Patent Reform in the 110th Congress: Innovation Issues
Patent Reform in the 110 Congress:
Updated February 21, 2008
John R. Thomas
Resources, Science, and Industry Division
Wendy H. Schacht
Specialist in Science and Technology
Resources, Science, and Industry Division
Patent Reform in the 110 Congress:
Congressional interest in patent policy and possible patent reform has expanded
as the importance of intellectual property to innovation has increased. Patent
ownership is perceived as an incentive to the technological advancement that leads
to economic growth. However, growing interest in patents has been accompanied by
persistent concerns about the fairness and effectiveness of the current system. Several
recent studies, including those by the National Academy of Sciences and the Federal
Trade Commission, have recommended patent reform to address perceived
deficiencies in the operation of the patent regime. Other experts maintain that major
alterations in existing law are unnecessary and that the patent process can adapt, and
is adapting, to technological progress.
Pending patent reform proposals would work significant legal changes to the
patent system. Among the more notable of these proposed changes is a shift to a first-
inventor-to-file priority system; substantive and procedural modifications to the
patent law doctrine of willful infringement; and adoption of post-grant review
proceedings, prior user rights, and pre-issuance publication of all pending
applications. Several of these proposals have been the subject of discussion within
the patent community for many years, but others are more novel propositions.
Current legislative reform efforts (H.R. 1908, S. 1145) also would address
several issues of concern, including the quality of issued patents, the expense and
complexity of patent litigation, harmonization of U.S. patent law with the laws of our
leading trading partners, potential abuses committed by patent speculators, and the
special needs of individual inventors, universities, and small firms with respect to the
patent system. In addition, although the existing patent statute in large measure
applies the same basic rules to different sorts of inventions, regardless of the
technological field of that invention, the patent system is widely believed to impact
different industries in varying ways.
The provisions of the proposed legislation would arguably work the most
sweeping reforms to the U.S. patent system since the nineteenth century. However,
many of these proposals, such as pre-issuance publication and prior user rights, have
already been implemented in U.S. law to a more limited extent. These and other
reforms, such as the first-inventor-to-file priority system and post-grant review
proceedings, also reflect the decades-old patent practices of Europe, Japan, and our
other leading trading partners.
Other observers are nonetheless concerned that certain of these proposals would
weaken the patent right, thereby diminishing incentives for innovation. Some also
believe that changes of this magnitude, occurring at the same time, do not present the
most prudent course for the patent system. Patent reform therefore confronts
Congress with difficult legal, practical, and policy issues, but also with apparent
possibilities for altering and possibly improving the legal regime that has long been
recognized as an engine of innovation within the U.S. economy.
In troduction ......................................................1
Patents and Innovation Policy........................................2
The Mechanics of the Patent System...............................2
Current Issues and Concerns.........................................5
Potential Abuses of Patent Speculators.............................9
The Role of Individuals, Universities and Small Entities..............10
Different Roles for Patents in Distinct Industries....................12
Proposed Legislative Initiatives......................................13
First Inventor to File..........................................15
Elimination of Sections 102(c), (d) and (f).........................19
Inventor’s Oath and Assignee Filing..............................21
Apportionment of Damages.....................................22
Prior User Rights.............................................27
Post-Grant Review Proceedings..................................29
Publication of Pending Applications..............................32
Tax Planning Method Patents...................................34
Interlocutory Claim Construction Appeals.........................37
Mandatory Search Reports......................................38
Residency of Federal Circuit Judges..............................39
Modification of the Best Mode Requirement.......................41
USPTO Rulemaking Authority..................................43
Late USPTO Filings...........................................44
Check Imaging Methods.......................................45
This report was funded in part by a grant from the John D. and Catherine T.
Patent Reform in the 110 Congress:
Congressional interest in patent reform has increased as the patent system
becomes more significant to U.S. industry.1 There is broad agreement that more
patents are sought and enforced then ever before; that the attention paid to patents in
business transactions and corporate boardrooms has dramatically increased; and that
the commercial and social significance of patent grants, licenses, judgments, and
settlements is at an all-time high.2 As the United States becomes even more of a
high-technology, knowledge-based economy, the importance of patents may grow
even further in the future.
Increasing interest in patents has been accompanied by persistent concerns about
the fairness and effectiveness of the current system. Several recent studies, including
those by the National Academy of Sciences and the Federal Trade Commission, have
recommended legal reform to address perceived deficiencies in the operation of the
patent regime.3 Other experts maintain that major alterations in existing law are
unnecessary and that the patent process can adapt, and is adapting, to technological
Two bills have been introduced before both houses of the 110th Congress that
attempt to respond to current concerns about the functioning of the patent process.
Both H.R. 1908 and S. 1145 propose significant legal reforms to the patent system.
Among these reforms are a shift to a first-inventor-to-file priority system; substantive
and procedural modifications to the doctrine of willful infringement; and adoption
of assignee filing, post-grant review proceedings, prior user rights, and pre-issuance
publication of all pending applications. Several of these proposals have been the
1 This report is based substantially on CRS Report RL32996, Patent Reform: Innovation
Issues, by John R. Thomas and Wendy H. Schacht. That report addressed patent reformth
issues in the 109 Congress.
2 Statistics from the United States Patent and Trademark Office (USPTO) support this
account. In 1980, the USPTO received 104,329 utility patent applications; by 2005, this
number had grown to 390,733 applications. The number of U.S. patents granted in 1980
was 61,819; in 2006 this number had increased to 173,771. U.S. Patent and Trademark
Office, U.S. Patent Statistics, Calendar Years 1963-2006. Available at [http://www.uspto
3 National Research Council, National Academy of Sciences, A Patent System for the 21st
Century, [Washington, National Academies Press, 2004] and Federal Trade Commission,
To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,
October 2003, available at [http://www.ftc.gov].
subject of discussion within the patent community for many years, but others present
more novel propositions. H.R. 1908 passed the House of Representatives on
September 7, 2007, while S. 1145 was reported out of the Senate Committee on the
Judiciary on January 28, 2008.
This study provides an overview of current patent reform issues. It begins by
offering a summary of the structure of the current patent system and the role of
patents in innovation policy. The report then reviews some of the broader issues and
concerns, including patent quality, the high costs of patent litigation, international
harmonization, and speculation in patents, that have motivated these diverse
legislative reform proposals. The specific components of this legislation are then
identified and reviewed in greater detail.
Patents and Innovation Policy
The Mechanics of the Patent System
The patent system is grounded in Article I, Section 8, Clause 8 of the U.S.
Constitution, which states that “The Congress Shall Have Power ... To promote the
Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries ....” As
mandated by the Patent Act of 1952,4 U.S. patent rights do not arise automatically.
Inventors must prepare and submit applications to the U.S. Patent and Trademark
Office (USPTO) if they wish to obtain patent protection.5 USPTO officials known
as examiners then assess whether the application merits the award of a patent.6 The
patent acquisition process is commonly known as “prosecution.”7
In deciding whether to approve a patent application, a USPTO examiner will
consider whether the submitted application fully discloses and distinctly claims the
invention.8 In addition, the application must disclose the “best mode,” or preferred
way, that the applicant knows to practice the invention.9 The examiner will also
determine whether the invention itself fulfills certain substantive standards set by the
patent statute. To be patentable, an invention must be useful, novel and nonobvious.
The requirement of usefulness, or utility, is satisfied if the invention is operable and
provides a tangible benefit.10 To be judged novel, the invention must not be fully
anticipated by a prior patent, publication or other state-of-the-art knowledge that is
4 P.L. 82-593, 66 Stat. 792 (codified at Title 35 United States Code).
5 35 U.S.C. § 111.
6 35 U.S.C. § 131.
7 John R. Thomas, “On Preparatory Texts and Proprietary Technologies: The Place of
Prosecution Histories in Patent Claim Interpretation,” 47 UCLA Law Review (1999), 183.
8 35 U.S.C. § 112.
10 35 U.S.C. § 101.
collectively termed the “prior art.”11 A nonobvious invention must not have been
readily within the ordinary skills of a competent artisan at the time the invention was
If the USPTO allows the patent to issue, the patent proprietor obtains the right
to exclude others from making, using, selling, offering to sell or importing into the
United States the patented invention.13 Those who engage in these acts without the
permission of the patentee during the term of the patent can be held liable for
infringement. Adjudicated infringers may be enjoined from further infringing acts.14
The patent statute also provides for the award of damages “adequate to compensate
for the infringement, but in no event less than a reasonable royalty for the use made
of the invention by the infringer.”15
The maximum term of patent protection is ordinarily set at 20 years from the
date the application is filed.16 At the end of that period, others may employ that
invention without regard to the expired patent.
Patent rights are not self-enforcing. Patentees who wish to compel others to
observe their rights must commence enforcement proceedings, which most
commonly consist of litigation in the federal courts. Although issued patents enjoy
a presumption of validity, accused infringers may assert that a patent is invalid or
unenforceable on a number of grounds.17 The U.S. Court of Appeals for the Federal
Circuit (Federal Circuit) possesses national jurisdiction over most patent appeals
from the district courts.18 The U.S. Supreme Court enjoys discretionary authority to
review cases decided by the Federal Circuit.19
Patent ownership is perceived to be an incentive to innovation, the basis for the
technological advancement that contributes to economic growth. It is through the
commercialization and use of new products and processes that productivity gains are
made and the scope and quality of goods and services are expanded. Award of a
11 35 U.S.C. § 102.
12 35 U.S.C. § 103.
13 35 U.S.C. § 271(a).
14 35 U.S.C. § 283.
15 35 U.S.C. § 284.
16 35 U.S.C. § 154(a)(2). Although patent term is based upon the filing date, the patentee
gains no enforceable legal rights until the USPTO allows the application to issue as a
granted patent. A number of Patent Act provisions may modify the basic 20-year term,
including examination delays at the USPTO and delays in obtaining marketing approval for
the patented invention from other federal agencies.
17 35 U.S.C. § 282.
18 28 U.S.C. § 1295(a)(1).
19 28 U.S.C. § 1254(1).
patent is intended to stimulate the investment necessary to develop an idea and bring
it to the marketplace embodied in a product or process. Patent title provides the
recipient with a limited-time monopoly over the use of his discovery in exchange for
the public dissemination of information contained in the patent application. This is
intended to permit the inventor to receive a return on the expenditure of resources
leading to the discovery but does not guarantee that the patent will generate
commercial benefits. The requirement for publication of the patent is expected to
stimulate additional innovation and other creative means to meet similar and
expanded demands in the marketplace.
Innovation produces new knowledge. One characteristic of this knowledge is
that it is a “public good,” a good that is not consumed when it is used. This “public
good” concept underlies the U.S. patent system. Absent a patent system, “free riders”
could easily duplicate and exploit the inventions of others. Further, because they
incurred no cost to develop and perfect the technology involved, copyists could
undersell the original inventor. The resulting inability of inventors to capitalize on
their inventions would lead to an environment where too few inventions are made.20
The patent system corrects this market failure problem by providing innovators with
an exclusive interest in their inventions for a period of time, thereby allowing them
to capture the innovation’s marketplace value.
The regime of patents purportedly serves other goals as well. The patent system
encourages the disclosure of products and processes, for each issued patent must
include a description sufficient to enable skilled artisans to practice the patented
invention.21 At the close of the patent’s 20-year term,22 others may practice the
claimed invention without regard to the expired patent. In this manner the patent
system ultimately contributes to the growth of the public domain.
Even during their term, issued patents may also encourage others to “invent
around” the patentee’s proprietary interest. A patentee may point the way to new
products, markets, economies of production and even entire industries. Others can
build upon the disclosure of a patent instrument to produce their own technologies
that fall outside the exclusive rights associated with the patent.23
The patent system has also been identified as a facilitator of markets. Absent
patent rights, an inventor may have scant tangible assets to sell or license. In
addition, an inventor might otherwise be unable to police the conduct of a contracting
party. Any technology or know-how that has been disclosed to a prospective licensee
might be appropriated without compensation to the inventor. The availability of
patent protection decreases the ability of contracting parties to engage in
20 See Rebecca S. Eisenberg, “Patents and the Progress of Science: Exclusive Rights and
Experimental Use,” 56 University of Chicago Law Review 1017 (1989).
21 35 U.S.C. § 112.
22 35 U.S.C. § 154.
23 Eisenberg, supra, at 1017.
opportunistic behavior. By lowering such transaction costs, the patent system may
make technology-based transactions more feasible.24
Through these mechanisms, the patent system can act in more socially desirable
ways than its chief legal alternative, trade secret protection. Trade secrecy guards
against the improper appropriation of valuable, commercially useful and secret
information. In contrast to patenting, trade secret protection does not result in the
disclosure of publicly valuable information. That is because an enterprise must take
reasonable measures to keep secret the information for which trade secret protection
is sought. Taking the steps necessary to maintain secrecy, such as implementing
physical security measures, also imposes costs that may ultimately be unproductive
The patent system has long been subject to criticism, however. Some observers
have asserted that the patent system is unnecessary due to market forces that already
suffice to create an optimal level of innovation. The desire to obtain a lead time
advantage over competitors, as well as the recognition that technologically backward
firms lose out to their rivals, may well provide sufficient inducement to invent
without the need for further incentives.26 Other commentators believe that the patent
system encourages industry concentration and presents a barrier to entry in some
markets.27 Still other observers believe that the patent system too frequently attracts
speculators who prefer to acquire and enforce patents rather than engage in socially
When analyzing the validity of these competing views, it is important to note
the lack of rigorous analytical methods available for studying the effect of the patent
law upon the U.S. economy as a whole. The relationship between innovation and
patent rights remains poorly understood. As a result, current economic and policy
tools do not allow us to calibrate the patent system precisely in order to produce an
optimal level of investment in innovation. Thus, each of the arguments for and
against the patent system remains open to challenge by those who are unpersuaded
by their internal logic.
Current Issues and Concerns
Pending legislation — H.R. 1908 and S. 1145, both styled as the Patent Reform
Act of 2007 — proposes a number of changes to diverse aspects of the patent system.
24 Robert P. Merges, “Intellectual Property and the Costs of Commercial Exchange: A
Review Essay,” 93 Michigan Law Review (1995), 1570.
