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Patent Reform Act of 2005

Patent Reform Act of 2005. H.R. 2795, Offered by Mr. Smith of Texas. May 2005. Reformation topics. 先発明主義から先願主義への移行　( First to File) Prior Art の定義 異議申立の設立 （ Post Grant Opposition） Best Mode Inequitable Conduct 訴訟の迅速・簡易化 Filing Application by Assignee

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Patent Reform Act of 2005

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  1. Patent Reform Act of 2005 H.R. 2795, Offered by Mr. Smith of Texas May 2005

  2. Reformation topics • 先発明主義から先願主義への移行　(First to File) • Prior Artの定義 • 異議申立の設立 （Post Grant Opposition） • Best Mode • Inequitable Conduct • 訴訟の迅速・簡易化 • Filing Application by Assignee • Limits on Broadening Claims in Continuations

  3. 先発明主義から先願主義への移行　(First to File) • H.R. 2795 (June & September, 2005) • 102; the claimed invention was patented, described in a printed publication, or otherwise publicly known • “(A) more than one year before the effective filing date of the claimed invention;” or • “(B) before the effective filing date of the claimed invention, other than through 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 patent; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

  4. Prior Artの定義 • REASONABLE AND EFFECTIVE ACCESSIBILITY REQUIREMENT: • (A) IN GENERAL -Subject matter is publicly known for the purposes of 102 only when- • i) it becomes reasonably and effectively accessible through its use, sale, or disclosure by other means; or • ii) it is embodied in, or otherwise inherent in, subject matter that has become reasonably and effectively accessible.

  5. 異議申立の設立 （Post Grant Opposition） USPTO 決定 notice of infringement USPTO 申立 • USPTOが判断, 3 patent administrative judges • The patent owner can amend the claims. • The depositions are limited to cross- examination. • No other discovery is permitted unless the panel determines it is necessary. Issue 6ヶ月 ? 9ヶ月

  6. Best Mode / Inequitable Conduct/ Willful Infringement/ Filing Application by assignee • Best Mode requirement is eliminated. • 重大なInequitable Conductは、USPTOが訴追可能。 Penalties up to $1 million, $5 million, or more ... • Willful Infringement would be limited by: (1) written notice, (2) intentional copying, or (3) prior adjudication. • Plus, Quick Lawsuit process and reasonable royalty (not lost profits) standard and transfer of venue. • Filing Application by Assignee. • All applications published. • Limits on Broadening Claims in Continuations???

  7. Up-to-date info • 9/19のヒアリングの内容(4名の専門家) • John R. Thomas, Georgetown Univ., “Patent trolls ” & “Darken your door” • Emery Simon, Software industry, “産業界は無防備状態” • Lamar Smith, Congress, TX, “特許制度は障害” • Robert B. Chess, Biotechnology industry, “裁判地の限定は必須”

  8. Procedure in Congress • 2005/6: Reform bill提出 • 2005/9: 修正案提出 • 2005/9-12: 議会でのヒアリング • 2006/4-?: 法案成立/分割/廃案

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