Patent Reform: The Senate Makes Its Move

UPDATED: March 9, 2011 @ 2:35pm

By a vote of 95 to 5, the Senate last night passed comprehensive patent reform legislation. S.23, “The America Invents Act”. But the path forward for passage of the measure in the House of Representatives remains unclear.

The bill – which was introduced by the Senate Judiciary Committee’s Chairman, Sen. Patrick Leahy (D-VT), Sen. Orrin Hatch (R-Utah), and the Committee’s Ranking Republican, Sen. Charles E. Grassley (R-IA) – moved quickly through the Judiciary Committee, with a Committee vote of 15-0.  Catching some critics off-guard, S.23’s advocates were able to take advantage of the light Senate floor schedule that often exists early in a new Congress and to capture the attention of Majority Leader Harry Reid (D-NV).   Specifically, S.23’s bipartisan posture, fueled by an Administration eager to advance innovation and job creation policy initiatives, made the bill an attractive floor measure for Senate Leadership, who was otherwise consumed by a heated, partisan battle over federal government funding.


The sponsors’ stated goals for S.23 are to: improve the patent application process; improve the quality of patents issued by the US Patent & Trademark Office (“PTO”) by introducing several quality-enhancement measures; and provide more certainty in litigation.   The debate over patent reform dates back to a 2004 National Academy of Science report that made several recommendations for modernizing the patent system and the PTO.  Traditionally, changes to the patent code were relatively modest and were driven by established and esteemed patent-focused associations like IPO and AIPLA.  But, in 2005, a powerful subsection of larger companies from the information technology industry (“IT”) saw an opportunity to advance their interests and convinced Congress to include measures in proposed patent reform legislation that would have rewritten the laws that determine how patents are enforced.  IT supported a number of reforms that would have, for example, changed how federal courts calculate damages in patent infringement cases, established open-ended administrative systems to challenge the validity of patents, and imposed defendant-friendly venue rules.  These companies formed a coalition to advance its patent agenda called The Coalition for Patent Fairness (“CPF”).

Innovators formed competing organizations – The Innovation Alliance (“IA”) and The Coalition for 21st Century Patent Reform (“21C”) chief among them- to engage and educate policymakers on the consequences of making the US more infringer-friendly and steered the discussion away from litigation-related reforms toward needed operational and financial reforms at “PTO”.   With the exception of the House passage of a reform bill in 2007, Congressional consideration of patent reform was largely an intra-Committee debate between those aligned with this subsection of large IT companies and those aligned with innovators.  Significant changes in patent law were left to the courts (for instance, the Supreme Court cases of eBay Inc v. MercExchange, KSR v. Teleflex and Bilski v Kappos).  Meanwhile, working with other like-minded interests, the  IA and 21C were successful in convincing the Senate to remove or scale back many of the reforms sought by IT – to the point where many IT companies opposed the Senate Judiciary Committee-reported version of S.23.

S.23 In The Senate

S. 23 as reported out of the Senate Judiciary Committee, would have made several significant changes to current patent law including:

