Patent Act of 2015 [Updated]

The Senate Judiciary Committee approved the Patent Act of 2015 (Protecting American Talent and Entrepreneurship Act) as amended by the Manager’s Amendment as well as additions from Senators Feinstein and Cornyn.  The vote was 16-4 with only Senators Cruz, Vitter, Durbin, and Coons voting Nay. Yeas include Senators Grassley, Hatch, Sessions, Graham, Cornyn, Lee, Flake, Perdue, Tillis, Leahy, Feinstein, Schumer, Whitehouse, Klobuchar, Franken, and Blumenthal.

We can expect a few more amendments before being passed in the Senate.  Notably, there is continued debate over whether to alter the statute to force the PTO to more liberally allow claim amendments during post-grant proceedings.

[Update] In the original version of this post, I mistakenly wrote that universities are pushing to have their patents excluded from post grant proceedings.  That was in error, the move rather is from the pharma and life science tech sector to exclude patents “that are subject to the Hatch-Waxman Act and Biologics Price Competition and Innovation Act (BPCIA) processes.” [Link to Grassley Statement]


30 thoughts on “Patent Act of 2015 [Updated]

  1. 6

    I don’t patent reform is addressing the right problem.

    I was looking at the Wright brother’s patent. It describes a very useful invention which lets you control the roll (around the long axis) of an airplane. Before this invention every one knew roll was a problem but no one knew how to fix it. The Wright brothers experimented and figured out a solution to the problem of roll and patented it.

    The Wright brothers realized 2 things:

    1)Realized that you can control the roll by applying a force in the opposite direction to the roll. (This is a truism for everything in the universe, if you want something to move then give it a push.)

    2)Realized (after long experimentation) that changing the shape of the wings at the edge of the wing is a practical and effective way to apply the force.

    If the current PTO were transported in time back to the day’s of the Wright brothers before they had their patent, would it have been possible to patent the just the first idea? For example claim 1:

    1. In a flying-machine, a normally flat
    aeroplane having one or more force application devices which apply force around the long axis of the flying machine and means for so controlling the force, substantially as described

    Instead of the much more lengthy and useful original claim by the Wright brothers:

    1. In a flying-machine, a normally flat
    aeroplane having lateral marginal portions
    capable of movement to different positions
    above or below the normal plane of the body
    of the aeroplane, such movement being about
    an axis transverse to the line of flight, where-
    by said lateral marginal portions may be
    moved to different angles relatively to the
    normal plane of the body of the aeroplane,
    so as to present to the atmosphere different
    angles of incidence, and means for so mov-
    ing said lateral marginal portions, substan-
    tially as described.

    I think this might be patentable in today’s PTO because I have an actual inventive idea: An aeroplane with roll control.

    It does not exist yet, because the Wright brothers have not invented it yet. And it may never exist if someone solves the problem of roll by some other means than applying force in the opposite direction of the roll.

    If the PTO might grant this (on a bad day) then there will continue to be patent reform acts every few years.

    1. 6.1

      Slash, I totally agree.

      The problem we have today stems from the bar’s hostility to Halliburton. The bar got 112(f) passed that Rich said in Feutterer broadly reversed Halliburton. This lead to a number of cases that approved of functional claiming, including Donaldson that overruled a number of CCPA cases of some vintage that all but outlawed functional claiming.

      Stripped of legal authority, the PTO had no weapons to reject broad functional claims. Litigators almost never raise the issue of indefiniteness, and when they do, they blow it as we saw in the recent Nautilus case.

      Yet the Federal Circuit seems to be waking up to the issue in recent cases. Perhaps they have heard the complaints.

      Personally, I am appalled at the claims I see every day. I think patent attorneys have completely lost the ability to claim structure. All they do today is claim results.

      But Rich was wrong in Feutterer. 112(f) does not and did not reverse Halliburton. Further, congress did not intend that 112(f) trump 112(b) such that “novel” structure could be claimed functionally. But that was the holding of Donaldson, a case that shall live in infamy.