25 David D. Friedman et al., “Some Economics of Trade Secret Law,” 5 Journal of
Economic Perspectives (1991), 61.
26 See Jonathan M. Barnett, “Private Protection of Patentable Goods,” 25 Cardozo Law
Review (2004), 1251.
27 See John R. Thomas, “Collusion and Collective Action in the Patent System: A Proposal
for Patent Bounties,” University of Illinois Law Review (2001), 305.
Although these reforms were undoubtedly motivated by a range of concerns, a
discrete number of issues have been the subject of persistent discussion in the patent
community over a period of many years. Among these issues are concern for the
quality of issued patents, the expense and complexity of patent litigation,
harmonization of U.S. patent law with the laws of our leading trading partners,
potential abuses committed by patent speculators, and the special needs of individual
inventors, universities, and small firms with respect to the patent system. In addition,
although the patent statute in large measure applies the same basic rules to different
sorts of inventions, regardless of the technological field of that invention, the patent
system is widely believed to impact different industries in varying ways.29 As a result,
different industries can be expected to espouse dissimilar views of certain patent
reform proposals. Before turning to a more specific analysis of individual legislative
proposals, this report reviews the proposed legislation’s broader themes with regard
to these issues and concerns.
Government, industry, academia and the patent bar alike have long insisted that
the USPTO approve only those patent applications that describe and claim a
patentable advance.30 Because they meet all the requirements imposed by the patent
laws, quality patents may be dependably enforced in court and employed as a
technology transfer tool. Such patents are said to confirm private rights by making
their proprietary uses, and therefore their value, more predictable. Quality patents
also may clarify the extent that others may approach the protected invention without
infringing. These traits in turn should strengthen the incentives of private actors to
engage in value-maximizing activities such as innovation or commercial
t ransact i ons. 31
In contrast, poor patent quality is said to hold deleterious consequences. Large
numbers of inappropriately granted patents may negatively impact entrepreneurs. For
example, innovative firms may be approached by an individual with a low quality
patent that appears to cover the product they are marketing. The innovative firm may
recognize that the cost of challenging a patent even of dubious validity may be
considerable. Therefore, the firm may choose to make payments under licensing
arrangements, or perhaps decide not to market its product at all, rather than contest
the patent proprietor’s claims.32
29 See Dan L. Burk & Mark A. Lemley, “Is Patent Law Technology-Specific?,” 17 Berkeley
Technology Law Journal (2002), 1155.
30 CRS Report RL31281, Patent Quality and Public Policy: Issues for Innovative Firms in
Domestic Markets, by John R. Thomas.
31 See Joseph Farrell & Robert P. Merges, “Incentives to Challenge and Defend Patents:
Why Litigation Won’t Reliably Fix Patent Office Errors and Why Administrative Patent
Review Might Help,” 19 Berkeley Technology Law Journal (2004), 943.
32 See Bronwyn H. Hall & Dietmar Harhoff, “Post-Grant Reviews in the U.S. Patent System
— Design Choices and Expected Impact,” 19 Berkeley Technology Law Journal (2004),
Poor patent quality may also encourage opportunistic behavior. Perhaps
attracted by large damages awards and a potentially porous USPTO, rent-seeking
entrepreneurs may be attracted to form speculative patent acquisition and
enforcement ventures. Industry participants may also be forced to expend
considerable sums on patent acquisition and enforcement.33 The net results would
be reduced rates of innovation, decreased patent-based transactions, and higher prices
for goods and services.
Although low patent quality appears to affect both investors and competitors of
a patentee, patent proprietors themselves may also be negatively impacted. Patent
owners may make managerial decisions, such as whether to build production
facilities or sell a product, based upon their expectation of exclusive rights in a
particular invention. If their patent is declared invalid by the USPTO or a court,
patentees will be stripped of exclusive rights without compensation. The issuance
of large numbers of invalid patents would increase the possibility that the investment-
backed expectations of patentees would be disappointed.34
The notion that high patent quality is socially desirable has been challenged,
however. Some commentators believe that market forces will efficiently assign
patent rights no matter what their quality. Others observe that few issued patents are
the subject of litigation and further estimate that only a minority of patents are
licensed or sold. Because many patented inventions are not used in a way that calls
their validity into question, some observers maintain, society may be better off
making a detailed review into the patentability of an invention only in those few
cases where that invention is of commercial significance.35
Pending legislation bears upon the patent quality issue. Both the House and
Senate bills (H.R. 1908 and S. 1145) would allow for increased public participation
in USPTO decisionmaking through a pre-issuance submission procedure. These bills
also allow for post-issuance review proceedings, which would potentially allow
interested parties to “weed out” invalid patents before they are the subject of
licensing or infringement litigation.
Patent enforcement is often expensive. The complex legal and technological
issues, extensive discovery proceedings, expert witnesses, and specially qualified
attorneys associated with patent trials can lead to high costs.36 One study published
33 See Robert P. Merges, “As Many As Six Impossible Patents Before Breakfast: Property
Rights for Business Concepts and Patent System Reform,” 14 Berkeley Technology Law
Journal (1999), 577.
34 See Craig Allen Nard, “Certainty, Fence Building and the Useful Arts,” 74 Indiana Law
Journal (1999), 759.
35 Mark A. Lemley, “Rational Ignorance at the Patent Office,” 95 Northwestern University
Law Review (2001), 1495.
36 Steven J. Elleman, “Problems in Patent Litigation: Mandatory Mediation May Provide
in 2000 concluded that the average cost of patent enforcement was $1.2 million.37
These expenses appear to be increasing, with one more recent commentator
describing an “industry rule of thumb” whereby “any patent infringement lawsuit will
easily cost $1.5 million in legal fees alone to defend.”38 Higher stakes litigation is
even more costly: for patent suits involving damages claims of more than $25
million, expenses reportedly increase to $4 million per side.39
For innovative firms that are not infrequently charged with patent infringement,
or that bring claims of patent infringement themselves, the annual expenses
associated with patent litigation can be very dear. The Microsoft Corporation
reportedly defends an average of 35 to 40 patent lawsuits annually at a cost of almost
$100 million.40 The Intel Corporation has recently been estimated to spend $20
million a year on patent litigation.41
The high costs of litigation may discourage patent proprietors from bringing
meritorious claims against infringers. They may also encourage firms to license
patents of dubious merit rather than contest them in court. Pending legislation would
endeavor to make patent litigation less costly and complex through modification of
the doctrine of willful infringement. H.R. 1908 and S. 1145 would also allow for an
interlocutory appeal of claim construction rulings by the district courts. In addition,
these bills call for an administrative post-grant review proceeding that could serve
as a less expensive alternative to litigation.
In the increasingly globalized, high-technology economy, patent protection in
a single jurisdiction is often ineffective to protect the interests of inventors. As a
result, U.S. inventors commonly seek patent protection abroad. Doing so can be a
costly, time-consuming, and difficult process. There is no global patent system.
Inventors who desire intellectual property protection in a particular country must
therefore take specific steps to procure a patent within that jurisdiction.42
Differences in national laws are among the difficulties faced by U.S. inventors
seeking patent rights overseas. Although the world’s patent laws have undergone
Settlement and Solutions,” 12 Ohio State Journal on Dispute Resolution (1997), 759.
37 Dee Gill, “Defending Your Rights: Protecting Intellectual Property is Expensive,” Wall
Street Journal (September 25, 2000), 6.
38 Mark H. Webbink, “A New Paradigm for Intellectual Property Rights in Software,” 2005
Duke Law and Technology Review (May 1, 2005), 15.
39 See Sarah Lai Stirland, “Will Congress Stop High-Tech Trolls?,” National Journal
(February 26, 2005), 612.
40 “Microsoft Advocates for Patent Reform,” eWEEK (March 10, 2005).
41 Stirland, supra, at 613.
42 CRS Report RL31132, Multinational Patent Acquisition and Enforcement: Public Policy
Challenges and Opportunities for Innovative Firms, by John R. Thomas.
considerable harmonization in recent years, several notable distinctions between U.S.
patent law and those of our leading trading partners persist. H.R. 1908 and S. 1145
would address some of these differences by modifying U.S. patent law in order to
comply with international standards. Among these proposed reforms are adoption
of a first-inventor-to-file priority system, a post-grant review system, assignee filing,
and prior user rights.
Potential Abuses of Patent Speculators
Some commentators believe that the patent system too frequently attracts
speculators who prefer to acquire and enforce patents rather than engage in research,
development, manufacturing, or other socially productive activity.43 Patent
speculators are sometimes termed “trolls,” after creatures from folklore that would
emerge from under a bridge in order to waylay travelers.44 The late Jerome C.
Lemelson, a prolific inventor who owned hundreds of patents and launched
numerous charges of patent infringement, has sometimes been mentioned in this
context. The total revenue of the Lemelson estate’s patent licensing program has
been reported as in excess of $1.5 billion.45 But as explained by journalist Michael
Ravnitsky, “critics charge that many Lemelson patents are so-called submarine
patents, overly broad applications that took so long to issue or were so general in
nature that their owners could unfairly claim broad infringement across entire
industry sectors.”46 Of such patent ventures, patent attorney James Pooley observes:
Of course there is nothing inherently wrong with charging someone rent to use
your property, including intellectual property like patents. But it’s useful to keep
in mind — especially when listening to prattle about losing American jobs to
foreign competition — that these patent mills produce no products. Their only47
output is paper, of a highly threatening sort.
Patent enforcement suits brought by patent speculators appear to present special
concerns for manufacturers and service providers. If one manufacturer or service
provider commences litigation against another, the defendant can often assert its own
claims of patent infringement against the plaintiff. Because patent speculators do not
otherwise participate in the marketplace, however, the defendant is unable to counter
with its own patent infringement charges. This asymmetry in litigation positions
43 See Elizabeth D. Ferrill, “Patent Investment Trusts: Let’s Build a Pit to Catch the Patent
Trolls,” 6 North Carolina Journal of Law and Technology (2005), 367.
44 See Lorraine Woellert, “A Patent War Is Breaking Out on the Hill,” BusinessWeek 45
(July 4, 2005).
45 Nicholas Varchaver, “The Patent King,” Fortune (May 14, 2001), 202.
46 Michael Ravnitsky, “More Lemelson Suits,” The National Law Journal (December 17,
47 James Pooley, “Opinion: U.S. Patent Reform — A Good Invention,” Electronic
Business (January 1, 2000), 72.
reportedly reduces the bargaining power of manufacturers and service providers,
potentially exposing them to harassment.48
Observers hasten to note, however, that not every patent proprietor who does not
commercialize the patented invention should properly be considered an opportunistic
“troll.” A nonmanufacturing patentee may lack the expertise or resources to produce
a patented product, prefer to commit itself to further innovation, or otherwise have
legitimate reasons for its behavior.49 Universities and small biotechnology
companies often fit into this category. Further, whether classified as a “troll” or not,
each patent owner has presumptively fulfilled all of the relevant statutory
requirements. Among these obligations is a thorough disclosure of a novel,
nonobvious invention to the public.50
The legislation introduced in the 110th Congress would impact concerns over
“trolling” by the introduction of post-grant review procedures, universal pre-grant
publication of applications, as well as reform of patent damages law.
The Role of Individuals, Universities and Small Entities
Entrepreneurs and small, innovative firms play a role in the technological
advancement and economic growth of the United States.51 Several studies
commissioned by U.S. federal agencies have concluded that individuals and small
entities constitute a significant source of innovative products and services.52 Studies
have also indicated that entrepreneurs and small, innovative firms rely more heavily
upon the patent system than larger enterprises. Larger companies are said to possess
alternative means for achieving a proprietary or property-like interest in a particular
technology. For example, trade secrecy, ready access to markets, trademark rights,
speed of development, and consumer goodwill may to some degree act as substitutes
48 See Ronald J. Mann, “Do Patents Facilitate Financing in the Software Industry?,” 83
Texas Law Review (2005), 961.
49 See David G. Barker, “Troll or No Troll? Policing Patent Usage with An Open Post-Grant
Review,” 2005 Duke Law and Technology Review (April 15, 2005), 11.
50 35 U.S.C. § 112.
51 CHI Research Inc., Small Firms and Technology: Acquisitions, Inventor Movement, and
Technology Transfer, report for the Office of Advocacy, U.S. Small Business
Administration, January 2004, 2-3, available at [http://www.sba.gov/advo/research/
rs233tot.pdf]. See also CRS Report RL30216, Small, High Tech Companies and Their Role
in the Economy: Issues in the Reauthorization of the Small Business Innovation (SBIR)
Program, by Wendy H. Schacht.
52 For example, the National Academy of Engineering concluded that “small high-tech
companies play a critical and diverse role in creating new products and services, in
developing new industries, and in driving technological change and growth in the U.S.
economy.” National Academy of Engineering, Risk & Innovation: The Role and Importance
of Small High-Tech Companies in the U.S. Economy (Washington: National Academy Press,
1995), 37. This assessment was founded on the ability of small firms to develop markets
rapidly, generate new goods and services, and offer diverse products. The study also
concluded that small businesses were less risk adverse than larger, established corporations
and were often better positioned to exploit market opportunities quickly.
to the patent system.53 However, individual inventors and small firms often do not
have these mechanisms at their disposal. As a result, the patent system may enjoy
heightened importance with respect to these enterprises.54
In recent years, universities have also become more full-fledged participants in
the patent system. This trend has been attributed to the Bayh-Dole Act,55 a federal
statute that allowed universities and other government contractors to retain patent
title to inventions developed with the benefit of federal funding.56 In recent years
there has reportedly “been a dramatic increase in academic institutions’ investments
in technology licensing activities.”57 This increase has been reflected in the growth
in the number of patents held by universities, the number of universities with
technology transfer offices, and the amount of patent-based licensing revenues that
these offices have raised.58
The U.S. patent system has long acknowledged the role, and particular needs,
of independent inventors, small firms, and universities. For example, the patent
statute calls for each of these entities to receive a 50% discount on many USPTO
fees.59 As the USPTO is currently entirely funded by the fees it charges its users,60
this provision effectively calls for larger institutions to subsidize the patent
expenditures of their smaller competitors.
