Post by Dan Lorentzen
Even though the America Invents Act is just over 3 years old, patent reform legislation has arisen on several occasions over the past years. The most visible legislative efforts have involved the "Innovation Act" proposed by Senator Goodlatte in 2013, and again in 2015. The version of the Innovation Act introduced in 2013 stalled out in the Senate, but has been re-introduced in the House with a larger number of co-sponsors. A new, alternative bill has now been proposed in the Senate.
Senator Chris Coons (D-Del.), along with co-sponsors Dick Durbin (D-Ill.) and Mazie Hirono (D-Hawaii), has now proposed the "Support Technology & Research for Our Nation’s Growth (STRONG) Patents Act of 2015." The bill was introduced as S.632 on March 3, 2015 as "[a] bill to strengthen the position of the United States as the world's leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country's economy."
This new legislation addresses many of the same issues as the Innovation Act in the House, but in some cases does so in markedly different ways. Included in the provisions are proposed amendments to the Title 35 that would bring claim construction in inter partes review (IPR) and post-grant review (PGR) proceedings at the PTAB in line with litigation in district court. In particular, the bill would dictate that claim construction in an IPR and PGR proceeding be conducted using the "ordinary and customary meaning" standard instead of the broadest reasonable interpretation (BRI) standard currently applied. In addition, the bill would require the PTAB in an IPR and PGR proceeding to consider any previous construction of the claims or claim terms at issue performed by a court, provided the patent owner was a party to the prior civil action. In addition, the bill would import into IRP and PGR proceedings the presumption of validity applied in litigation.
The bill also includes, among other provisions, the elimination of Form 18 for pleading in patent infringement cases in federal court, retention of fees collected by the USPTO, and inclusion of universities and other institutes of higher learning for micro entity status. In addition, the bill would change the standard for a finding of willful infringement to a preponderance of the evidence. Finally, the bill would create a cause of action under the Federal Trade Commission Act for sending a demand letter in bad faith.
A number of notable organizations have expressed their support for the STRONG Patents Act, including the Association of American Universities, the Association of Public Land Grant Universities, and the Biotechnology Industry Organization (BIO).
The Filewrapper® blog will continue to follow developments for both the STRONG Patents Act and the Innovation Act. The full text of the STRONG Patents Act is available here.