      1. 6.1.1

        Not just 112(f) Ned – are you purposefully trying to get this wrong?

        Halliburton was abrogated.


        Federico speaks of the augmented use of terms soundin in functionality across the board – NOT limited to 112(f). In re Orthokinetics speaks of functionality outside of 112(f).

        You have been put on notice of the proper reading of the law – please stop obfuscating.


          (and I would add that even Prof. Crouch coined a term for this Congress-written augmentation: Vast Middle Ground – please stop your drive-by monologuing internet style shout downs and integrate reality into your posts)

      2. 6.1.2

        …and as Judge O’Malley warns – from the reference you provided – it is improper to call upon the judiciary to re-write the words of Congress.

        You don’t like this Vast Middle Ground? You want the law changed? Talk to your Comgressman. Respect the statutory nature an constitutional allocation of authority for patent law. Put your unbalanced judicial power uber alles in check.

  2. 5

    I’ve lost count of the number of articles that build a policy argument on top of Bessen and Meurer’s “patent trolls cost the economy $29 billion per year” statement. This PR piece is just one more (it directly cites a Harvard Business Review article, which in turn cites Bessen).

    Too bad those estimates were badly flawed and/or outright fictitious.

    1. 5.1

      That’s the point of the propaganda – repeat it often enough so that it seems “true.”

      Otherwise known as this site’s typical anti-software, anti-business method, anti-patent crowd of Malcolm, Ned, and the echoes.

      1. 5.1.1

        repeat it often enough so that it seems “true.”

        Remember “every patent creates a job”?

        How about “big companies don’t innovate”?

        Yes, let’s all pretend that patent trolls don’t exist and that the patent system is working perfectly fine. Pay no attention to those bottom feeders and their laughably junky claims. All the grifters rushing in to “make millions off Internet patents” is just like the sewing machine wars. Or something. After all, that’s what Katznelson says. And he’s like totally unbiased.

        Funny stuff.


          So, to paraphrase you MM, “I am right so what if Bessen has been discredited. We are still going to quote ’cause we know we are right. There.”


          I suppose you think that Boundy and Tafas were “biased” as well, eh Malcolm?

          And Noonan and Chisum and, well, anyone that has ever been pro-patent…

  3. 3

    It seems to say that I’m off the hook if my sole relevant financial interest is “equity” in an entity, so long as I acquired said equity before the asserting entity became a troll.

    What’s bizarre about that is I can’t control when the “asserting entity” became a troll; at most, I could only ensure that the entity in which *I* have equity is not a troll (at least at the time I agree to accept such equity).

    So…I could form a startup and perhaps be confident that it’s not a troll at that time, but if it gets acquired by (or licenses to) another company, then I may have rather limited ability to ensure that the IP never gets asserted by some party who was a troll at the time I formed my startup.

    Maybe they only contemplated that there would be one entity involved, but I don’t think that’s how it reads (nor is that how business works).

    1. 3.1

      Ken, let me inform you that if you have IBM stock, you are invested in a troll.

      1. 3.1.1

        Ned, in that very same mode, name one entity that seeks to legitimately maximize its property holdings by engaging in licensing activities of property that it does not “make” – an action not required under patent law (and for those that understand the very basic understanding of a patent as a negative right, combined with the understanding that most innovations are of the improvement variety; of which any “make” notion should bring immediately problematic).

        Name one such entity that is also not fully engaged with perfectly legal activities in and of itself of owning such property (including enforcement options sanctioned by our laws).

        Name one.

        Snnnnnif – is that a witch I smell burning?

  4. 2

    So…if I have a perfectly valid patent, and I license it to a company who turns out to be overly aggressive in their attempts to enforce it (or perhaps they sub-license it to someone else who does so…), even if I disapprove of such behavior, this bill leaves ME on the hook unless I renounce my royalty rights?

    1. 2.1

      Ken, the legislation treats startups and small inventors as trolls.

