Senate Judiciary Committee Unanimously Approves Patent Reform Bill

In an action that would affect patent applicants in Indiana and other states, the Senate Judiciary Committee on February 3, 2011, approved an Amendment to S. 23, patent reform legislation to implement a first-inventor-to-file system, revise provisions on damages awards, create a new post-grant review system, and grant the PTO fee setting authority. The vote was 15-0.

The amendments approved were: (1) to delete provisions addressing willful infringement; (2) to delete provisions that would have repealed the requirement that Federal Circuit judges live within 50 miles of the District of Columbia; and (3) to add a provision addressed stating that the Federal Circuit’s exclusive appellate jurisdiction as including compulsory counterclaims arising under patent law.

Note: Some other changes have been made to the legislation to refine and clarify language or to make changes that conform to other provisions. For example:

  • 35 U.S.C. § 292(b) would eliminate qui tam actions for “false marking,” allowing only actions for those suffering competitive injury; and to provide that only the United States may bring a penalty action under that provision. “False marking” claims exist when a patent owner marks its products with a patent number that either does not cover the product, or for which the patent is expired. These claims have become prevalent in Indiana and surrounding states in recent years.
  • The statute of limitations for PTO actions against attorneys for misconduct would no longer run from discovery. Instead the statute would run either within 10 years of the misconduct or 1 year after the misconduct is discovered, whichever is earlier; and
  • Language 35 U.S.C. § 282 on the presumption of validity would be deleted because it is already referenced in Section 103(b).

The full text of the Amendment is as follows:

Patent Amendment

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