Beyond potentially diminished financial resources vis-a-vis larger concerns,
however, observers have disagreed over whether independent inventors, small firms,
and universities have particular needs with respect to the patent system, and if so
whether those needs should be reflected in patent law doctrines. With respect to the
proposed system of “prior user rights,”61 for example, some observers state that such
rights would particularly benefit small entities, which may often lack a sophisticated
53 See Barnett, supra.
54 J. Douglas Hawkins, “Importance and Access of International Patent Protection for the
Independent Inventor,” 3 University of Baltimore Intellectual Property Journal (1995), 145.
55 P.L. 96-517, 94 Stat. 2311 (codified at 35 U.S.C. §§ 200-212).
56 CRS Report RL32076, The Bayh-Dole Act: Selected Issues in Patent Policy and the
Commercialization of Technology, by Wendy H. Schacht.
57 Josh Lerner, “Patent Policy Innovations: A Clinical Examination,” 53 Vanderbilt Law
Review (2000), 1841.
58 See Arti K. Rai & Rebecca S. Eisenberg, “Bayh-Dole Reform and the Progress of
Biomedicine,” 66 Law and Contemporary Problems (Winter/Spring 2003), 289.
59 35 U.S.C. § 41(g).
60 CRS Report RS20906, U.S. Patent and Trademark Office Appropriations Process: A Brief
Explanation, by Wendy H. Schacht.
61 Under a rule of “prior user rights,” when a conflict exists between an issued patent and
an earlier user of the patented technology, the validity of the patent is upheld but the prior
user is exempted from infringement. See Pierre Jean Hubert, “The Prior User Right of H.R.
400: A Careful Balancing of Competing Interests,” 14 Santa Clara Computer and High
Technology Law Journal (1998), 189. Prior user rights are discussed further in this report
knowledge of the patent system.62 Others disagree, stating that smaller concerns rely
heavily on the exclusivity of the patent right, and that the adoption of prior user rights
would advantage large enterprises.63 Similar debates have occurred with respect to
other patent reform proposals, perhaps reflecting the fact that the community of
independent inventors, small firms, and universities is itself a diverse one.
Pending legislation includes a number of provisions that appear to be of
particular interest to independent inventors, universities, and small businesses,
including a shift to a first-inventor-to-file priority system, prior user rights, and post-
grant review procedures.
Different Roles for Patents in Distinct Industries
To a large extent, the patent statute subjects all inventions to the same standards,
regardless of the field in which those inventions arose. Whether the invention is an
automobile engine, semiconductor, or a pharmaceutical, it is for the most part subject
to the same patentability requirements, scope of rights, and term of protection. Both
experience and economic research suggest that distinct industries encounter the
patent system in different ways, however.64 As a result, it can be expected that
particular industries will react differently to the various patent reform proposals
currently before Congress.65
Although broad generalizations should be drawn with care, two industries
widely perceived as viewing the patent system in different ways are the
pharmaceutical and software sectors. Within the pharmaceutical industry, individual
patents are perceived as critical to a business model that provides life-saving and life-
enhancing medical innovations, but eventually allows members of the public access
to medicines at low cost. In particular, often only a handful, and sometimes only one
or two patents cover a particular drug product. Patents are also judged to be crucial
to the pharmaceutical sector because of the relative ease of replicating the finished
62 See Gary L. Griswold & F. Andrew Ubel, “Prior User Rights — A Necessary Part of a
First-to-File System,” 26 John Marshall Law Review (1993), 567.
63 See David H. Hollander, Jr., “The First Inventor Defense: A Limited Prior User Right
Finds Its Way Into U.S. Patent Law,” 30 American Intellectual Property Law Association
Quarterly Journal (2002), 37 (noting the perception that prior user rights favor large, well-
64 In particular, economic research suggests that different industries attach widely varying
values to patents. For example, one study of the aircraft and semiconductor industries
suggested that lead time and the strength of the learning curve were superior to patents in
capturing the value of investments. In contrast, members of the drug and chemical
industries attached a higher value to patents. See Peter S. Menell, “A Method for Reforming
the Patent System,” 13 Michigan Telecommunications & Technology Law Review (2007),
“Appropriating the Returns for Industrial Research and Development,” Brookings Papers
on Economic Activity, 1987, in The Economics of Technical Change, eds. Edwin Mansfield
and Elizabeth Mansfield (Vermont, Edward Elgar Publishing Co., 1993), 254.
65 For additional discussion on this issue see CRS Report RL33367, Patent Reform: Issues
in the Biomedical and Software Industries, by Wendy H. Schacht.
product. For example, while it is expensive, complicated, and time consuming to
duplicate an airplane, it is relatively simple to perform a chemical analysis of a pill
and reproduce it.66
In contrast to the pharmaceutical field, the nature of software development is
such that innovations are typically cumulative and new products often embody
numerous patentable inventions. This environment has led to what has been
described as a
poor match between patents and products in the [software] industry: it is difficult
to patent an entire product in the software industry because any particular
product is likely to include dozens if not hundreds of separate technological67
This situation may be augmented by the multiplicity of patents often associated with
a finished computer product that utilizes the software. It is not uncommon for
thousands of different patents (relating to hardware and software) to be embodied in
one single computer. In addition, ownership of these patents may well be fractured
among hundreds or thousands of different individuals and firms.
In summary, then, the patent laws provide a “one size fits all” system, where all
inventions are subject to the same requirements of patentability and scope of
protection, regardless of the technical field in which they arose. Innovators in
different fields nonetheless have varying experiences with the patent system. These
discrepancies, among others, lead to the expectation that distinct industries may react
differently to the various patent reform proposals presently considered by Congress.
Proposed Legislative Initiatives
Legislation has been introduced in both houses of Congress that proposes
significant reforms to the patent system. With respect to the House of
Representatives, H.R. 1908, titled the Patent Reform Act of 2007, was introduced on
April 17, 2007, and passed the House on September 7, 2007. S. 1145, also titled the
Patent Reform Act of 2007, was introduced in the Senate on April 17, 2007. S. 1145
was reported out of the Senate Committee on the Judiciary on January 28, 2008.
Although the bills were identically worded upon their introduction, they have since
been subject to amendments in committee that have sometimes differed in substance.
For purposes of comparison, the following chart identifies the significant proposals
of H.R. 1908 (as passed by the House) and S. 1145 (as reported from the Committee
on the Judiciary). Please note that the two bills at times propose different reforms
with respect to the same issue, including post-grant review proceedings, prior user
rights, USPTO rulemaking authority, and venue.
66 Federic M. Scherer, “The Economics of Human Gene Patents,” 77 Academic Medicine
(December 2002), 1350.
67 Mann, supra, at 979.
H.R. 1908S. 1145
Passed House on September 7, 2007As Reported on January 28, 2008
First Inventor to File, § 3First Inventor to File, § 2
Grace Period, § 3Grace Period, § 2
Inventor’s Oath and Assignee Filing, § 4Inventor’s Oath and Assignee Filing, § 3
Apportionment of Damages, § 5(a)Apportionment of Damages, § 4(a)
Willful Infringement, § 5(a)Willful Infringement, § 4(a)
Marking, § 4(c)
Prior User Rights, § 5(b)Prior User Rights, § 4(d)
Post-Grant Opposition Proceedings, § 6Post-Grant Opposition Proceedings, § 5
Publication of Pending Applications, Publication of Pending Applications,
§ 9(a)§ 7(a)
Pre-Issuance Submissions, § 9(b)Pre-Issuance Submissions, § 7(b)
Tax Planning Method Patents, § 10
Venue, § 11(a) Venue, § 8(a)
Interlocutory Claim ConstructionInterlocutory Claim Construction
Appeals, § 11(b)Appeals, § 8(b)
Mandatory Search Reports, § 12(a)Mandatory Search Reports, § 11
Residency of Federal Circuit Judges, § 10
Inequitable Conduct, § 12(b)Inequitable Conduct, § 12
Modification of the Best Mode
Requirement, § 13
USPTO Rulemaking Authority, § 14USPTO Rulemaking Authority, § 9
Late USPTO Filings, § 13
Check Imaging Methods, § 14
USPTO Funding, § 15
First Inventor to File
S. 1145 would shift the U.S. patent priority rule from the current “first-to-
invent” principle to the “first-inventor-to-file” principle.68 H.R. 1908 would also
shift to the “first-inventor-to-file” principle,69 provided that “the President transmits
to the Congress a finding that major patenting authorities have adopted a grace period
having substantially the same effect” as those within the bill.70 The term “major
patenting authorities” is defined as “at least the patenting authorities in Europe and
Within the patent law, the priority rule addresses the circumstance where two
or more persons independently develop the identical or similar invention at
approximately the same time. In such cases the patent law must establish a rule as
to which of these inventors obtains entitlement to a patent.72 Under current U.S. law,
when more than one patent application is filed claiming the same invention, the
patent will be awarded to the applicant who was the first inventor in fact. This
conclusion holds even if the first inventor was not the first person to file a patent
application directed towards that invention.73 Within this “first-to-invent” system,74
the timing of real-world events, such as the date a chemist conceived of a new
compound or a machinist constructed a new engine, is of significance.
In every patent-issuing nation except the United States, priority of invention is
established by the earliest effective filing date of a patent application disclosing the
claiming invention.75 Stated differently, the inventor who first filed an application
at the patent office is presumptively entitled to the patent. Whether or not the first
applicant was actually the first individual to complete the invention in the field is
irrelevant. This priority system follows the “first-inventor-to file” principle.
68 S. 1145, § 2.
69 H.R. 1908, § 3.
70 Id. at § 3(k).
71 Id. The European Patent Convention, which for nearly 30 years has provided the
framework for European patent law, currently does not provide inventors with a generally
applicable grace period during which they may publicly disclose their inventions without
prejudice to their patent rights. See European Patent Convention, Art. 54, October 5, 1973,
13 I.L.M. 268. Under Japanese law, the grace period is six months. See Japanese Patent
Act, Law No. 121 of 1959, art. 67-2-2. Under H.R. 1908, a U.S. shift to a first-inventor-to-
file regime would require amendments to both of these laws, at a minimum.
72 See Roger E. Schechter & John R. Thomas, Principles of Patent Law § 1.2.5 (2d ed.
73 In addition, the party that was the first to invent must not have abandoned, suppressed or
concealed the invention. 35 U.S.C. § 102(g)(2).
74 See Charles E. Gholz, “First-to-File or First-to-Invent?,” 82 Journal of the Patent and
Trademark Office Society (2000), 891.
75 See Peter A. Jackman, “Adoption of a First-to-File System: A Proposal,” 26 University
of Baltimore Law Review (1997), 67.
A simple example illustrates the distinction between these priority rules.
Suppose that inventor A synthesizes a new chemical compound on August 1, 2007,
and files a patent application on November 1, 2007, claiming that compound.
Suppose further that inventor B independently invents the same compound on
September 1, 2007, and files a patent application on October 1, 2007. Inventor A
would be awarded the patent under the first-to-invent rule, while Inventor B would
obtain the patent under the first-inventor-to-file principle.
Under the current U.S. first-to-invent rule, priority disputes may be resolved via
“interference” proceedings conducted at the USPTO.76 An interference is a complex
administrative proceeding that may result in the award of priority to one of its
participants. These proceedings are not especially common. One estimate concludes
that less than one-quarter of one percent of patents are subject to an interference.77
This statistic may mislead, however, because the expense of interference cases may
result in their use only for the most commercially significant inventions. A shift to
a first-inventor-to-file priority rule would eliminate the need for interference
proceedings. Instead, the applicant with the earliest filing date, rather than the first
individual to have created the invention, would have been eligible for the patent.
The relative merits of the first-to-invent and first-inventor-to-file priority
principles have been the subject of a lengthy debate within the patent community.
Supporters of the current first-to-invent principle in part assert that the first-inventor-
to-file system would create inequities by sponsoring a “race to the Patent Office.”
They are also concerned that the first-to-file system would encourage premature and
sketchy technological disclosures in hastily-filed patent applications.78
Supporters of the first-inventor-to-file principle in part assert that it provides a
definite, readily determined and fixed date of priority of invention, which would lead
to greater legal certainty within innovative industries. They also contend that the
first-inventor-to-file principle would decrease the complexity, length and expense
associated with current USPTO interference proceedings. Rather than being caught
up in lengthy interference proceedings in an attempt to prove dates of inventive
activity that occurred many years previously, they assert, inventors could continue to
go about the process of innovation. Supporters also observe that informed U.S. firms
already organize their affairs on a first-inventor-to-file basis in order to avoid
forfeiture of patent rights abroad.79
76 35 U.S.C. § 135.
77 See Clifford A. Ulrich, “The Patent Systems Harmonization Act of 1992: Conformity at
What Price?,” 16 New York Law School Journal of International and Comparative Law
78 See Brad Pedersen & Vadim Braginsky, “The Rush to First-to-File Patent System in the
United States: Is a Globally Standardized Patent Reward System Really Beneficial to Patent
Quality and Administrative Efficiency?,” 7 Minnesota Journal of Law, Science &
Technology (2006), 757.
79 See Whitney E. Fraser Tiedemann, “First-to-File: Promoting the Goals of the United
States Patent System as Demonstrated Through the Biotechnology Industry,” 41 University
of San Francisco Law Review (2007), 477.
The effect of a shift to the first-inventor-to-file rule upon individual inventors,
small firms, and universities has been debated. Some observers state that such
entities often possess fewer resources and wherewithal than their larger competitors,
and thus are less able to prepare and file patent applications quickly. Others disagree,
stating that smaller concerns are more nimble than larger ones and thus better able
to submit applications promptly. They also point to the availability of provisional
applications,80 asserting that such applications allow small entities to secure priority
rights readily without a significant expenditure of resources. A quantitative study of
interference proceedings by Gerald Mossinghoff, a former Commissioner of the
USPTO, also suggested that the first-to-invent rule neither advantaged nor
disadvantaged small entities vis-a-vis larger enterprises.81
Whether the U.S. Constitution places restraints upon the selection of a patent
priority principle has also been debated. Article I, Section 8, clause 8 of the
Constitution provides Congress with the authority to award “inventors” with
exclusive rights. Some observers suggest this language suggests, or possibly even
mandates, the current first-to-invent system. Others conclude that because the first-
inventor-to-file only awards patents to individuals who actually developed the
invention themselves, rather than derived it from another, this priority system is
permissible under the Constitution.82
In weighing the validity of this position, it should be noted that under well-
established U.S. law, the first-inventor-in-fact does not always obtain entitlement to
a patent. If, for example, a first-inventor-in-fact maintained his invention as a trade
secret for many years before seeking patent protection, he may be judged to have
“abandoned, suppressed or concealed” the invention.83 In such a case a second-
inventor-in-fact may be awarded a patent on that invention. Courts have reasoned
that this statutory rule encourages individuals to disclose their inventions to the
public promptly, or give way to an inventor who in fact does so.84 As the first-
inventor-to-file rule acts in a similar fashion to this longstanding patent law principle,
conflict between this rule and the Constitution appears unlikely.
