interpretation.
Amendments to the Claims during Post-Issuance Review Proceedings will be allowed if “reasonable.”
Presumption of Validity will Apply to patents being challenged in post-issuance review proceedings such that unpatentability of a previously issued claim would require clear and convincing evidence.
Standing to File Post-Issuance Review Proceedings will be limited to only entities charged with infringement.
In Response to a Post-Issuance Review Petition, the patentee will be allowed to submit supporting evidence.
Separating the Two Steps of Post-Issuance Review Proceedings: Under the proposed law, a PTAB judge who participates in the decision to grant a PGR/IPR petition will not then be allowed to decide the merits of the case.
Blocking Anonymous Petitions: The proposed law would allow the patentee to discover the real party in interest associated with the filing of either a reexamination or an PGR/IPR petition.
A One Year Deadline will be instituted for filing requests for ex part reexamination triggered by service of a complaint alleging infringement.
Form 18 is to be eliminated.
Fees collected by the USPTO will be made available to the Director until expended including past each fiscal year.
The Punitive Damages Provision would be amended to allow the court “in its discretion” to treble damages “upon determining, by a preponderance of the evidence, that the infringement was willful or in bad faith.”
Inducement of Infringement becomes a cause of action as outlined by the Federal Circuit in Akamai. This would effectively overrule the Supreme Court’s decision in the case.
The provision would fix a seeming gap in the current micro-entity status requirements that don’t actually allow universities to claim micro-entity status (for a 75% fee reduction) but instead only those with a duty to assign rights to the university.
Rogue and Opaque Demand Letters:
The new law would specify that certain bad-faith demand letters are unlawful under the FTC Act and the FTC would have power to enforce the law with a maximum penalty of $5 million.
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