  • Converting the United States’ patent system from a first-to-invent to a first-inventor-to-file application system.
  • Limiting who can bring false markings claims to the Department of Justice or a person who has suffered a competitive injury as a result of a violation of the false markings provision.
  • Streamlining the requirement that the inventor submit an oath as part of a patent application, particularly in situations in which an inventor is unable or unwilling to submit the oath, but is under an obligation to do so.
  • Creating a new “first window” post-grant opposition proceeding, available for nine months after the grant of a patent, to challenge a claim in an issued patent on any basis.
  • Converting intellectual property rights (IPR) from an examination model to an oppositional model conducted by Administrative Patent Judges.
  • Creating a mechanism for third parties to submit timely information during the patent examination process that is relevant to the examination of the application, including a concise statement of the relevance of the submission.
  • Amending the patent law-specific venue provision in title 28, primarily to prevent plaintiffs from manufacturing venue by allowing any action to be transferred to a venue that the court determines to be clearly more convenient for either party or witnesses.
  • Providing the USPTO Director rulemaking authority to set or adjust its fees, provided that such fee amounts in the aggregate are set to recover the estimated cost to the Office for the activities performed.
  • Providing a patent owner with the opportunity to request a supplemental examination of a patent.
  • Repealing the District of Columbia area residency requirement for Federal Circuit judges.
  • Creating a new definition outlining the qualifications for “micro-entity” status.  Parties meeting the definition will receive a 75% reduction in fees.
  • Restricting the patentability of tax strategies by deeming tax strategies to be within the prior art, and therefore not novel or nonobvious.
  • Removing the failure to disclose the “best mode” as a basis for canceling or holding either invalid or unenforceable a patent claim in a civil action.
  • Clarifying that state courts do not have jurisdiction over claims arising under the patent laws, even if those claims are pled in a counterclaim.

The full Senate began consideration of S.23 as reported out of Committee on February 28. What was expected to be several days of wrangling over various amendments was skillfully circumvented by Senators Leahy, Grassley and Kyl.  In the weeks prior to floor consideration of the bill, the sponsors’ staffs met with stakeholders and the Administration and did some educated head-counting. The sponsors developed a strong sense of what new amendments were, in their view, substantively warranted and/or were likely to pass if brought up for a vote. Those amendments were combined into one Managers’ Amendment which was offered on March 1 and passed later in the day by an attention getting vote of 97-2 (S. Amdt. 121). The Managers’ amendment made several significant changes to the bill including:

  • Striking all remaining damages language (i.e., gatekeeper and recodification of Section 284).
  • Striking the bill’s venue language (i.e., codification of TS Tech case).
  • Adding Sen. Coburn’s very popular amendment to end diversion of PTO fees.
  • Amending the bill’s third-party challenges system to, among other things, eliminate the 6 months deadline for filing a first window post-grant opposition after infringement litigation commences (but preserving a 6 month deadline for inter partes reexamination), allowing the USPTO Director to use the old inter partes reexamination system at his discretion during the first 4 years, and specifying that implementation of the new post-grant review system will take place one year from enactment (as opposed to 18 months).
  • Requiring a reduction in fees for prioritized examination by 50 percent for qualified small entities.
  • Adopting a narrower version of the Schumer-Kyl business method patent amendment.

The adoption of the Manager’s Amendment had the effect of accelerating the Senate’s consideration of the bill by clearing the issues that might have led to weeks of debate or stalled the bill.  Other, less substantive or non-germane amendments were either tabled or quickly adopted by unanimous consent.  The pedal-to-the-metal handling of the bill on the floor also had the effect of isolating – and forcing the hand of- those who sought to offer amendments the sponsors strongly opposed.

Among the more contentious amendments was Sen. Feinstein’s amendment to strike from the bill language moving the US to a first inventor to file system (Amdt.133).  Sen. Feinstein faced an uphill battle to prevail.  Winning a vote on an amendment that was viewed by the bipartisan sponsors of the bill and the Administration as a killer amendment on a very complex issue with only a few days’ notice to stakeholders was a long shot.  Heavy lobbying against the amendment from 21C and calls to Senators from the Administration helped move undecided Senators toward supporting the bill’s original first inventor to file provisions.  Despite the institutional support of Majority Leader Harry Reid and the political support of CPF and independent inventors, Sen. Feinstein’s amendment was tabled on March 3 by a vote of 87 to 13. Importantly, the lopsided vote against Sen. Feinstein’s amendment had the effect of emboldening the bill’s sponsors and warding off others seeking to materially weaken the bill.  CPF’s ability to produce Senate votes to support its position on remaining issues was called into question, and momentum was clearly behind the bill sponsors.  Soon after the vote, Majority Leader Reid filed cloture on the bill.

