Patent Reform Act of 2007: moving forward?July 18, 2007

Today the House Judiciary Committee sent the Patent Reform Act of 2007 (H.R. 1908 and S. 1145) out of committee to the full House of Representatives for consideration.

The amended version (found here, as it has not been updated on the Library of Congress site yet). The controversial damages apportionment provisions are still present in the bill (although they are modified in the Senate version), but the "second window" post-grant review procedure has been eliminated in favor of a 12 month period where parties may file a cancellation petition. The revised bill also empowers the USPTO to require "applicant quality submissions" from patent applicants.

Also, last week the Senate Judiciary Committee held a markup session for its version of the bill, and is scheduled to continue consideration of the bill tomorrow.

Of particular note is the addition of a new section, section 11, which essentially adopts the requests made by USPTO Director Jon Dudas during his Senate testimony last month. This section requires the USPTO to promulgate regulations requiring that patent applicants "submit a search report and other information and analysis relevant to patentability." If this is not submitted, the application is deemed abandoned. As noted in the discussion of Dudas' testimony, this will empower the USPTO to require the "Applicant Quality Submissions" currently only required in the accelerated examination program. Exempt from these requirements would be a new class of entity, the "micro-entity," which have even greater limitations than the current small entity status. The amendments to the Senate version of the bill also apparently include similar provisions.

The revised House version also revises inequitable conduct, and includes a provision that when inequitable conduct is found on the part of an attorney, the attorney is referred to the USPTO for possible disciplinary proceedings. It also clarifies the standard required to show inequitable conduct.

Finally, the revised House version also provides the USPTO with rulemaking authority regarding proper time and method for priority claims. The Senate version has removed the enhanced rulemaking authority provisions from the bill.

The revised version of the Senate bill can be downloaded here. The Washington Post has more here.

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