Notably, a first-inventor-to-file priority rule does not permit one individual to
copy another’s invention and then, by virtue of being the first to file a patent
application, be entitled to a patent. All patent applicants must have originated the
invention themselves, rather than derived it from another.85 In order to police this
requirement, both bills would provide for “inventor’s rights contests” that would
80 35 U.S.C. § 111(b).
81 Gerald J. Mossinghoff, “The U.S. First-to-Invent System Has Provided No Advantage to
Small Entities,” 84 Journal of the Patent and Trademark Office Society (2002), 425.
82 See generally Karen E. Simon, “The Patent Reform Act’s First-to-File Standard: Needed
Reform or Constitutional Blunder?,” 6 John Marshall Review of Intellectual Property Law
(Fall 2006), 129.
83 35 U.S.C. § 102(g)(2).
84 See Del Mar Engineering Labs. v. United States, 524 F.2d 1178 (Ct. Cl. 1975).
85 35 U.S.C. § 101.
allow the USPTO to determine which applicant is entitled to a patent on a particular
S. 1145 would also alter the existing one-year “grace period” enjoyed by U.S.
inventors.87 H.R. 1908 would make the same change, contingent upon the
President’s certification that “major patenting authorities” provide inventors with a
grace period having substantially the same effect as the one proposed in the
Current U.S. patent law essentially provides inventors with a one-year period
to decide whether patent protection is desirable, and, if so, to prepare an application.
Specified activities that occur before the “critical date” — patent parlance for the day
one year before the application was filed — will prevent a patent from issuing.89 If,
for example, an entrepreneur first discloses an invention by publishing an article in
a scientific journal, she knows that she has one year from the publication date in
which to file a patent application. Importantly, uses, sales, and other technical
disclosures by third parties will also start the one-year clock running. As a result,
inventors have a broader range of concerns than merely their own activities.90
Suppose, for example, that an electrical engineer files a patent application
claiming a new capacitor on February 1, 2007. While reviewing the application, a
USPTO examiner discovers an October 1, 2005, journal article disclosing the
identical capacitor. Because the article was published prior to the critical date of
February 1, 2006, that publication will prevent or “bar” the issuance of a patent on
If a relevant reference is first publicly disclosed during the one-year grace period
— that is to say, after the critical date but prior to the filing date — the legal
situation is more complex. Under current law, patent applicants may “antedate” such
a reference by demonstrating that they had actually invented the subject matter of
their application prior to the date of the reference. If the applicant can make such a
showing, then the reference cannot ordinarily be used to defeat the patentability of
As an illustration of this procedure, suppose that an inventor files a patent
application directed to a polymer on February 1, 2007. Suppose further that the
USPTO examiner discovers that a textbook published on January 1, 2007, describes
86 H.R. 1908, § 3(i); S. 1145, § 2(i).
87 S. 1145, § 2.
88 H.R. 1908, § 3.
89 35 U.S.C. § 102(b).
90 Schechter & Thomas, supra, at § 4.3.1.
the same polymer that is claimed in the application.91 Because the textbook was
published subsequent to the critical date of February 1, 2006, it does not absolutely
bar the application. In order to obtain a patent, however, the applicant must
nonetheless demonstrate that he invented the polymer prior to January 1, 2007, the
date the textbook was published. The applicant might submit copies of his laboratory
notebook, for example, or submit a sworn declaration in order to make this
S. 1145 would change, and H.R. 1908 could potentially change, the current
grace period by causing it only to apply to patent applicants themselves. Under this
proposal, “disclosures made by the inventor or a joint inventor or by others who
obtained the subject matter disclosed directly or indirectly from the inventor or a joint
inventor” would not be patent-defeating, provided they were made “one year or less
before the effective filing date of the claimed invention.” In contrast, disclosures
qualify as prior art, and are therefore potentially patent-defeating, if they were made
either by (1) the inventors and their associates more than one year before the patent
application’s filing date; or (2) anyone else prior to the filing date, provided that such
a disclosure occurred prior to the inventor’s own disclosure. These amendments
would, in essence, protect the patent positions of individuals who disclosed their
inventions up to one year before they filed a patent application. The grace period
would no longer shield inventors from earlier disclosures made by unrelated
Elimination of Sections 102(c), (d) and (f)
S. 1145 would also eliminate three provisions of the Patent Act, paragraphs (c),
(d), and (f) of Section 102.93 Once more, H.R. 1908 would make the same change,
contingent upon the President’s certification that “major patenting authorities”
provide inventors with a grace period having substantially the same effect as the one
proposed in the legislation.94
Section 102(c) does not allow an applicant to obtain a patent when he “has
abandoned the invention.” This statute does not refer to disposal of the invention
itself, however, but instead to the intentional surrender of an invention to the public.
Older Supreme Court opinions instruct that abandonment may occur where an
inventor expressly dedicates it to the public, through a deliberate relinquishment or
conduct evidencing an intent not to pursue patent protection.95 The circumstances
must be such that others could reasonably rely upon the inventor’s renunciation.96
91 In addition, the textbook must be attributable to someone other than the patent applicant.
See 35 U.S.C. § 102(a).
92 37 C.F.R. § 1.131.
93 S. 1145, § 2.
94 H.R. 1908, § 3.
95 See Beedle v. Bennett, 122 U.S. 71 (1887).
96 See Mendenhall v. Astec Indus., Inc., 13 USPQ2d 1913, 1937 (E.D. Tenn. 1988), aff’d,
Perhaps because few individuals expressly cede their patentable inventions to the
public without seeking compensation, there are few modern judicial opinions that
consider 35 U.S.C. § 102(c) in any meaningful way. In addition, the generally
applicable principle of equitable estoppel may apparently be used to obtain the same
Like Section 102(c), Section 102(d) of the Patent Act is reportedly little-used.98
35 U.S.C. 102(d) bars a U.S. patent when (1) an inventor files a foreign patent
application more than twelve months before filing the U.S. application, and (2) a
foreign patent results from that application prior to the U.S. filing date. Suppose that
an inventor files an application at a foreign patent office on May 25, 2006. The
foreign application matures into a granted foreign patent on August 1, 2007. If the
inventor has not filed his patent application at the USPTO as of August 1, 2007, the
date of the foreign patent grant, any patent application that the inventor subsequently
filed in the United States would be defeated.
35 U.S.C. § 102(d) is intended to encourage the prompt filing of patent
applications in the United States. As the Patent Office Commissioner explained in
The intention of [C]ongress obviously was to obtain for this country the free use
of the inventions of foreigners as soon as they became free abroad. This is
indicated by the use of the phrase, ‘first patented, or caused to be patented, in a
foreign country,’ for it was presumable that American citizens would obtain their
first patent here, while a foreigner would first patent his invention in his own
country. The statute was designed to prevent a foreigner from spending his time
and capital in the development of an invention in his own country, and then
coming to this country to enjoy a further monopoly, when the invention had
become free at home. The result of such a course would be that while the foreign
country was developing the invention and enjoying its benefits, its use could be
interdicted here; while, if the term of the monopoly could be further extended
here, the market could be controlled long after the foreign nation was prepared99
to flood this country with the unpatented products of the patented process.
Section 102(d) has been subject to critical commentary. Because inventors may
choose to file a patent application only in the United States, the policy goal of
assuring that the U.S. market will become patent-free contemporaneously with
foreign markets may not be well-served by this provision. In addition, 35 U.S.C. §
102(d) effectively acts against foreign, rather than U.S.-based inventors, as domestic
inventors ordinarily file at the USPTO first before seeking rights overseas. Some
commentators have suggested that 35 U.S.C. § 102(d) violates the spirit, if not the
97 See generally A.C. Auckerman & Co. v. R.L. Chaides Construction Co., 960 F.2d 1020
(Fed. Cir. 1992).
98 Schechter & Thomas, supra, at § 4.3.8.
99 Bate Refrigerating Co. v. Sulzberger, 157 U.S. 1, 27 (1895) (quoting Ex parte Mushet,
letter, of U.S. international treaty obligations, which generally impose an obligation
of national treatment with respect to intellectual property matters.100
The third of these provisions, 35 U.S.C. § 102(f), states that a person may obtain
a patent unless “he did not himself invent the subject matter sought to be patented.”
This proposed amendment would not alter the requirement that only an actual
inventor may obtain a patent, which is also stated by 35 U.S.C. § 101.101
Inventor’s Oath and Assignee Filing
Under current U.S. law, a patent application must be filed by the inventor —
that is to say, the natural person or persons who developed the invention.102 This rule
applies even where the invention was developed by individuals in their capacity as
employees. Even though rights to the invention have usually been contractually
assigned to an employer, for example, the actual inventor, rather than the employer,
must be the one that applies for the patent. In particular, Section 115 of the Patent
Act obliges each applicant must also submit an oath or declaration stating that he
believes himself to be the “original and first inventor” of the subject matter for which
he seeks a patent. Section 118 of the Patent Act allows a few exceptions to this
general rule. If an inventor cannot be located, or refuses to perform his contractual
obligation to assign an invention to his employer, then the employer may file the
patent application in place of the inventor.
S. 1145 would modify these rules by incorporating the exceptions found in
current Section 118 into Section 115 of the Patent Act.103 This proposal appears to
be primarily technical in nature, although a few changes between the proposed statute
and present law exist. First, S. 1145 would require inventors to declare only that they
are the “original inventor” — rather than the “original and first inventor” — in
keeping with the proposed shift to a first-inventor-to-filed priority system. Second,
S. 1145 would allow an “individual who is under an obligation of assignment for
patent [to] include the required statements . . . in the assignment executed by the
individual, in lieu of filing such statements separately.” This provision comports
with the allowance of the filing of patent applications by employers and other
assignees of patent rights.
100 See Toshiko Takenaka, “The Best Patent Practice or Mere Compromise? A Review of
the Current Draft of the Substantive Patent Law Treaty and a Proposal for a ‘First-to-Invent’
Exception for Domestic Applicants,” 11 Texas Intellectual Property Law Journal (2003),
101 See Schechter & Thomas, supra, at § 4.4.4. This amendment may potentially alter the
holding in Oddzon Products Inc. v. Just Toys Inc., 122 F.3d 1396 (Fed. Cir. 1997), that
subject matter that qualifies as prior art only under 35 U.S.C. § 102(f) may be used for a
nonobviousness analysis under 35 U.S.C. § 103(a). Further discussion of this issue may be
found at CRS Report RL33063, Intellectual Property and Collaborative Research, by John
102 35 U.S.C. § 111.
103 S. 1145, § 3(a); H.R. 1908, § 4(a).
S. 1145 would further stipulate that a “person to whom the inventor has
assigned or is under an obligation to assign the invention may make an application
for patent.”104 Individuals who otherwise make a showing of a “sufficient proprietary
interest in the matter” may also apply for a patent on behalf of the inventor upon a
sufficient show of proof of the pertinent facts. Under S. 1145, if the USPTO
“Director grants a patent on an application filed under this section by a person other
than the inventor, the patent shall be granted to the real party in interest and upon
such notice to the inventor as the Director considers to be sufficient.”
H.R. 1908 also introduces a number of changes to existing Section 115 of the
Patent Act, but does not amend Section 118. Like its counterpart in the Senate, H.R.
1908 would allow an “individual who is under an obligation of assignment for patent
[to] include the required statements . . . in the assignment executed by the individual,
in lieu of filing such statements separately.”105
Legal reforms allowing assignee filing of patent applications have been
discussed for many years, with two well-known commissions of patent experts
encouraging this shift. A 1966 Report of the President’s Commission on the Patent
System recommended the allowance of assignee filing as a way to simplify
formalities of application filing and to avoid delays caused by the need to identify
and obtain signatures from each inventor.106 The 1992 Advisory Commission on
Patent Law Reform was also in favor of this change. The 1992 Commission
observed that the United States was “the only country which does not permit the
assignee of an invention to file a patent application in its own name.”107 In the
opinion of the 1992 Commission, assignee filing would appropriately accompany a
U.S. shift to a first-inventor-to-file priority system, as the reduction of formalities
would allow innovative enterprises to file patent applications more promptly.
The 1992 Commission also explained that adoption of assignee filing may have
some negative consequences. The Commission noted that patent applications filed
by assignees may lack the actual inventor’s personal guarantee that the application
was properly prepared. In addition, assignee filing might derogate the right of natural
persons to their inventions. In the opinion of the Commission, however, the
advantages of assignee filing outweighed the disadvantages.108
Apportionment of Damages
H.R. 1908 and S. 1145 also address monetary remedies in patent cases.
Marketplace realities often render the determination of an appropriate damages award
104 S. 1145, § 3(b).
105 H.R. 1908, § 4(a).
106 President’s Commission on the Patent System, “To Promote the Progress of ... Useful
Arts” in an Age of Exploding Technology (1966).