The remaining CPF issues included any number of amendments to scale back procedural safeguards in the bill’s inter partes review (“IPR”) provisions. Senators James Risch (R-ID), Mark Udall (D-CO), and Barbara Boxer (D-CA) sought to either strike the IPR provisions altogether or increase the deadline for filing IPR challenges after litigation commences.  Innovators took the position that, without the added safeguards, the bill’s third party review system will become an infringer’s playground. While some in the Senate briefly entertained the possibility of agreeing to a limited increase deadline, discussions were brought to a halt with the objection of Sen. Roy Blunt (R-MO), who felt the bill’s third party review system as drafted already has the potential for abuse by infringers and was loathe to make additional changes.

Other contentious amendments that were filed but were never formally considered prior to final passage included:  Sen. Claire McCaskill’s (D-MO) proposal to make the false marking reforms in the bill prospective (Amdt. 139); Sen. Ben Cardin’s (D-Md) compulsory patent license for 911compliance (Amdt 125); and Sen. Rockefeller’s efforts to prohibit the marketing of authorized generics (Amdt 134, 150, 151). Contentious amendments filed but not brought to the floor in the senate have the potential to resurface in some form in the House.

Sen. Reid’s amendment (Amdt. 143) to include public institutions of higher education in the definition of a micro entity was adopted by voice vote directly before consideration of the bill.

House of Representatives

Despite Senate passage, the road ahead for S.23 remains unclear.  Although Senate sponsors of S. 23 have encouraged the House to simply accept the Senate bill, it seems that the House is keeping its options open.  House Judiciary Committee staff, under the active direction of Committee Chairman Lamar Smith (R-TX), continue to draft a separate bill.

Chairman Smith issued a statement following passage of S.23 announcing plans to introduce a House bill sometime this month.  Rep. Smith is working closely with Rep. Bob Goodlatte (R-VA), the Chairman of the Subcommittee on Intellectual Property, Competition and the Internet.  The two respected legislative tacticians and long-time leaders on tech policy are expected to meet with Committee colleagues to solicit their views on a draft bill in the coming days. The House legislation is expected to be more in-line with previous House bills than S.23. Innovators are concerned the bill will weaken the third party review system or not contain adequate procedural safeguards.  However, it is expected that the bill, when introduced, will depart from previous House bills by not including damages or venue reforms.

Stakeholders hoping for greater clarity around the House’s plans will be paying close attention this week to separate patent policy hearings Rep. Goodlatte is convening. At one of the hearings held earlier today, both Rep Goodlatte and Rep. Mel Watt (D-NC), the Subcommittee’s Ranking Democrat, stated that the House needs to consider its “own” patent bill.  Interestingly, the former Chairman of the Committee, Rep. John Conyers (D-MI), expressed reservations about moving to a FTF system as did two of the hearings’ witnesses.

Once a House bill is introduced, the Committee may move quickly to mark-up. Opponents of FTF are expected to continue their push to preserve the current first-to-invent system, while innovators will continue to press for procedural safeguards and legislation to put an end to PTO fee diversion.

The End Game

In the end, the full House and Senate will need to pass the same version of any patent reform bill before it can become law.  Assuming House Judiciary Committee Chairman Smith passes a bill of note through the House; the House and Senate bills will need to be reconciled.  While civics books teach that the differences in the bills will be resolved via a formal Conference Committee, the Senate and House have not conferenced on a Judiciary Committee bill since 2005.  A formal conference for patent reform is considered very unlikely.  Accordingly, either the House will ultimately decide to take up and pass the Senate-passed bill given the broad bipartisan support it has earned, or any deal reconciling separate House and Senate bills will likely have to pass through each of the respective chambers once again on its own or as a rider to a larger, must-pass piece of legislation.


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

27 comments so far.

