Patent Reform Inches Closer To Becoming Reality As US Senate Revises Key Provisions

In a major development, the United States Senate revised key provisions of its version of what is now known as the America Invents Act of 2011, paving the way for a vote that would send the proposed law to the House of Representatives for further consideration. The proposed law represents yet another attempt to reform patent laws in the United States, and this week’s revisions may finally mean that long-debated changes to the country’s patent system are coming soon.

Proposals to revise patent laws in the United States are nothing new. But the 2011 version may finally make it to the President’s desk for signature, as members of the Senate Judiciary Committee have now removed key and controversial provisions regarding damages available in patent litigation cases and selection of forum for patent litigants and added provisions regarding fee diversion from the United States Patent & Trademark Office (“USPTO”).

This week’s revisions strike in their entirety provisions regarding damages available in patent litigation. Originally introduced in response to media attention given to damages awarded in patent cases, the proposed law would have allowed judges more discretion in deciding the importance of patent claims that would limit that possibility of large damages. In notes regarding the changes, the Senate commented that the proposed revisions did not make any change to the applicable legal standard and instead sought to formalize the judge’s gatekeeper role in overseeing application of patent claims to a potentially-infringing product.

Similarly, provisions regarding forum selection have also been stricken in their entirety. The provisions would have limited the ability of patent litigants to select an appropriate court to adjudicate their cases. The Senate’s comments here also noted that the stricken provisions provided no meaningful change to existing venue law, and instead sought to codify recent court decisions and provide useful clarity.

Other changes in this week’s revisions include finally ending fee diversion from the USPTO that has long plagued its budget and created a huge patent application backlog. The revisions also add a requirement that the USPTO open three new satellite offices, and include approval of 50% reductions in filing fees for small entities that seek accelerated patent application examination. The latter is in conjunction with the USPTO’s recent announcement that it would implement a “three-track” system of examining patent applications in which applicants can pursue expedited examination of applications by paying hefty initial filing fees.

Despite the changes discussed above, other very significant provisions of the proposed law remain intact. One of the most important provisions in the proposed law would move the United States to a first-to-file patent system instead of the current first-to-invent system. The move would harmonize United States patent law with that of almost all other countries in the world.

The full U.S. Senate may vote on the proposed law as early as this week. If passed, the proposed law moves to the House of Representatives, and from there, to the President for signature. There is no currently-pending House version of the proposed patent reform, but it is expected that the House version would be very similar to that of the Senate.