107 Advisory Commission on Patent Reform, A Report to the Secretary of Commerce (August
a difficult affair in patent litigation. In some cases, the product or process that is
found to infringe may incorporate numerous additional elements beyond the patented
invention. For example, the asserted patent may relate to a single component of an
audio speaker, while the accused product consists of the entire stereo system. In such
circumstances, a court may apply “the entire market value rule,” which “permits
recovery of damages based upon the entire apparatus containing several features,
where the patent-related feature is the basis for consumer demand.”109 On the other
hand, if the court determines that the infringing sales were due to many factors
beyond the use of the patented invention, the court may apply principles of
“apportionment” to measure damages based upon the value of the patented feature
Some observers believe that courts have sometimes been overly generous in
assessing damages in patent cases. As one commentator asserted:
[B]road application of the entire market value rule appears to broaden the
practical scope of a remedy for patent infringement beyond the legal scope of the
patent and despite careful attention to a precise and proper construction of claim
terms. Further, although the entire market value rule was conceived to ensure a
proper level of damages for the infringement by recognizing a patent’s value that
went beyond sales of a single product, the courts’ abandonment of a meaningful
“basis of consumer” demand test requires an infringer to pay damages for an
entire system, despite that the patent has been issued on only a narrow piece that
has little market impact on sales of unpatented components. Similarly, failing to
provide subsequent inventors with clear notice of their potential liability by
uneven application of the entire market value rule may chill innovation and
interfere with the public notice requirements on which the patent laws depend.
Overcompensating initial inventors and over-deterring subsequent inventors111
interferes with the balance sought to be struck by proper claim interpretation.
Other commentators disagree, believing that current case law appropriately
incorporates apportionment principles. These commentators also believe that the
proposed reforms would diminish the value of the patent right to the detriment of the
innovation environment of the United States. One observer states:
Courts have had little difficulty applying the current law on apportionment and
the entire market value rule to reach just and reasonable findings on assessment
of damages ....
Patent infringement damages ... are the culmination of the courts’ long and
careful efforts to adhere to the statutory requirement to provide damages
adequate to compensate for the infringement of an inventor’s patent.
Apportionment recognizes the reality that consumer demand for an infringing
product or process may in part spring from contributions from the infringer, and
to reward the inventor for those contributions is inappropriate. On the other hand,
109 State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1580 (Fed. Cir. 1989).
110 Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641 (1915).
111 Amy L. Landers, “Let the Games Begin: Incentives to Innovation in the New Economy
of Intellectual Property Law,” 46 Santa Clara Law Review (2006), 364-65.
the entire market value rule recognizes the reality that even complex assemblies
may owe their marketability to a patented feature — a feature that drives
consumer demand for the overall assembly. In those cases, it is entirely
appropriate to reward the inventor according to the worth of her invention. To
do otherwise would only encourage those who trespass and discourage inventors
from making their intellectual efforts available to the public. The courts can be
and are flexible in assessing each case on its merits, and they can reliably
determine the correct royalty base and rate that will award “damages adequate112
to compensate for the infringement.”
In brief, H.R. 1908 calls for a court to select one of the following methods for
determining a “reasonable royalty” as the measure of damages: (1) the economic
value of the properly attributable to the patent’s specific contribution over the prior
art, (2) the entire market value rule, or (3) other factors, such as terms of the113
nonexclusive marketplace licensing of the invention. S. 1145 requires courts to
select the method for calculating reasonable royalties from either (1) the entire
market value rule, (2) an established royalty based upon marketplace licensing, or (3)
the economic value of the infringement attributable to the claimed invention’s114
specific contribution over the prior art.
Views differ on the appropriateness of this reform. Some believe that current
damages standards have resulted in the systemic overcompensation of patent owners.
Such overcompensation may place unreasonable royalty burdens upon producers of
high technology products, ultimately impeding the process of technological
innovation and dissemination that the patent system is meant to foster. Others
believe that current case law appropriately accounts for apportionment concerns.
These observers are concerned that this reform might overly restrict damages in
patent cases, thereby discouraging voluntary licensing and promoting infringement
of patent rights. Limited damage awards for patent infringement might prevent
innovators from realizing the value of their inventive contributions, a principal goal
of the patent system.
H.R. 1908 and S. 1145 propose to reform the law of willful infringement. The
patent statute currently provides that the court “may increase the damages up to three
times the amount found or assessed.”115 An award of enhanced damages, as well as
the amount by which the damages will be increased, is committed to the discretion
of the trial court.116 Although the statute does not specify the circumstances in which
enhanced damages are appropriate, the Federal Circuit recently explained that “a
112 William C. Rooklidge, “Reform of the Patent Laws: Forging Legislation Addressing
Disparate Interests,” 88 Journal of the Patent and Trademark Office Society (2006), 17-18,
113 H.R. 1908, § 5(a).
114 S. 1145, § 4(a).
115 35 U.S.C. § 284.
116 See Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992).
patentee must show by clear and convincing evidence that the infringer acted despite
an objectively high likelihood that its actions constituted infringement of a valid
patent.”117 This circumstance is termed “willful infringement.”118
Courts will not ordinarily enhance damages due to willful infringement if the
adjudicated infringer did not know of the patent until charged with infringement in
court, or if the infringer acted with the reasonable belief that the patent was not
infringed or that it was invalid. Prior to the 2007 decision in In re Seagate
Technology, Federal Circuit decisions emphasized the duty of someone with actual
notice of a competitor’s patent to exercise due care in determining if his acts will
infringe that patent.119 In Seagate Technology, however, the Federal Circuit opted to
“abandon the affirmative duty of due care.”120 The court of appeals instead explained
that “proof of willful infringement permitting enhanced damages requires at least a
showing of objective recklessness.”121
Prior to 2004, the Federal Circuit held that when an accused infringer invoked
the attorney-client or work-product privilege, courts should be free to reach an
adverse inference that either (1) no opinion had been obtained or (2) an opinion had
been obtained and was contrary to the infringers’s desire to continue practicing the
patented invention.122 However, in its decision in Knorr-Bremse Systeme fuer
Nutzfahrzeuge GmbH v. Dana Corp.,123 the Federal Circuit expressly overturned this
principle. The Court of Appeals further stressed that the failure to obtain legal advice
did not occasion an adverse inference with respect to willful infringement either.
Following the Knorr-Bremse opinion, willful infringement determinations are based
upon “the totality of circumstances, but without the evidentiary contribution or
presumptive weight of an adverse inference that any opinion of counsel was or would
have been unfavorable.”124
Patent law’s willful infringement doctrine has proven controversial. Some
observers believe that this doctrine ensures that patent rights will be respected in the
marketplace. Critics of the policy believe that the possibility of trebled damages
discourages individuals from reviewing issued patents. Out of fear that their
inquisitiveness will result in multiple damages, innovators may simply avoid looking
at patents until they are sued for infringement. To the extent this observation is
correct, the law of willful infringement discourages the dissemination of technical
117 In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007) (in banc).
118 See Beatrice Foods Co. v. New England Printing & Lithographing Co., 923 F.2d 1576,
119 See, e.g., Jon E. Wright, “Willful Patent Infringement and Enhanced Damages —
Evolution and Analysis,” 10 George Mason Law Review (2001), 97.
120 Seagate Technologies, supra.
122 See, e.g., Fromson v. Western Litho Plate & Supply Co., 853 F.2d 1568, 1572 (Fed. Cir.
123 383 F.3d 1337 (Fed. Cir. 2004).
124 Ibid at 1341.
knowledge, thereby thwarting one of the principal goals of the patent system. Fear
of increased liability for willful infringement may also discourage firms from
challenging patents of dubious validity. Consequently some have argued that the
patent system should shift to a “no-fault” regime of strictly compensatory damages,
without regard to the state of mind of the adjudicated infringer.125
H.R. 1908 and S. 1145 include identical language that would add several
clarifications and changes to the law of willful infringement. First, a finding of
willful infringement would be appropriate only where (1) the infringer received
specific written notice from the patentee and continued to infringe after a reasonable
opportunity to investigate; (2) the infringer intentionally copied from the patentee
with knowledge of the patent; or (3) the infringer continued to infringe after an
adverse court ruling. Second, willful infringement cannot be found where the
infringer possessed an informed, good faith belief that its conduct was not infringing.
Finally, a court may not determine willful infringement before the date on which the
court determines that the patent is not invalid, enforceable, and infringed.126
The Patent Act encourages patent proprietors that manufacture their patented
inventions to notify the public of their patent rights. Section 287(a) provides that
patent owners should place the word “patent,” or the abbreviation “pat.,” along with
the number of the patent, on patented goods. If the nature of the article does not
allow this notice to be placed directly upon it, then a label may be placed on the
article or its packaging. This practice is commonly termed “marking.”127
There is no absolute duty to mark. If a patent proprietor fails to mark in the
specified manner, however, then it may receive damages only for infringing acts that
occur after the infringer receives actual notice of infringement.128 Filing an
infringement lawsuit is considered to provide such actual notice. Less severely, a
patent owner may issue a specific charge of infringement, commonly by sending a
cease and desist letter to the infringer. The marking statute is said “to give patentees
the proper incentive to mark their products and thus place the world on notice of the
existence of the patent.”129
The marking statute does not apply in some situations. Obviously, if the patent
owner does not sell products that embody the patented invention, then there is no
obligation to mark. In addition, “[t]he law is clear that the notice provisions of
125 See generally Schechter & Thomas, supra, at § 9.2.5.
126 H.R. 1908, § 5(a); S. 1145, § 4(a).
127 See Schechter & Thomas, supra, at § 9.2.3.
128 It should be further appreciated that under 35 U.S.C. § 286, “no recovery shall be had for
any infringement committed more than six years prior to the filing of the complaint or
counterclaim for infringement in the action.”
129 Laitram Corp. v. Hewlett-Packard Co., 806 F. Supp. 1294, 1296 (E.D. La. 1992).
section 287 do not apply where the patent is directed to a process or method.”130
Because these types of patent concern inchoate behavior, rather than a discrete
physical product, the courts have reasoned that there is no tangible item on which to
place a patent marking.131
S. 1145 would somewhat modify patent damages law in situations where the
current marking statute does not apply. Under that proposal, where there is no
obligation to mark — either because the patent owner does not market the patented
product, the asserted patent is directed towards a process or method, or for some
other reason — “no recovery shall be had for any infringement committed more than
2 years prior to the filing of the complaint” unless the patent owner had provided
notice of infringement. If notice is provided, the patent owner may recover damages
for infringement for up to two years prior to such notice, as well as for infringing acts
committed after such notice.132
The amendments proposed by S. 1145 appear to support the same policy goal
as the marking statute — in particular, notice of the existence of patent rights to
interested parties — in circumstances where the marking statute does not currently
apply. No comparable provision appears in H.R. 1908.
Prior User Rights
S. 1145 would broaden the “first inventor defense” established by the American
Inventors Protection Act of 1999. As currently found at 35 U.S.C. § 273, an earlier
inventor of a “method of doing or conducting business” that was later patented by
another may claim a defense to patent infringement in certain circumstances. S. 1145
would allow the defense to apply as well to affiliates of the entity that qualifies for
the defense.133 No comparable provision appears in H.R. 1908.
The existing “first inventor defense” accounts for the complex relationship
between the law of trade secrets and the patent system. Trade secrecy protects
individuals from misappropriation of valuable information that is useful in
commerce. One reason an inventor might maintain the invention as a trade secret
rather than seek patent protection is that the subject matter of the invention may not
be regarded as patentable. Such inventions as customer lists or data compilations
have traditionally been regarded as amenable to trade secret protection but not to
patenting.134 Inventors might also maintain trade secret protection due to ignorance
130 American Med. Sys., Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).
131 See State Contracting & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1074 (Fed.
132 S. 1145, § 4(c).
133 S. 1145, § 4(d).
134 Restatement of Unfair Competition § 39.
of the patent system or because they believe they can keep their invention as a secret
longer than the period of exclusivity granted through the patent system.135
The patent law does not favor trade secret holders, however. Well-established
patent law provides that an inventor who makes a secret, commercial use of an
invention for more than one year prior to filing a patent application at the USPTO
forfeits his own right to a patent.136 This policy is based principally upon the desire
to maintain the integrity of the statutorily prescribed patent term. The patent law
grants patents a term of twenty years, commencing from the date a patent application
is filed.137 If the trade secret holder could make commercial use of an invention for
many years before choosing to file a patent application, he could disrupt this regime
by delaying the expiration date of his patent.
On the other hand, settled patent law principles established that prior secret uses
would not defeat the patents of later inventors.138 If an earlier inventor made secret
commercial use of an invention, and another person independently invented the same
technology later and obtained patent protection, then the trade secret holder could
face liability for patent infringement. This policy is based upon the reasoning that
once issued, published patent instruments fully inform the public about the invention,
while trade secrets do not. As between a subsequent inventor who patented the
invention, and thus had disclosed the invention to the public, and an earlier trade
secret holder who had not, the law favored the patent holder.
An example may clarify this rather complex legal situation. Suppose that
Inventor A develops and makes commercial use of a new manufacturing process.
Inventor A chooses not to obtain patent protection, but rather maintains that process
as a trade secret. Many years later, Inventor B independently develops the same
manufacturing process and promptly files a patent application claiming that
invention. In such circumstances, Inventor A’s earlier, trade secret use does not
prevent Inventor B from procuring a patent. Furthermore, if the USPTO approves
the patent application, then Inventor A faces infringement liability should Inventor
B file suit against him.
The American Inventors Protection Act of 1999 somewhat modified this
principle. That statute in part provided an infringement defense for an earlier
inventor of a “method of doing or conducting business” that was later patented by
another. By limiting this defense to patented methods of doing business, Congress
responded to the 1998 Federal Circuit opinion in State Street Bank and Trust Co. v.
Signature Financial Group.139 That judicial opinion recognized that business
135 David D. Friedman, “Some Economics of Trade Secret Law,” 5 Journal of Economic
Perspectives (1991), 61, 64.
136 35 U.S.C. § 102(b). See Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts,
137 35 U.S.C. § 154.
138 W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).
139 149 F.3d 1368 (Fed. Cir. 1998).
methods could be subject to patenting, potentially exposing individuals who had
maintained business methods as trade secrets to liability for patent infringement.
Again, an example may aid understanding of the first inventor defense. Suppose
that Inventor X develops and exploits commercially a new method of doing business.
Inventor X maintains his business method as a trade secret. Many years later,
Inventor Y independently develops the same business method and promptly files a
patent application claiming that invention. Even following the enactment of the
American Inventors Protection Act, Inventor X’s earlier, trade secret use would not
prevent Inventor Y from procuring a patent. However, should the USPTO approve
Inventor Y’s patent application, and should Inventor Y sue Inventor X for patent
infringement, then Inventor X may potentially claim the benefit of the first inventor
defense. If successful,140 Inventor X would enjoy a complete defense to infringement
of Inventor Y’s patent.