  • [Avatar for patent enforcement]
    patent enforcement
    March 14, 2011 01:14 pm

    Who would have believed it — patent reform has finally passed in one chamber. Given the momentum this issue has right now, I’d expect that some version of the bill will likely pass in the House soon, too. As usual, however, the devil will be in the details; though I can’t imagine much opposition to the fee diversion and fee-setting authority provisions, the first-to-file and post-grant issues may prove somewhat thorny.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    March 11, 2011 09:02 pm

    Interesting that I received this message from Senator Murray only about a week and a half after I called her DC office and left a message with the phone receptionist and a voice mail because the IP staffer was in a meeting both times I called. It seems to be from Patty personally, as it is very short and has a few traits that seem to indicate so, judging by replies I have gotten from her in the past. At least she seems to be listening, even though she voted against the Feinstein amendment and voted to pass S. 23. I could see Maria and Patty conferring on the floor while the Feinstein vote was happening, so hopefully Maria might have some influence with her in the future. That presupposes that this current attempt fails of course, which I hope will become true. The Senate bill is still incomplete in it’s legal language, which the House might want to rub their noses in a bit. Why not Just Say NO to FTF because they haven’t even looked at the possible economic havoc it might create almost immediately? Where is the economic analysis to support their *new law*? A law-maker should probably be reasonably certain that they are first doing no harm, before they pass sweeping legislation like this in my opinion.

    Dear Mr. Delo:

    Thank you for contacting me regarding your thoughts on S. 23, the Patent Reform Act of 2011. I appreciate having the benefit of your views on this matter.

    The views of Washingtonians are very important to my work. I will keep your thoughts in mind, and I encourage you to stay in touch. If you would like to know more about my work in the Senate, please feel free to sign up for my weekly updates at Again, thank you for taking the time to share your thoughts with me.

    Patty Murray
    United States Senator


  • [Avatar for Blind Dogma]
    Blind Dogma
    March 11, 2011 12:36 pm

    I think the fish would stay away from this stuff.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    March 11, 2011 12:08 pm

    Also interesting according to Dennis Crouch’s House testimony is that S. 23 doesn’t define either Disclosure or Derivation. Very fishy indeed.


  • [Avatar for step back]
    step back
    March 11, 2011 10:37 am


    It’s a little more convoluted than that because they did not eliminated BM for prosecution purposes, only for litigation purposes. Something is fishy, and not only in Denmark.

  • [Avatar for Davdi Roche]
    Davdi Roche
    March 11, 2011 09:09 am

    I see problems with the provision on best mode. A fundamental premise of the patent system is the “quid pro quo” of full disclosure in exchange for government-backed exclusivity. S.23, if passed, would eliminate even a deliberate withholding of the best mode as a basis for invalidity and uneforceability. I have often used the threat of invalidity for failure to dislose the best mode as a way of “extracting” the details from clients that they would prefer to leave out of a patent application. Does anyone share my concern that this will incentivize a game of “hide-the-ball”?

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    March 9, 2011 06:37 pm

    Laugh all you like, but I don’t find it to be very funny. Have you ever heard of a Desk Drawer Filing? If I don’t get there before someone else, so be it. Good luck with your R&D.


  • [Avatar for blue]
    March 9, 2011 06:37 pm

    actually there is a way to resolve the issue of IP theft cheaply and efficiently. Suppose the court would allow NSA or CIA personnel to testify in court….

    The intelligence guys have access to every call we make, every word we type on the internet and on our PC, and every thought that occurs in our head. They are the only people that would know who the REAL inventor is. Their honesty and integrity is the last thing that is left to defend the ‘truth’.

    No, i am not joking and i am not crazy.

