Proposed Patent Act of 2005 - ABA Intellectual Property Law Section Recommendations

At today's meeting of the American Bar Association Section of Intellectual Property Law in San Francisco, a panel discussed the Section's recommendations on proposed changes to the patent law. The IPL Section recently issued a white paper including the ABA Section's recommendations. The white paper is a good introduction to many of the issues pending before Congress in the Proposed Patent Act of 2005 (H.R. 2795), and includes recommendations for a first to file inventor system and creating a post-grant opposition process.

The recommendations in the white paper include:

1. Adopt the first-inventor-to-file principle as part of U.S. patent law. This would harmonize U.S. patent law with international patent law.
2. Define prior art through "best practices", including removing secret prior art as a basis for barring a patent (e.g., a secret sale of the technology would not create an on-sale bar).
3. Repeal the “best mode” requirement, relying instead on the requirements for a complete written description and sufficient enabling details to permit the full scope of the claimed invention to be readily carried out.
4. Reduce litigation costs by limiting claims of inequitable conduct. Do so by barring any pleading of the “inequitable conduct” defense unless the court has found at least one patent claim is not valid, and the invalidated claim would not have issued “but for” misconduct.
5. Expand the enforcement of the “duty of candor and good faith” by permitting a court to refer issues of possible misconduct to the PTO for evaluation, investigation and sanction.
6. Eliminate as unnecessary in the context of a codified “duty of candor” all the “deceptive intent” provisions in the patent laws relating to inventorship changes, foreign filing licenses reissue applications, and enforcement of partially valid patents which merit repeal in light of the complete codification of inequitable conduct issues.
7. Publish all applications for patent at 18-months following the earliest filing or priority date for which an applicant seeks the benefit. Presently, an applicant can opt out of publication of the application if there will be no applications for patents on the invention outside the United States. (The adoption of a first-to-file inventor system would make this provision less objectionable because an inventor need not worry about someone reading an application, filing a patent application for the invention, and then arguing first invention.)
8. Open a limited window for post-grant opposition of an issued patent. Suggested procedures include a window of 9 months from issuance, allowing documents and declarations as evidence, opening all grounds of invalidity (including the on-sale bar because secret prior art would be removed as grounds for invalidity as stated above), limiting discovery to cross examination of declarants, using a preponderance of evidence standard, decision by a panel of three administrative patent judges, and the use of a full inter partes procedure.
9. Authorize pre-grant submissions of prior art by third parties.
10. Remove the retroactivity restrictions on inter partes reexamination and remove the estoppel provision for inter partes reexamination as it applies to issues that “could have been raised.”
11. Limit the ability to obtain enhanced damages for willful infringement of a patent. A patentee should be required to point to evidence of improper conduct, such as intentional copying of an invention known to be patented or failure to exercise due care after receiving a notice threatening suit for infringement that set out with particularity the manner in which each infringed claim related to the infringer’s activities.
12. Eliminate the potential for abuse of the patent laws arising from the unlimited right to file continuing applications for patent. The United States Patent and Trademark Office would be charged with promulgating regulations, after a public notice and hearing, to preserve the right of the inventor to file continuing applications for patent that are legitimately needed to afford the inventor a full and fair opportunity to protect any invention disclosed in the patent application, while eliminating any continuation application abuse.
13. Expand the rights of prior inventors as part of the move to a first-inventor-to-file system.
14. Clarify the application of the “entire market value” rule when this principle is used to determine a reasonable royalty as the basis for the patent owner’s compensatory damages.
15. Permit the filing of applications for patent by the assignee of the inventor.