S. 1145 would somewhat expand the first inventor defense as it was established
in 1999. The defense currently applies to “the person who performed the acts
necessary to establish the defense . . . .”141 S. 1145 would also allow “any other entity
that controls, is controlled by, or is under common control” with that person to claim
entitlement to the first inventor defense.142
Post-Grant Review Proceedings
Pending legislation in the 110th Congress would introduce post-grant review
proceedings into U.S. patent law. Post-issuance review proceedings, which are
common in foreign patent regimes, are patent revocation proceedings that are usually
administered by authorities from the national patent office. Typically known as
“oppositions,” these proceedings often involve a wide range of potential invalidity
arguments and are conducted through adversarial hearings that resemble courtroom
Although the U.S. patent system does not currently include full-fledged post-
grant review proceedings in the manner of an opposition, the U.S. patent system has
incorporated a so-called reexamination proceeding since 1981. Under the
reexamination statute, any individual, including the patentee, a competitor, and even
the USPTO Director, may cite a prior art patent or printed publication to the USPTO.
If the USPTO determines that this reference raises a “substantial new question of
patentability” with respect to an issued patent, then it will essentially reopen
prosecution of the issued patent.
140 As presently codified at 35 U.S.C. § 273, the first inventor defense is subject to a number
of additional qualifications. First, the defendant must have reduced the infringing subject
matter to practice at least one year before the effective filing date of the application.
Second, the defendant must have commercially used the infringing subject matter prior to
the effective filing date of the patent. Finally, any reduction to practice or use must have
been made in good faith, without derivation from the patentee or persons in privity with the
141 35 U.S.C. § 273(b)(6).
142 S. 1145, § 4(d).
Traditional reexamination proceedings are conducted in an accelerated fashion
on an ex parte basis. Following the American Inventors Protection Act of 1999, an
inter partes reexamination allows the requester to participate more fully in the
proceedings through the submission of arguments and the filing of appeals. Either
sort of reexamination may result in a certificate confirming the patentability of the
original claims, an amended patent with narrower claims or a declaration of patent
Congress intended reexamination proceedings to serve as an inexpensive
alternative to judicial determinations of patent validity.143 Reexamination also allows
further access to the legal and technical expertise of the USPTO after a patent has
issued.144 However, some commentators believe that reexamination proceedings
have been employed only sparingly and question their effectiveness.145
Both the House and Senate bills propose an additional post-issuance proceeding
termed a “post-grant review proceeding,” which are similar in broad aspect but differ
on many significant details. The two bills provide that any person other than the
patent proprietor may commence this proceeding. Under H.R. 1908, the proceeding
may begin either within 12 months of the date the patent was issued or at any time
if the patent proprietor so consents.146 S. 1145 additionally allows the proceeding to
begin within 12 months after the challenger has received notice from the patent
holder alleging infringement, provided that the challenger establishes a “substantial
reason” that the “continued existence of the challenged claim causes or is likely to
cause the petitioner significant economic harm.”147
H.R. 1908 and S. 1145 afford the patent proprietor a single opportunity to
amend its patent during the post-grant review proceeding, with further opportunities
available with good cause shown. The USPTO would be required to reach a final
decision within one year of commencement of the proceeding, with an extension
possible of up to six months for good cause shown. Should the patent survive the
post-grant review proceeding, the individual who commenced the proceeding, along
with his privies, are barred in the future from raising issues that were previously aired
before the USPTO. The two bills also provide the USPTO Director with authority
to establish regulations to govern post-grant review proceedings.
The House and Senate bills vary with respect to reexamination proceedings. S.
143 Mark D. Janis, “Inter Partes Reexamination,” 10 Fordham Intellectual Property, Media
& Entertainment Law Journal (2000), 481.
144 Craig Allen Nard, “Certainty, Fence Building and the Useful Arts,” 74 Indiana Law
Journal (1999), 759.
145 See Schechter & Thomas, supra, at § 7.5.4.
146 H.R. 1908, § 6(b).
147 S. 1145, § 5(c)(1).
148 The term “inter partes” may be literally translated as “between parties,” and ordinarily
H.R. 1908 would augment them.150 Under the House bill, inter
partes reexaminations would be conducted by an administrative law judge. In
addition, S. 1145 would eliminate the ability of entities other than the patent holder
itself from initiating an ex parte reexamination proceeding.151 H.R. 1908 does not
address ex parte reexaminations.
Some analysts have expressed concern that potential requesters are discouraged
from commencing inter partes reexamination proceedings due to a statutory
provision that limits their future options. In order to discourage abuse of these
proceedings, the inter partes reexamination statute provides that third-party
participants may not later assert that a patent is invalid “on any ground that [they]
raised or could have raised during the inter partes reexamination proceedings.”152
Some observers believe that this potential estoppel effect disinclines potential
requesters from use of this post-issuance proceeding. In apparent response to this
concern, H.R. 1908 would delete the phrase “or could have raised” from the
statute.153 As a result, inter partes reexamination requesters would be limited only
with respect to arguments that they actually made before the USPTO.
Many observers have called for the United States to adopt a more effective post-
grant administrative revocation system in order to provide more timely, lower cost,
and more efficient review of issued patents.154 Such a system could potentially
improve the quality of issued patents by weeding out invalid claims. It might also
encourage innovative firms to review issued patents soon after they are granted,
thereby increasing the opportunity for technology spillovers.155 However, concerns
have arisen over oppositions because they too may be costly, complex, and prone to
abuse as a means for harassing patent owners.156 A successful post-grant review
proceeding will require a balancing of these issues.
implies proceedings that involve parties with adverse interests. In contrast, the term “ex
parte” generally means a proceeding commenced by a single party, without argument by
persons who possess competing positions. As used in the context of USPTO proceedings,
an inter partes reexamination allows both the patent challenger and the patent owner to
participate in the USPTO proceeding. In an ex parte reexamination, the patent challenger
may initiate the proceeding and respond to the patent owner’s preliminary statement, but
may not further participate in the ex parte reexamination.
149 S. 1145, § 5(b).
150 H.R. 1908, § 6(b).
151 S. 1145, § 5(a).
152 35 U.S.C. § 315(c).
153 H.R. 1908, § 6(d).
154 See National Research Council of the National Academies, A Patent System for the 21st
Century (2004), 96.
155 Ibid. at 103.
156 See Mark D. Janis, “Rethinking Reexamination: Toward a Viable Administrative
Revocation System for U.S. Patent Law,” 11 Harvard Journal of Law and Technology
Publication of Pending Applications
Until recent years, the U.S. patent system maintained pending patent
applications in secrecy. The first moment that the public would become aware of the
existence of a U.S. patent application was the day the USPTO formally allowed it to
issue as a granted patent. This regime advantaged patent applicants because it
allowed them to understand exactly what the scope of any allowed claims might be
prior to disclosing an invention. Thus, if the applicant was able to maintain the
invention that was subject to a patent application as a trade secret, then he could
choose between obtaining the allowed patent claims and trade secret status. In
addition, because the invention was not disclosed prior to the award of formal patent
rights, unscrupulous competitors were discouraged from copying the invention.
However, this secrecy regime has been perceived as imposing costs as well.
Others might well engage in duplicative research efforts during the pendency of
patent applications, unaware that an earlier inventor had already staked a claim to that
technology. This arrangement also allowed inventors to commence infringement
litigation on the very day a patent issued, without any degree of notice to other
members of the technological community.157
Industry in the United States possessed one mechanism for identifying pending
U.S. patent applications. Most foreign patent regimes publish all pending patent
applications approximately 18 months after they have been filed.158 As a result,
savvy firms in the United States could review pending applications filed before
foreign patent offices, and make an educated guess as to the existence of a
corresponding U.S. application. This effort was necessarily inexact, however,
particularly as some inventors either lacked the resources, or made the strategic
decision, not to obtain patent rights outside the United States.
In enacting the American Inventors Protection Act of 1999, Congress for the
first time introduced the concept of pre-grant publication into U.S. law. Since
November 29, 2000, U.S. patent applications have been published 18 months from
the date of filing, with some exceptions. The most significant of these exceptions
applies where the inventor represents that he will not seek patent protection abroad.
In particular, if an applicant certifies that the invention disclosed in the U.S.
application will not be the subject of a patent application in another country that
requires publication of applications 18 months after filing, then the USPTO will not
publish the application.159 As a result, inventors who do not wish to seek foreign
patent rights retain the possibility of avoiding pre-grant publication.
H.R. 1908 and S. 1145 would further modify the U.S. pre-grant publication
system, but the would do so in different ways. Under S. 1145, all pending
applications to be published approximately 18 months after they are filed. Under
157 Schechter & Thomas, supra, at § 7.2.6.
158 John C. Todaro, “Potential Upcoming Changes in U.S. Patent Laws: the Publication of
Patent Applications,” 36 IDEA: Journal of Law and Technology (1996), 309.
159 35 U.S.C. § 122(b).
H.R. 1908, domestic-only applications would be published “three months after a
second [USPTO] office action” or 18 months after filing, whichever is the later
date.160 The House bill would apparently allow the applicant some time to assess
whether the USPTO would grant a patent with claims of satisfactory scope prior to
disclosing the invention publicly. As a result, although both bills would eliminate
the possibility of opting out of pre-grant publication by certifying that a patent will
be sought only in the United States, the precise timing of the publication of those
applications potentially differs.161
Both H.R. 1908 and S. 1145 would expand the ability of members of the public
to submit information to the USPTO that is pertinent to pending applications. Under
current law, interested individuals may enter a protest against a patent application.
The protest must specifically identify the application and be served upon the
applicant. The protest must also include a copy and, if necessary, an English
translation, of any patent, publication or other information relied upon. The protester
also must explain the relevance of each item.162
Protest proceedings have traditionally played a small role in U.S. patent practice.
Until Congress enacted the American Inventors Protection Act of 1999, the USPTO
maintained applications in secrecy. Therefore, the circumstances in which members
of the public would learn of the precise contents of a pending patent application were
relatively limited. With the USPTO commencing publication of some pending patent
applications, protests would seem far more likely. Seemingly aware of this
possibility, the 1999 Act provided that the USPTO shall “ensure that no protest or
other form of pre-issuance opposition ... may be initiated after publication of the
application without the express written consent of the applicant.”163 Of course, the
effect of this provision is to eliminate the possibility of protest in exactly that class
of cases where the public is most likely to learn of the contents of a pending
Through rulemaking, the USPTO has nonetheless established a limited
mechanism for members of the public to submit information they believe is pertinent
to a pending, published application. The submitted information must consist of
either a patent or printed publication, and it must be submitted within two months of
the date the USPTO published the pending application. Nondocumentary
information that may be relevant to the patentability determination, such as sales or
public use of the invention, will not be considered.164 In addition, because Congress
stipulated that no protest or pre-grant opposition may occur absent the consent of the
160 The term “office action” refers to a USPTO examiner’s official communication with a
patent applicant. See 35 U.S.C. § 132.
161 S. 1145, § 7(a); H.R. 1908, § 9(a).
162 37 C.F.R. § 1.291.
163 35 U.S.C. § 122(c).
164 37 C.F.R. § 1.99.
patent holder, the USPTO has explained that it will not accept comments or
explanations concerning the submitted patents or printed publications. If such
comments are attached, USPTO staff will redact them before the submitted
documents are forwarded to the examiner.165
The proposed legislation would augment the possibility for pre-issuance
submissions. Under both the House and Senate bills, any person may submit patent
documents and other printed publications to the USPTO for review. Such prior art
must be submitted within the later date of either (1) the date the USPTO issues a
notice of allowance to the patent applicant; or (2) either six months after the date of
pre-grant publication of the application, or the date of the rejection of any claim by
the USPTO examiner. Such a submission must include “a concise description of the
asserted relevance of each submitted document.”166
Most observers agree that ideally, the USPTO should have access to all pertinent
information when making patentability determinations. A more expansive pre-
issuance submission policy may allow members of the public to disclose relevant
patents and other documents that the USPTO’s own searchers may not have revealed,
thereby leading to more accurate USPTO decision making. On the other hand,
lengthy pre-issuance submissions may merely be repetitive of the USPTO’s own
search results, but still require extensive periods of examiner review that might
ultimately delay examination. The pending proposals attempt to balance these
concerns by expanding existing opportunities for post-publication submissions, but
limiting the timing and nature of those submissions so as to prevent undue burdens
upon the USPTO and patent applicants.
Tax Planning Method Patents
Congressional interest in the recently recognized phenomenon of patented tax
planning methods has been evidenced by proposed legislation in both the House and
Senate.167 These legislative initiatives responded to the issuance and enforcement of
patents on methods that individuals and enterprises might use in order to minimize
their tax obligations.168 H.R. 1908 proposes to introduce language into the Patent Act
stipulating that “[a] patent may not be obtained for a tax planning method.”169 No
analogous provision appears in S. 1145.
Tax planning method patents have been the subject of a spirited debate. Some
observers believe that such patents negatively impact social welfare. According to
165 U.S. Dept. of Commerce, U.S. Patent & Trademark Off., Manual of Patent Examining
Procedure § 1134.01 (8th ed. May 2004).
166 S. 1145, § 7(b); H.R. 1908, § 9(b).
167 See CRS Report RL342219, Patents on Tax Strategies: Issues in Intellectual Property
and Innovation, by John R. Thomas.
168 See, e.g., Jo-el J. Meyer, “Proliferation of Retirement Plan Patents Poses Problems for
Practitioners,” Patent, Trademark, & Copyright Journal (BNA June 8, 2007), 186; Wealth
Transfer Group LLC v. Rowe, D. Conn., No. 3:06cv00024 (AWT), filed January 6, 2006.
