Patent Reform Legislation Update

According to the June 8, 2005 press release from Congressman Lamar Smith (R-TX), co-sponsor of HR 2795 - The Patent Reform Act of 2005, the proposed legislation

• Provides that the right to a patent will be awarded to the first inventor to file for a patent who provides an adequate disclosure for a claimed invention;
• Simplifies the process by which an applicant takes an oath governing the particulars of an invention and the identity of the rightful inventor;
• Deletes the “best modeâ€� requirement from §112 of the Patent Act, which lists certain “specificationsâ€� that an inventor must set forth in an application;
• Codifies the law related to inequitable conduct in connection with patent proceedings before the PTO;
• Clarifies the rights of an inventor to damages for patent infringement;
• Authorizes courts with jurisdiction over patent cases to grant injunctions in accordance with the principles of equity to prevent the violation of patent rights;
• Authorizes the PTO to limit by regulation the circumstances in which patent applicants may file a continuation and still be entitled to priority date of the parent application;
• Expands the 18 month publication feature to all applications;
• Creates a new post−grant opposition system; and
• Allows third-party submission of prior art within six months after the date of publication of the patent application.

In his Subcommittee Hearing Statement, Congressman Smith explained that "We intend to mark-up this bill by the end of the month. So it is incumbent upon the Subcommittee members, industry stakeholders, the PTO, and other interested parties to work hard and in good-faith between now and June 30th."

In other legislative news, the Senate Committee on the Judiciary Subcommittee on Intellectual Property has scheduled a hearing on "Patent Law Reform: Injunctions and Damages " for Tuesday, June 14, 2005 at 2:30 p.m. in Room 226 of the Dirksen Senate Office Building.

For the latest resources on patent reform legislation, check out J. Matthew Buchanan's "Promote The Progress" where he has already posted a copy of the Act.