Patent News

Mar. 3, 2015

IP Watchdog: Pro-patentee Patent Reform, the STRONG Patents Act Introduced in Senate, by Gene Quinn

This post originally appeared in IP Watchdog on March 3, 2015.

Senators Chris Coons (D-DE), Dick Durbin (D-IL) and Mazie Hirono (D-HI) have submitted alternative patent reform legislation. The Support Technology and Research for Our Nations Growth Patents Act, or STRONG Patents Act, is supported by the Biotechnology Industry Organization (BIO), the Innovation Alliance and at least several major university groups, including the Association of American Universities and the Association of Public and Land-grant Universities.

While there is much to digest, based on my first reading of the proposed legislation it appears that this legislation is clearly and overwhelmingly favorable to innovators and patent owners. This legislation stands in stark contrast with the Innovation Act submitted in the House by Congressman Bob Goodlatte (R-VA) and shows a very different, alternative vision for the patent system.

Here are the highlights of Strong Patents Act. If passed the Strong Patents Act would:

(1) Require that patent claims challenged in post grant administrative proceedings at the Patent Trial and Appeal Board be construed as they would in litigation in Federal District Court, which would do away with the PTAB practice of interpreting claims based on the broadest reasonable interpretation.

(2) Require that patent claims challenged in post grant administrative proceedings be presumed valid, which would place the burden on the challenger to prove that claims are invalid.

(3) Prohibit PTAB members who decide to institute a post-grant review from hearing the case on the merits.

(4) Eliminate Form 18 of the Federal Rules of Civil Procedure, which would effectively do away with Congressional authorization to file non-informing complaints that merely allege infringement of a patent based on nebulous, vague assertions.

(5) Eliminate USPTO fee diversion and give the Office the ability to access and spend the fees it collects without regard to fiscal year limitations.

(6) Amend 35 U.S.C. 284 with respect to willful damages and specifically authorize district courts to award enhanced damages at their discretion if “by a preponderance of the evidence” the infringement was demonstrated to be “willful or in bad faith.”

(7) Add 35 U.S.C. 271(j), which applied to divided infringement, specifically saying “it shall not be a requirement that the steps of the patented process be practiced by a single entity.”

(8) Grant the Federal Trade Commission (FTC) greater ability to go after those who send fraudulent and/or misleading demand letters. These provisions are targeted at those who send communications in bad faith, but specifically provides an affirmative defense that would not capture omissions or mistakes made in good faith. Further, if the sender can demonstrate that they normally do not engage in bad faith communications that would be enough to demonstrate good faith, which should address the concerns of research and development companies and universities.