169 H.R. 1908, § 10.
some experts, tax planning method patents may limit the ability of taxpayers to
utilize provisions of the tax code, interfering with congressional intent and leading
to distortions in tax obligations.170 Others assert that tax planning method patents
potentially complicate legal compliance by tax professionals and taxpayers alike.171
Still others believe that the patent system should not provide incentives for
individuals to develop new ways to reduce their tax liability.172
Some commentators explain that patents concerning the broader category of
“business methods” have been obtained and enforced for many years.173 Legislation
enacted in 1999 that accounted expressly for patents claiming “a method of doing or
conducting business” arguably approved of such patents.174 In addition, some
observers believe that tax planning method patents present a positive development,
potentially improving the public disclosure of tax shelters for the attention of
Congress and federal tax authorities.175 They also assert that many kinds of patents,
on subject matter ranging from automobile seat belts to airplane navigation systems,
potentially involve legal compliance.176
Both H.R. 1908 and S. 1145 would reform the venue provision that applies to
patent infringement cases in federal court.177 The requirement of venue complements
the more fundamental requirement of jurisdiction in federal litigation. In particular,
venue addresses the question of which court, out of those that possess personal and
170 See Letter from Jeffrey R. Hoops, Chair, American Institute of Certified Public
Accountants Tax Executive Committee, to Members of Congress (February 28, 2007)
(available at [http://tax.aicpa.org/Resources/Tax+Patents/AICPA+Urges+Congress+to
171 See Letter from Kimberly S. Blanchard, Chair, New York State Bar Association Tax
Section, to Members of Congress (August 17, 2006) (available at [http://www.nysba.org/
Content/ContentGr oups/Section_Informa tion1/T a x_Section_Reports/1115rpt.PDF]).
172 See William A. Drennan, “The Patented Loophole: How Should Congress Respond to
This Judicial Invention?”, 59 Florida Law Review (2007), 229.
173 See Andrew F. Palmieri & Corinne Marie Pouliquen, “A Primer on Business Method
Patents: What You Need to Know for Your Real Estate Practice,” 21 Probate and
Property (May/June 2007), 26.
174 First Inventor Defense Act of 1999, P.L. 106-113, § 4302, 113 Stat. 1501 (codified at 35
U.S.C. § 273 (2006)).
175 Drennan, supra, at 328 (noting this argument).
176 Stephen T. Schreiner & George Y. Wang, “Discussions on Tax Patents Have Lost
Focus,” IP Law 360 (available at [http://www.hunton.com]).
177 In addition, S. 1145 would alter the venue of suits where the USPTO is a party from the
District Court for the District of Columbia to the District Court for the Eastern District of
Virginia. S. 1145, § 8(c).
subject matter jurisdiction, may most conveniently hear the specific lawsuit in
Congress has enacted a specialized venue statute that applies only to patent
cases. 28 U.S.C. § 1400(b) provides that in patent litigation, venue is proper either:
(1) in the judicial district where the defendant resides, or (2) where the defendant has
committed acts of infringement and has a regular and established place of business.
An important question under this provision is where a corporation is deemed to
“reside.” Prior to 1988, a corporation was viewed as residing in its state of
incorporation.179 Commentators have explained that during this period, the patent
venue statute was fairly restrictive, tending to move infringement litigation into the
defendant’s seat of operations.180
Congressional amendments subsequently liberalized venue concepts in patent
litigation. In 1988, Congress adopted a new definition of “reside” as it applies to
venue for corporate defendants.181 Under the new definition, a corporation is
presumed to reside in any judicial district to which it could be subject to personal
jurisdiction at the time the litigation commences. Congress codified this change
in a separate provision found at 28 U.S.C. § 1391. Although there is no evidence
that Congress contemplated that these reforms would hold consequences for the
specialized patent venue statute, the Federal Circuit nonetheless held that this
amendment should also be read into § 1400(b).182
The result of the 1988 amendments has been significant for corporate
defendants, which constitute the majority of defendants in patent litigation. Although
§ 1400(b) still governs venue in patent cases, few, if any plaintiffs rely upon the
restrictive second prong of that section. Instead they base venue upon the
“residence” requirement of the first prong — which now is entirely conterminous
with personal jurisdiction, and which for larger corporations is likely to include every
federal district in the country. For corporate defendants, then, the venue statute has
essentially become superfluous, for the same standards governing personal
jurisdiction also dictate whether a court may provide an appropriate venue or not.
Some observers allege that the liberal venue statute promotes forum shopping,
allowing patent proprietors to bring suit in courts that they believe favor patent
owners over accused infringers. One such “magnet jurisdiction” is said to be the
rural Eastern District of Texas, and in particular the Marshall, Texas federal court.
According to one account, many observers “wonder how an East Texas town of
178 See Wachovia Bank v. Schmidt, 546 U.S. 303 (2006).
179 See Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (1957).
180 See Schechter & Thomas, supra, at § 10.1.3.
181 Judicial Improvements and Access to Justice Act, P.L. 100-702, tit. X, § 1013(a), 102
Stat. 4642, 4669 (1988).
182 VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990).
to harbor an oversized share of intellectual property disputes.”183 In addition,
reportedly “many of the local lawyers who once specialized in personal injury cases
are turning their attention to intellectual property law.”184 Others believe that the
existence of a single appellate court for patent cases, the Federal Circuit, minimizes
forum shopping concerns, and that certain district courts attract patent cases due to
their expertise and timeliness, rather than an inherent favoritism for patent holders.
S. 1145 would amend § 1400(b) by providing for venue (1) in the judicial
district where either party resides, or (2) where the defendant has committed acts of
infringement and has a regular and established place of business. S. 1145 further
stipulates that, notwithstanding § 1391, for purposes of venue in patent cases “a
corporation shall be deemed to reside in the judicial district in which the corporation
has its principal place of business or in the State in which the corporation is
incorporated.”185 The amendments contemplated by H.R. 1908 are more complex,
but in essence call for venue (1) where the defendant has its principal place of
business, (2) where the defendant has committed a substantial portion of its acts of
infringement and has an established physical facility, (3) if the plaintiff is an
institution of higher education, individual, or small business, the plaintiff’s residence,
or (4) the place of the plaintiff’s established physical facility devoted to research,
development, or manufacturing.186
Interlocutory Claim Construction Appeals
Pending legislation would allow a litigant to pursue an interlocutory appeal187
of a patent claim construction order to the Court of Appeals for the Federal Circuit.
This provision appears to be motivated by the recognition that the interpretation of
a patent claims — a process that in large measure determines the scope of the patent
owner’s proprietary rights — is the most fundamental inquiry that occurs during
patent litigation.188 In addition, numerous observers have perceived the Federal
Circuit to have a high reversal rate of claim interpretations by the district courts.189
Because claim construction is commonly the central focus of a patent trial, the
Federal Circuit’s reversal of that construction often requires the district court to retry
183 Allen Pusey, “Marshall Law: Patent Lawyers Flood to East Texas Court for Its Expertise
and ‘Rocket Docket’,” Dallas Morning News (March 26, 2006), 1D.
185 S. 1145, § 8(a).
186 H.R. 1908, § 11(a).
187 An “interlocutory appeal” is an appeal that occurs before the trial court’s final ruling on
the entire case. See 28 U.S.C. § 1292(b) (2006). In this context, the interlocutory appeal
concerning claim construction issues would occur before the court decides additional issues,
such as whether there has been an infringement and the amount of damages to be awarded
to the patent owner.
188 See Joseph Scott Miller, “Enhancing Patent Disclosure for Faithful Claim Construction,”
189 See Kimberly A. Moore, “Are District Court Judges Equipped to Resolve Patent Cases?,”
the entire case. As patent litigation is a notoriously lengthy and costly exercise, some
observers believe that the current system is overly expensive and inefficient.190
Some commentators have opined that allowing an immediate appeal of patent
claim construction orders would allow Federal Circuit review before the litigants are
put to the full expense of a trial in federal district court.191 Ordinarily, litigants may
appeal only “final decisions” from the district courts.192 Although federal law
currently allows for a review of an intermediate matter at trial193 — a so-called
interlocutory appeal — the Federal Circuit has declined to accept such appeals for
routine claim interpretation cases.194 Both H.R. 1908 and S. 1145 would expressly
authorize such interlocutory appeals.195
Not everyone agrees that routine allowance of interlocutory appeals of claim
construction orders would expedite patent litigation. In a letter of June 13, 2007,
addressed to Senators Patrick Leahy and Arlen Specter, Federal Circuit Chief Judge
Paul Michel stated that should this provision be enacted, “I would expect an
interlocutory appeal in virtually every patent infringement case as soon as a claim
construction order issues.”196 In his view, this situation would lead to “extended
delays” that “would be intolerable from the standpoint of corporate litigants.”197
Mandatory Search Reports
Under current law, inventors who file a patent application at the USPTO are
required to disclose earlier patents, journal articles, and other prior art references of
which they are aware, and that they believe are material to the determination of
whether their invention should be patented or not.198 However, patent applicants are
not required affirmatively to conduct a literature search in order to identify relevant
prior art references.199 Although some inventors probably complete a prior art search
as a matter of due diligence prior to preparing and filing a patent application, this
effort is not obligatory. As part of the prosecution process, USPTO examiners
190 See Gwendolyn Dawson, “Matchmaking in the Realm of Patents: A Call for the Marriage
of Patent Theory and Claim Construction Procedure,” 79 Texas Law Review (2001), 1257.
191 See Kyle J. Fiet, “Restoring the Promise of Markman: Interlocutory Patent Appeals
Reevaluated Post-Phillips v. AWH Corp.,” 84 North Carolina Law Review 1291 (2006).
192 28 U.S.C. § 1291.
193 28 U.S.C. § 1292.
194 See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1479 (Fed. Cir .1998) (en banc)
(Newman, J., additional views).
195 S. 1145, § 8(b); H.R. 1908, § 11(a).
196 Letter of Chief Judge Paul R. Michel to Senators Patrick Leahy and Arlen Specter (June
198 37 C.F.R. § 1.56.
199 Schechter & Thomas, supra, at § 7.2.1.
conduct literature searches in order to identify the prior art that most closely relates
to the claimed invention.
S. 1145 would alter the current rule by requiring that “applicants submit a search
report and other information and analysis relevant to patentability.”200 Applicants
that qualify as “micro-entities” — individuals, groups of individuals, small
businesses, or non-profit organizations — would be exempt from this requirement.
H.R. 1908 is worded similarly, but authorizes the USPTO to impose a search report
requirement rather than making such a search mandatory.201
Residency of Federal Circuit Judges
Under current law, each Federal Circuit jurist must “reside within fifty miles of
the District of Columbia” while in active service.202 S. 1145 proposes to eliminate
this requirement.203 No comparable provision appears in H.R. 1908.
Liberalization of the residency requirement would potentially broaden the pool
of individuals eligible for service on the Federal Circuit. This reform may also be
appropriate for a court that enjoys jurisdiction over patent appeals that arise across
the United States.204 No other federal appellate court is subject to a similar residency
requirement.205 On the other hand, because the Federal Circuit courthouse is located
in Washington, DC, the current residency rule might promote greater interaction
among its jurists.
The administrative process of obtaining a patent from the USPTO has
traditionally been conducted as an ex parte procedure. Stated differently, patent
prosecution involves only the applicant and the USPTO. Members of the public, and
in particular the patent applicant’s marketplace competitors, do not participate in
patent acquisition procedures.206 As a result, the patent system relies to a great extent
upon applicant observance of a duty of candor and truthfulness towards the USPTO.
An applicant’s obligation to proceed in good faith may be undermined, however,
by the great incentive applicants might possess not to disclose, or to misrepresent,
information that might deleteriously impact her prospective patent rights. The patent
200 S. 1145, § 11.
201 H.R. 1908, § 12(a).
202 28 U.S.C. § 44(c).
203 S. 1145, § 10.
204 28 U.S.C. § 1295(a)(1).
205 Marcia Coyle, “Court’s Residency Rule May Fall: Federal Circuit Rule Limits Bench
Talent,” 29 National Law Journal no. 44 (July 9, 2007), 1.
206 35 U.S.C. § 122(a) (stating the general rule that “applications for patents shall be kept in
confidence by the Patent and Trademark Office and no information concerning the same
given without authority of the applicant ....”).
law therefore penalizes those who stray from honest and forthright dealings with the
USPTO. Under the doctrine of “inequitable conduct,” if an applicant intentionally
misrepresents a material fact or fails to disclose material information, then the
resulting patent will be declared unenforceable.207 Two elements must exist before
a court will decide that the applicant has engaged in inequitable conduct. First, the
patentee must have misrepresented or failed to disclose material information to the
USPTO in the prosecution of the patent.208 Second, such nondisclosure or
misrepresentation must have been intentional.209
During patent infringement litigation, an accused infringer has the option of
asserting that the plaintiff’s patent is unenforceable because it was procured through
inequitable conduct. Concerns have arisen that charges of inequitable conduct have
become routine in patent cases. As one commentator explains:
The strategic and technical advantages that the inequitable conduct defense
offers the accused infringer make it almost too attractive to ignore. In addition
to the potential effect on the outcome of the litigation, injecting the inequitable
conduct issue into patent litigation wreaks havoc in the patentee’s camp. The
inequitable conduct defense places the patentee on the defensive, subjects the
motives and conduct of the patentee’s personnel to intense scrutiny, and provides210
an avenue for discovery of attorney-client and work product documents ....
As the Federal Circuit put it, “the habit of charging inequitable conduct in almost211
every major patent case has become an absolute plague.” Other observers believe
that because inequitable conduct requires an analysis of the knowledge and intentions
of the patent applicants, the doctrine may also be contributing disproportionately to
the time and expense of patent litigation.212
Due to these perceived burdens upon patent litigation, some commentators have213
proposed that the inequitable conduct defense be eliminated. Others believe that
inequitable conduct is necessary to ensure the proper functioning of the patent
system. As the Advisory Commission on Patent Law Reform explained in its 1992
207 Glaverbel Societe Anonyme v. Northlake Mktg. & Supply Inc., 45 F.3d 1550 (Fed. Cir.
208 Heidelberger Druckmaschinen AG v. Hantscho Comm’l Prods., Inc., 21 F.3d 1068 (Fed.
209 Jazz Photo Corp. v. U.S. Int’l Trade Comm’n, 264 F.3d 1094 (Fed. Cir. 2001).
210 John F. Lynch, “An Argument for Eliminating the Defense of Patent Unenforceability
Based on Inequitable Conduct,” 16 American Intellectual Property Law Association
Quarterly Journal (1988), 7.