  • [Avatar for blue]
    March 9, 2011 06:23 pm


    and this ‘interference preceding’ under the first to invent system would not be expensive? the only inexpensive solutions i can think of are:

    a) the inventor does nothing to try claim his invention back from the thief

    b) the accused thief chooses NOT to fight for the property which he had taken from the rightful owner.

    so there is no real way to resolve the issue cheaply, is there? lol.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    March 9, 2011 06:01 pm


    Under a First to File system, interference proceedings will go away, to be replaced with *derivation proceedings* to try to prove that someone has *borrowed* your idea before you were able to file your own application. As several have pointed out before, asking them to supply incriminating evidence of their actions will probably require a subpoena to have anything of any value, and they can always just refuse and say “So sue me!” The seeming upshot would seem to be that derivation proceedings would seem to be much more expensive and by definition much less certain. They will probably also become about 5 times more likely, so the expenses incurred will be probably pretty astounding. I heard an estimate several years ago that a change from FTI to FTF would probably cost American Patent Attorneys and Agents about 2 billion bucks just to re-group all of their relevant information.


  • [Avatar for blue]
    March 9, 2011 05:39 pm


    i get your point. I have raised identical issues with my patent attorney prior to the filing of my patents. But does the first to invent system offers more certainty in relation to conducting a patentability search?

    My concern in relation to the first to file system isn’t so much about the other person beating me to the patent office 2 minutes before i had filed an identical patent, but whether its possible to prove that the other inventor had stole my idea and then managed to beat me to the patent office. I know my remarks probably sounds stupid but Industrial espionage is a real threat to inventors.

    And Paul, You do not need to be concerned about how large corporations would suffer under the first to file system. From experience, I know that large corporations have an extensive spy network which would ensure that they would be ‘adequately informed’ before pursuing inventions that have already been patented or copyrighted.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    March 9, 2011 03:37 pm


    Very well said, and you might want to start shopping around for more comprehensive malpractice insurance, as the possibility for Inequitable Conduct suits filed by your clients might get to be a real issue. A doctor friend of mine told me of having to pay more than $100K per year for his malpractice insurance, and that was 20 years ago!


  • [Avatar for Stan E. Delo]
    Stan E. Delo
    March 9, 2011 03:13 pm

    Another factor to consider in them including ending fee diversion is the bill as (apparently) written is placing a very significant extra burden on the PTO. FTF will probably generate nearly an extra 100,000 patent applications per year, many of them being very sketchy and incomplete. Also PGR will be a whole new can of worms for the PTO, so not including letting them keep their fees would have been a complete disaster for the office. Even though I dislike FTF quite a lot, if it passes the House at least I Might be able to get a patent granted in less than say 18 months, before it is published. As it is now, I can’t really justify using the Green tech fast track because it requires publication at 18 months, and my application might take much longer than that to be granted.

    Thanks for the interesting article Manus and Marla!


  • [Avatar for Paul C. Scifo]
    Paul C. Scifo
    March 9, 2011 02:02 pm

    The following response was originally prepared for the PatentlyO blog, however, since my original post there was also submitted at the IPWatchdog bolog, and since for reasons that are unclear to me, I find I am unable to post the response at PatentlyO, I have posted my response here.

    Regarding your reply to my post last night concerning the ‘11 Patent Reform Act (Reform Act) change in “103″ language as to the time “obviousness” is to be measured, I thank you for it. However, I would submit respectfully that the difference between what is now proposed and what currently controls is not insignificant. There are a number of problems. For example, and as you are aware, the concept of “invention” has been defined judicially to arise at the time both conception and reduction to practice have occurred – reduction to practice being either: actual; e.g., a prototype; or constructive; i.e., the filing of an competent patent application. Accordingly, as I see it, under the proposed Reform Act, actual reduction to practice has been eliminated – leaving only constructive reduction to practice; i.e., filing. Among the consequences of that is the there is no predicate for the Reform Act term “invention” in the absence of a competent application filing; i.e., the reality of an “actual reduction to practice” is significantly limited as a concept of legal consequence. So what happens to the inventive subject matter where no competent patent application filing occurs? If for any reason an applicant can’t or doesn’t get a filing date, it would appear he doesn’t get an invention date. In my practice that consequence creates substantial uncertainty. What would I tell an inquiring inventor seeking to perfect rights in his invention? Would I tell him he has no invention until he files a competent application – blood, sweet, tears and treasure notwithstanding? How would I write a patenability opinion in the absence of a filing? How am I going to structure the patentability search? Indeed, I would ask the Constitutional scholars if a statute with that much uncertainty passes muster? Is an inventor or small assignee going to sign-up for legal work and be obligated to pay potentially tens of thousands of dollars; e.g., for preparation a software systems invention application, knowing that on the day the application is filed – it my already be dead because of an application somebody else filed the day before? I can’t wait to hear what the repercussions will be in large companies – how are they going to manage their invention disclosure dockets?

