A hearing on the bill has already been scheduled for Tuesday, October 29, 2013, in front of the full House Judiciary Committee, thus bypassing the IP Subcommittee.
Predictions of imminent passage of any of the diverse patent bills now before Congress, or in the pipeline, are premature. Absent cloture in the Senate (which requires 60 votes), any single senator can block passage of the bill. The most likely scenario is that legislation will be refined and go through committee considerations in the coming eight or nine months running up to the summer recess in 2014, with last-minute deal-making potentially occurring in the “lame duck” session after the November 2014 congressional elections.
Companies in any industry impacted by the patent system should carefully review the pending legislation and become involved early on in the debate. The numerous provisions in the diverse patent bills are likely to have a substantial (and perhaps unintended) impact on companies’ patent litigation strategies and budgets.
The following is a section-by-section summary of the bill adapted from the Committee’s summary.
第三条 专利侵权诉讼
- Heightened initial pleading requirements—heightens the initial pleading requirements by requiring a patentee to identify the patents and claims infringed, the name and serial number of the accused product, and where each claim element is found in the accused product.
- §285 Fee Shifting—replaces the “exceptional case” standard for fee-shifting with the standard used for awarding fees against the United States Government under the Equal Access to Justice Act, 28 U.S.C. § 2412(d) (fee shifting unless the non-prevailing party’s position was “substantially justified or . . . special circumstances make an award unjust”). Fees can be awarded against any joined party.
- Joinder provision—requires joinder of parties that have an interest in the patent, including the right to enforce or sublicense the patent, or the right to receive damages or licensing revenue.
- Discovery in patent cases—limits discovery until after the court issues a claim construction ruling.
第四条 专利权属的透明度
Plaintiff must inform the parties, the court, and the USPTO of the identity of any (1) assignee of the patent, (2) entity with right to sublicense or enforce the patent, (3) entity with any financial interest in the patent or in the plaintiff, and (4) ultimate parent entity of assignee. Plaintiff has an ongoing duty to update this information throughout the life of the patent or risk losing the ability to receive enhanced damages.
第五条 客户诉讼例外
Allows a manufacturer (or supplier) to intervene in a suit against his customers, and allows the action to be stayed as to the customer, if both the manufacturer and customer both consent to the stay. The motion to stay must be filed within 120 days after first infringement pleading.
Sec. 6. Procedures and Practices to Implement and Recommendations to the Judicial Conference
- Discovery of core documents—requires the Judicial Conference to promulgate rules and procedures on core document discovery. Any party that requests additional discovery would be responsible for paying the cost of the additional discovery.
- Case Management—provides for procedures to ensure initial disclosure and early case management conference practices in District Courts and to help identify any potentially case-dispositive issues.
- Elimination of Form 18 (patent infringement complaint).
- Protection of IP licenses in bankruptcy—requires U.S. courts to follow U.S. law (11 U.S.C. § 365(n)) in cross-border bankruptcy cases.
Sec. 7. Small Business Education, Outreach, and Information Access
- 要求美国专利商标局为面临滥用专利诉讼行为的小型企业提供教育资源和外展计划。
- 要求美国专利商标局建立一个网站，该网站应包含专利所有权（实际权利人；最终母公司实体）信息。
第八条 专利交易、质量与审查研究
- 关于专利交易二级市场监管的研究，旨在促进透明度与道德商业实践。
- 关于美国政府拥有的专利研究。
- 专利质量研究与审查过程中获取最佳信息的研究
第九条 对《莱希-史密斯美国发明法案》的改进与技术修正
- Repeals Section 145’s civil actions de novo against the USPTO.
- Narrows Post-Grant Review estoppel to issues that the petitioner actually “raised” in PGR, not issues that the petitioner “reasonably could have raised” in PGR.
- Eliminates “broadest reasonable interpretation” standard for claim construction in IPR and PGR, and instead requires USPTO to follow district court claim-construction methodology.
- Codifies double-patenting doctrine for first-to-file patents.
- Business Method Patent Review—(1) limits CBM to first-to-invent patents; (2) repeals 8-year sunset for CBM, thereby making CBM permanent; (3) adopts the USPTO’s interpretation of “financial product or service” from SAP v. Versata, CBM2012-00001; and (4) expands the scope of prior art to further include prior art under 35 U.S.C. §§ 102(d) and (e).
- Patent Term Adjustment—eliminates “B delay” patent-term adjustment for any time accrued after an applicant has restarted prosecution by filing a request for continued examination.
福莱知识产权律师将继续密切关注重大法律及立法动态，并及时向客户提供最新进展。
法律新闻快讯是我们持续致力于为客户提供即时资讯的重要组成部分，旨在及时传递影响客户及同仁的紧迫问题或行业动态。若您对本快讯有任何疑问或希望进一步探讨相关议题，请联系您的福里律师事务所律师或以下联系人：
Andrew S. Baluch
Special Counsel
Washington, D.C.
202.672.5520
[email protected]