211 Burlington Indus., Inc. v. Dayco Corp., 849 F.2d 1418 (Fed. Cir. 1988).
212 See, e.g., Scott D. Anderson, “Inequitable Conduct: Persistent Problems and
Recommended Resolutions,” 82 Marquette Law Review (1999), 845.
213 Lynch, supra, at 7.
Some mechanism to ensure fair dealing between the patentee, public, and the
Federal Government has been part of the patent system for over 200 years. In its
modern form, the unenforceability defense provides a necessary incentive for
patent applicants to engage in fair and open dealing with the [USPTO] during the
ex parte prosecution of patent applications, by imposing the penalty of forfeiture
of patent rights for failure to so deal. The defense is also considered to be an
essential safeguard against truly fraudulent conduct before the [USPTO].
Finally, the defense provides a means for encouraging complete disclosure of
information relevant to a particular patent application .... Thus, from a policy
perspective, the defense of unenforceability based upon inequitable conduct is214
desirable and should be retained.
Both H.R. 1908 and S. 1145 would for the first time codify the basic parameters
of the inequitable conduct, although their approaches somewhat differ. Under H.R.
or another person with a duty of disclosure to the USPTO intentionally misrepresents
or fails to disclose material information, such that the USPTO would “have made a215
prima facie finding of unpatentability.” S. 1145 instead explains that information
is considered material if it is not cumulative to evidence already before the examiner,
and “a reasonable patent examiner would consider such information important in
deciding whether to allow the patent application.”216 Both bills set the “clear and
convincing evidence” standard for proving that inequitable conduct occurred.
Modification of the Best Mode Requirement
Currently, inventors are required to “set forth the best mode contemplated by the217
inventor of carrying out his invention.” Failure to disclose the best mode known
to the inventor is a ground for invalidating an issued patent. The courts have
established a two-part standard for analyzing whether an inventor disclosed her best
mode in a particular patent. The first inquiry was whether the inventor knew of a
way of practicing the claimed invention that she considered superior to any other.
If so, then the patent instrument must identify, and disclose sufficient information to218
enable persons of skill in the art to practice that best mode.
Proponents of the best mode requirement have asserted that it allows the public
to receive the most advantageous implementation of the technology known to the
inventor. This disclosure becomes part of the patent literature and may be freely
reviewed by those who wish to design around the patented invention. Absent a best
mode requirement, some observers say, patent proprietors may be able to maintain
the preferred way of practicing their inventions as a trade secret. Members of the
214 1992 Advisory Commission, supra, at 114.
215 H.R. 1908, § 12(b). This language appears similar to that of current USPTO regulations
governing inequitable conduct. See 37 C.F.R. § 1.56(b).
216 S. 1145, § 12. This language appears similar to that of a predecessor version of USPTO
regulations governing inequitable conduct, 37 C.F.R. § 1.56(b), prior to their amendment
in 1992. See Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1364 (Fed. Cir. 2007).
217 35 U.S.C. § 112.
218 See, e.g., Chemcast Corp. v. Arco Industries Corp. 913 F.2d 923 (Fed. Cir. 1990).
public are also said to be better able to compete with the patentee on equal footing
after the patent expires.219
The best mode requirement has encountered severe criticism in recent years,
however.220 For example, a 1992 Presidential Commission recommended that
Congress eliminate the best mode requirement. The Commission reasoned that
patents also are statutorily required to disclose “the manner and process of making
and using [the invention], in such full, clear, concise, and exact terms as to enable
any person skilled in the art ... to make and use the same.”221 This “enablement”
requirement was believed to provide sufficient information to achieve the patent
law’s policy goals.222
The Commission further stated that the best mode requirement leads to increases
in the costs and complexity of patent litigation. As the Commission explained:
The disturbing rise in the number of best mode challenges over the past 20 years
may serve as an indicator that the best mode defense is being used primarily as
a procedural tactic. A party currently can assert failure to satisfy the best mode
requirement without any significant burden. This assertion also entitles the party
to seek discovery on the “subjective beliefs” of the inventors prior to the filing
date of the patent application. This broad authority provides ample opportunity
for discovery abuse. Given the fluidity by which the requirement is evaluated
(e.g., even accidental failure to disclose any superior element, setting, or step can
negate the validity of the patent), and the wide ranging opportunities for
discovery, it is almost certain that a best mode challenge will survive at least223
initial judicial scrutiny.
The Commission further reasoned that the best mode at the time of filing is unlikely
to remain the best mode when the patent expires many years later.224 Because many
foreign patent laws include no analog to the best mode requirement, inventors based
overseas have also questioned the desirability of the best mode requirement in U.S.
Although legislation introduced in the 109th Congress proposed the elimination
of the best mode requirement,225 H.R. 1908 takes a different approach. Under this
proposal the best mode requirement continues to apply to all patents, but it no longer
forms the basis for a defense to a charge of patent infringement during enforcement
219 See Dale L. Carlson et al., “Patent Linchpin for the 21st Century? Best Mode Revisited,”
220 See, e.g., Steven B. Walmsley, “Best Mode: A Plea to Repair or Sacrifice This Broken
Requirement of United States Patent Law,” 9 Michigan Telecommunications and
Technology Law Review (2002), 125.
221 35 U.S.C. § 101.
222 1992 Advisory Commission Report, supra, at 102-03.
223 Ibid at 101.
224 Ibid at 102-03.
225 H.R. 2795, § 4(d) (Chairman’s Draft Substitute of July 26, 2005).
litigation or post-grant review proceedings.226 Compliance with the best mode
requirement would remain subject to review by USPTO examiners during the initial
prosecution of a patent, although USPTO rejection of applications based upon failure
to comply with the best mode requirement is reportedly a rare circumstance.227 No
analogous provision appears in S. 1145.
USPTO Rulemaking Authority
Under current law, the USPTO enjoys certain rulemaking authority. The
USPTO may establish regulations that “govern the conduct of proceedings” before
it, for example, as well as regulations that “govern the recognition and conduct” of
patent attorneys.228 Both H.R. 1908 and S. 1145 further address USPTO rulemaking
S. 1145 proposes that the USPTO be granted the authority “to set or adjust by
rule any fee established or charged by the Office” under certain provisions of the
patent and trademark laws.229 This proposal appears to provide the USPTO with
greater flexibility to adjust its fee schedule absent congressional intervention.
In contrast, under H.R. 1908, the USPTO Director would be allowed to
“promulgate regulations to ensure the quality and timeliness of applications and their
examination, including specifying circumstances under which an application for
patent may claim the benefit under sections 120, 121 and 365(c) of the filing date of
a prior filed application for patent.”230 H.R. 1908 further stipulates that this
amendment “clarifies the scope of power granted to the [USPTO]” under existing
The language of the House bill appears to be motivated at least in part by current
USPTO efforts to limit the availability of so-called continuation applications via
regulation. Continuation applications essentially allow inventors to re-file previously
rejected patent applications in order to pursue further prosecution with a USPTO
examiner.232 The filing of a patent application effectively allows two formal
communications, termed “Office Actions,” with a USPTO examiner. Agreement
often cannot be reached by this point, however, leaving the applicant with only the
226 H.R. 1908, § 13.
227 Jerry R. Selinger, “In Defense of “Best Mode”: Preserving the Benefit of the Bargain for
the Public, 43 Catholic University Law Review (1994), 1099 (“Failure to comply with best
mode . . . is not something an examiner normally can evaluate when reviewing the
application . . . .”).
228 35 U.S.C. § 2(b)(2). It should be appreciated that “Congress has not vested the [USPTO]
with any general substantive rulemaking power . . . .” Cybor Corp. v. FAS Techs, Inc., 138
F.3d 1448, 1479 (Fed. Cir. 1998) (en banc) (Newman, J., additional views).
229 S. 1145, § 9(a).
230 H.R. 1908, § 12(a).
231 Ibid. at § 12(b).
232 35 U.S.C. § 120.
alternatives of abandonment of patent protection or the filing of an appeal. By filing
a continuation application, an applicant essentially purchases additional time for
dialogue between the applicant and examiner.
The use of continuation applications is commonplace in U.S. patent practice.
Applicants not infrequently file one or more continuing applications based upon an
earlier filed “patent” application. Many patents have issued based upon chains of
continuation applications involving a parent, grandparent, and even more remote
Continuation applications are said to allow applicants to more accurately claim
a previously disclosed invention without the necessity of an appeal.233 Some
commentators believe they are subject to abuse, however. Under this view,
continuation practice introduces delay and uncertainty into the patent acquisition
process. In particular, applicants are said to use a chain of continuation applications
in order to gain advantages over competitors by waiting to see what product the
competitor will make, and then drafting patent claims that cover that product.
Continuation practice is also said to have led to long delays in the issuance of a
patent in order to surprise an established industry, a process known as “submarine
The USPTO recently promulgated rules that would limit the number of
continuation applications that an applicant could file as a matter of right. Beyond this
limit, further continuation applications could only be filed upon a particular showing
of need.235 Criticisms of these rules resulted in legal challenges before the U.S.
District Court for the Eastern District of Virginia. The result was the October 31,
2007, order in Tafas v. Dudas, that issued a preliminary injunction against the
USPTO.236 Although this ruling is temporary in nature, its immediate impact is that
the USPTO may not implement its rules until the court makes a final determination.
The Tafas v. Dudas litigation is ongoing at the time of the publication of this report.
Late USPTO Filings
S. 1145 would also allow the USPTO Director to accept filings in patent and
trademark matters made after the applicable statutory deadline, provided that the
tardy applicant “files a petition within 30 days after such deadline showing, to the
233 Schechter & Thomas, supra, at § 7.2.4.
234 Mark A. Lemley & Kimberly A. Moore, “Ending Abuse of Patent Continuations,” 84
Boston University Law Review (2004), 63.
235 See Department of Commerce, USPTO, “Changes to Practice for Continuing
Applications, Requests for Continued Examination Practice, and Applications Containing
Patentably Indistinct Claims,” 71 Federal Register 48 (January 3, 2006).
236 The district court’s opinion resulted from two separate lawsuits, Tafas v. Dudas, Case
No. 1:07cv846 (E.D. Va.), and Smithkline Beecham Corp. v. Dudas, Case No. 1:07cv1008
(E.D. Va.), that were consolidated.
satisfaction of the Director, that the delay was unintentional.”237 Both the patent and
trademark statutes require the individual to complete certain filings by specified time
limits in order to obtain intellectual property rights, object to rights granted to others,
or for other reasons.238 These statutes often, but not always, provide for USPTO
acceptance of late filings upon a special showing by the applicant.239 S. 1145 appears
to provide a general statutory provision for late filings that would supplement the
current, more narrowly targeted provisions. No analogous provision appears in H.R.
Check Imaging Methods
S. 1145 proposes to limit the remedies available for patent infringement with
respect to a “financial institution” that uses a “check collection system.”240 In
particular, in such circumstances the patentee may not commence a civil action
against the financial institution, and is not eligible to receive damages, attorney fees,
or an injunction. No comparable provision appears in H.R. 1908.
Section 15 of S. 1145 would address the collection of fees by the USPTO, as
well as the disposition of such fees. USPTO funding largely derives from the fees
it charges to patent and trademark applicants, as well as other entities that interact
with the agency.241 Since 1990, however, Congress has not allocated all of the fees
that the USPTO has collected towards the operation of that agency. Reportedly over
$750 million in USPTO fees have been directed towards other government242
Congress has expressed interest in the controversial issue of USPTO fee
diversion for several years. In the 109th Congress, legislation introduced before both243
the House and Senate would have addressed USPTO fee diversion. S. 1145 would
establish a “USPTO Revolving Fund” consisting of fees deposited with the USPTO.
The amount deposited in the fund would in turn be available for the USPTO to spend
in support of that agency’s operations. The USPTO would be responsible for
notifying the House and Senate Appropriation Committees of its funds and
ex penditures. 244
237 S. 1145, § 13.
238 See, e.g., 35 U.S.C. § 133 (stating time limits for prosecuting a patent application).
239 See, e.g., 35 U.S.C. § 156(d)(1) (stating a 60-day filing period with no exceptions).
240 S. 1145, § 14.
241 See Figueroa v. United States, 466 F.3d 1023, 1027-28 (Fed. Cir. 2006).
242 See Intellectual Property Owners, “Adequate Funding for the USPTO and Ending Fee
Diversion” (available at [http://www.ipo.org]).
243 See S. 1020, H.R. 2791.
244 S. 1145, § 15.
Pending legislation introduced in the 110th Congress arguably would work the
most sweeping reforms to the U.S. patent system since the nineteenth century.
However, many of these proposals, such as pre-issuance publication, prior user
rights, and oppositions, have already been implemented in U.S. law to a more limited
extent. These and other proposed modifications, such as the first-inventor-to-file
priority system and elimination of the best mode requirement, also reflect the
decades-old patent practices of Europe, Japan, and our other leading trading partners.
As well, many of these suggested changes enjoy the support of diverse institutions,
including the Federal Trade Commission, National Academies, economists, industry
representatives, attorneys, and legal academics.
Other knowledgeable observers are nonetheless concerned that certain of these
proposals would weaken the patent right, thereby diminishing needed incentives for
innovation. Some also believe that changes of this magnitude, occurring at the same
time, do not present the most prudent course for the patent system. Patent reform
therefore confronts Congress with difficult legal, practical, and policy issues, but also
with the apparent possibility for altering and potentially improving the legal regime
that has long been recognized as an engine of innovation within the U.S. economy.
H.R. 1908 (Berman)
Patent Reform Act of 2007. Makes changes to patent law. Introduced April 18,
2007; referred to the House Committee on the Judiciary. Hearings held by the
Subcommittee on Courts, the Internet, and Intellectual Property on April 26, 2007.
Ordered reported, amended, from Committee on July 18, 2007. Reported on
September 4, 2007, and passed the House on September 7, 2007.
S. 1145 (Leahy)
Patent Reform Act of 2007. Makes changes to patent law. Introduced April 18,
2007. Ordered reported from Committee on July 19, 2007. Reported from
Committee on January 28, 2008.