    The above is but a time-limited recount of some significant uncertainties I perceive. In view of yet further questions that will certainly arise, one has to ask if it’s worth throwing away the more certain experience developed over at least tens of decades by jurisprudentially accomplished minds – for a “European” experience? By the way, I been there and it isn’t pretty. If people think things will be improved with pre and post issuance application-claim challenges, beware of what you ask for. A wise person once told me “truth and certainty are the first victims in an adversarial proceeding” – which was followed by the further observation that “truth and certainty provide the soundest foundation for successful business.”

  • [Avatar for Gene Quinn]
    Gene Quinn
    March 9, 2011 12:06 pm


    I will defer to Manus on the internal workings of the negotiations. He and Marla have been involved behind the scenes on patent reform for a very long time. I think Manus is exactly right to observe that an end to fee diversion was likely necessary to pass the bill.

    From my perspective the reason that a fee fix didn’t get onto the radar of Congress in a real way much sooner is because of the magnitude of fee diversion. Remember that since 1992 the PTO has had about $800 million diverted (some estimates higher, some a little lower). The PTO is on pace to have somewhere between $300 million to $400 million diverted in FY 2011. There would have been $200 million diverted in FY 2010 but for Congress authorizing the PTO to keep $129 million of that $200 million. So over the last several years the diverted funds have become quite large in comparison to the approximately $2 – $2.2 billion budget of the USPTO. While tens of millions a year could be ignored over 2 decades it started to become difficult to ignore hundreds of millions being diverted, particularly with lengthy average pendency and a huge backlog that everyone agrees is stifling the economy and job growth.


  • [Avatar for Manus Cooney]
    Manus Cooney
    March 9, 2011 11:43 am

    In response to the question above, free-standing bills to end fee diversion and give PTO fee setting authority were introduced in the House last Congress. Advocates for a more comprehensive bill and lead sponsors of S.23 did not want to let a free-standing PTO funding bill pass since resolving the funding issue provides buoyancy for a bill that includes the less popular FTF and PGR reforms. The argument can be made that the Senate might not have been able to pass S.23 without including Coburn’s amendment to end fee diversion.

  • [Avatar for Inventor0875]
    March 9, 2011 11:05 am

    Could the authors provide insight into why separate legislation to fix USPTO fee diversion and funding/resources, did not happen years ago, especially since that was an issue the IP-community seemed to agree on.

  • [Avatar for step back]
    step back
    March 9, 2011 05:51 am

    This is best as I can find for now at


    (a) Definitions.–Section 100 of title 35, United States Code, is
    amended by adding at the end the following:
    “(f) The term `inventor’ means the individual or, if a joint
    invention, the individuals collectively who invented or discovered the
    subject matter of the invention.

    “(i)(1) The term `effective filing date’ of a claimed invention in
    a patent or application for patent means–
    “(A) if subparagraph (B) does not apply, the actual filing
    date of the patent or the application for the patent containing
    a claim to
    the invention; or
    “(B) the filing date of the earliest application for which
    the patent or application is entitled, as to such invention, to
    a right of priority under section 119, 365(a), or 365(b) or to
    the benefit of an earlier filing date under section 120, 121,
    or 365(c).

    😉 If you’ve been a lawyer for 35+ years, you should easily be able to see the little kink in that definition if the patent issues from a continuation rather than from the originally filed application

  • [Avatar for step back]
    step back
    March 9, 2011 05:31 am

    p.s. According to Patent Docs on 3/8/2011: “the Library of Congress THOMAS website has not yet posted the text of the bill that the Senate passed today”.

  • [Avatar for step back]
    step back
    March 9, 2011 05:24 am


    It is much worse than that. Look up the definition of “effective date” for “claimed” invention in S.23.

    As I tried to explain from day-1, F2F is a red herring.
    The real bombshells are elsewhere.

    (And don’t forget the line out of the ancient movie “Love Story”: First to File means never having to say you were first to love and invent the thing 😉 )

  • [Avatar for blue]
    March 9, 2011 12:14 am


    how would you like to have the words changed?

  • [Avatar for Paul C. Scifo]
    Paul C. Scifo
    March 8, 2011 09:34 pm

    I can’t believe I‘ve seen no outcry from patent proponents regarding the “obviousness test” set out in the currently proposed Patent Reform Act (S.23 RS). I’ve been practicing patent law for more that 35 years, and view the S.23 RS obviousness test as an attempt to destroy unassailable patent law fundamentals. Alleged obviousness of an invention can only be evaluated reasonably, fairly and justly by looking to knowledge publicly available at the time an invention is made. Please tell me I’m missing something. As currently proposed, S.23 RS provides in pertinent part:

    Sec. 103. Conditions for patentability; nonobvious subject matter

    A patent for a claimed invention may not be obtained … if the differences
    between the claimed invention and the prior art are such
    that the claimed invention as a whole would have been obvious
    before the effective filing date of the claimed invention
    to a person having ordinary skill in the art to which
    the claimed invention pertains.
    Patent Reform Act of 2011 (S.23 RS), pp. 5-6, February 3, 2011.

    As you are aware, the current obviousness test under 35 USC § 103(a)
    in pertinent part is:

    A patent may not be obtained … if the differences
    between the subject matter sought to be patented and the prior art
    are such that the subject matter as a whole would have been obvious
    at the time the invention was made
    to a person having ordinary skill in the art to which
    said subject matter pertains.
    35 USC Sec 103(a).

    Once again – please tell me what I’m missing.

  • [Avatar for TINLA IANYL]
    March 8, 2011 12:14 pm

    It really is too bad that the Senate failed to adress the two most important issues in the manner Gene proposed in points 1 and 2 in this article:

    The need for legislation adressing the second point is highlighted by recent CAFC case law as evidenced by Gene’s article here:

  • [Avatar for veryCurious]
    March 8, 2011 05:18 am

    Is there some sort of transition provision in the bill?
    For example, if an inventor secretly offers a product for sale outside of the USA in 2009, and a patent application is filed in January 2011, does the currently-ending application get to benefit from the old system? Would any continuation get to benefit?

  • [Avatar for Justin Thyme]
    Justin Thyme
    March 8, 2011 02:57 am

    Thanks for the clear summary. Excellent work.

  • [Avatar for Gerry Elman]
    Gerry Elman
    March 8, 2011 01:31 am

    Wow, what a great summary! And how timely! Thanks Manus and Marla.

    Yes, let’s turn the spotlight on the House now.

    Perhaps you’ll read the article I published a week ago: My take is that the urge for “patent reform” goes back to 2003 with the Federal Trade Commission’s study — “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy.”   I mention it because yesterday, the FTC released another such report — “The Evolving IP Marketplace: Aligning Patent Notice and Remedies With Competition”

    I also suggest that what’s needed to reduce the backlog and improve “patent quality” is enhanced support for patent examiners, using Watson-like AI. I hope the Members of the House include that point in their deliberations.

    –Gerry Elman
    Elman Technology Law, P.C.
    Chair, Patent Legislation Committee, Philadelphia Intellectual Property Law Ass’n (“PIPLA”)

    The foregoing are my own personal views and do not necessarily reflect the position of any clients or organizations with which I am affiliated.