      Trollism, to coin a term, should be made into criminal offense and dealt with that way. For the rest of us, just leave the patent system the way it is. Let the courts handle patent cases.

      And get rid of IPRs.

      1. 2.1.1

        should be made into a criminal offense“…

        …so you want to treat start-ups and small inventors as criminals…?

        Dr Freud, I found your patient.


          anon, a big PAE known as IBM would say something like that to deflect attention from themselves.

      2. 2.1.2

        Let the courts handle patent cases.

        Paging O’Malley, Judge O’Malley, we have a violator of your main point here…

    2. 2.2

      Law of intended consequences.
      Those pushing such ends want you to be in fear of getting screwed, so that you or your licensees never go after them.

      Hooray for patent system destruction!!! Some folks really want to weaken the system to minimize new invention disruption to existing strong businesses. They are succeeding while the rest of the disorganized patent bar and inventor community watch their own destruction….

      1. 2.2.1

        Blindman, how true. How true.

        What I would like is someone to identify the main proponents of the Patent Act by company. I would also like someone to identify who their Chief IP Counsel is, so that we know who they are. They may be looking out for number 1, which is their right. But I do have the hunch that most of them know exactly what they are doing. They are liars, cheats, and little better than used car salesmen who are using the troll phenomena to cripple the patent system to their benefit.


          >They are liars, cheats, and little better than used car salesmen who are >using the troll phenomena to cripple the patent system to their benefit.

          That is what I have been saying for years. But, I include those that try to end eligibility for information using the courts like Lemley and R. Stern (the author of the root of all evil–Benson.)

          Interestingly, I am going to guess that the eligibility and software and judicial activism is going to end in the courts if this bill passes. This bill will make it so that only big corporations can play the game and they will won’t to keep software on the table.

          Watch. You will be schooled in the fact that the SCOTUS is a slave to international corporations.


            Night, I wish we could see eye-to-eye on 101.

            But, setting that aside for the moment, I am for a good, decent, and importantly, a viable patent system across the board, for big companies, for small, for individual inventors, and mostly, for American startups.

            I have worked for big companies, for small, and for lawfirms. I can see the patent system from each’s perspective, so I can see that each are, from their point of view, simply looking out for number one.

            But it really galls me that the big business types frame the issues involved as protecting the small fry, when they are only protecting themselves. They used the same bogus line of argument when getting the AIA passed.


              I agree with you.

              (I mean seriously what real patent attorney could read the AIA and not immediately see that post-grant reviews were going to massively weaken the patent system and massively tilt the balance for large players? No real patent attorney.)

      2. 2.2.2

        Blindman, I’ve been saying that this is what is going to happen now for years and years. The money always wins in DC.

      3. 2.2.3

        inventor community


        Exactly who is in this “community”? Can we see the data about who these people are?

        After all, they are sooper dooper important, right? We’re all supposed to shed tiny tears whenever they complain, right?

        Tell us who they are.


          Asked and answered – pay attention Malcolm (and read and apply some minimum level of connect-the-dots thinking):

          folks really want to weaken the system to minimize new invention disruption to existing strong businesses.

          Somehow you seem unable to grasp the fact that more than one philosophical camp can attack the patent system, even as you have often – and by many – been shown that such is the case.

  5. 1

    >In addition, Universities are pushing to have their patents excluded from post >grant proceedings.

    This is a good indication that the all the legislation is nothing but special interest groups warping the patent system into a beast that serves their special interests–universities would not have the temerity to make such a request if they didn’t know that the AIA and this follow-on legislation is nothing but Google bought burn the system down legislation. Thanks Obama. The next Fed. Cir. judge will probably be someone like Lemley to cap off the payment for all the Google bucks flowing into Washington.

    1. 1.1

      Don’t blame Obama for any bought legislation – that blame fully belongs to Congress.

      That is why the authority was given to Congress – it is the branch of the government (at least theoretically) that can most easily be held accountable.

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