Patent Reform Bill introduced in the United States
For the Patent mavens: the US has introduced its Patent Reform Bill. It is available in pdf form here and here. The Bill includes:
- Change to a first-to-file system (thus changing the definition of ‘prior art’)
- Changes to the duty of candor (violations will be adjudged by the PTO rather than in court);
- Damages to be limited to the inventive contribution rather than calculated on the selling price of an entire product
- Limitations on the right of a court to impose treble damages for willfulness - in particular, a provision that will mean that entities with a good faith, informed view (eg, from legal advice) that the patent is invalid or not infringed will not be subject to treble damages
- Automatic stay of injunctions for appeals
- Limits on scope of continuation applications (to be made by PTO); and
- Introduction of a post-grant opposition procedure and submission of prior art by third parties.
The last is particularly interesting, because their proposed opposition procedure is quite different from the pre-grant procedure we have here, and from the post-grant procedure in Europe. In Australia, oppositions can be launched in a 3 month period after publication of acceptance but before grant. In Europe, there is a 9 month period for oppositions at the EPO level, after grant.
The US Bill proposes a 9 month period after grant, but also two other times when oppositions can be launched (proposed section 323, on page 46 of the pdf):
- during the 6 months immediately following receiving notice from the patent owner alleging infringement; and
- any time during the term of the patent, with the consent of the patent owner in writing.
It's interesting to think about the ways in which that 6 month re-opened window after an allegation of infringement might change the calculus of costs/benefits for a patent owner. Clearly they've decided on a compromise between the 'limited period' and the 'unlimited period' system for oppositions.
For a wonderful set of background resources on patent reform in the US, see this library produced by Promoting the Progress.
To monitor discussion on the Bill, I recommend:
