Technology and Business Law Blog

The Patent Reform Act of 2007 (H.R.1908)

The U.S. House of Representatives approved and passed a major patent reforms legislation by a vote of 220 to 175, but it still has to be approved by the Senate. It was a big hit with the technology industry. It is authored by Rep. Howard Berman, D-Calif., and the summary of the Patent Reform Act of 2007 (H.R.1908) is stated at Washington Watch.com as follows:

“Patent Reform Act of 2007 – Modifies conditions under which a patent may be obtained for an invention or discovery, including by: (1) defining “inventor” to include a joint inventor and co-inventor; (2) making the effective filing date of a claimed invention the filing date of the patent or the patent application; and (3) revising procedures for patent interference disputes.

Revises requirements for an inventor’s oath or declaration to allow substitute statements in specified circumstances (e.g., death or disability) and supplemental and corrected statements.

Allows a third party assignee (other than the inventor) or a person with a proprietary interest to file a patent application.

Modifies provisions relating to damages for patent infringement to: (1) require a court to conduct an analysis of a patent’s specific contribution over prior art; (2) allow increased damages for willfull patent infringement; and (3) expand the prior user defense.

Renames the Board of Patent Appeals as the Patent Trial and Appeal Board. Revises provisions relating to the Board’s composition, duties, and authorities.

Allows a person who is not the patent owner to file a petition with the Board to cancel a patent as invalid (post-grant review). Sets forth procedures for the consideration of such petitions, including provisions to prevent harassment of patent owners and abuse of process.

Allows third parties to submit documents relevant to the examination of a patent application.

Revises venue requirements for civil patent actions against individuals and corporations to allow actions to be brought in the judicial district where either party resides (currently, where the defendant resides) or where the corporation has its principal place of business or was incorporated.”

The main features of the above is that the Act will be more aligned to international patent standards, till date in the US patents were granted to the first inventor to invent the technology but now the patent will be granted to the first inventor to file an application. The bill limits infringement damages awarded to the actual value of the product infringed instead of the overall value of the completed product and it allows the Patent and Trade Mark Office to establish new patent related rules.

Since the legislation approves the publication of patent applications before they are actually issued, opponents to the bill have labeled it the ‘Steal America Technologies Bill’ and stated that the bill will enable foreign countries to steal US technologies.

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September 8, 2007 Posted by | Inventions, Patent Reform, Technology industry | 2 Comments