Issue 05/24 | June 29, 2005
USPTO Patent Rules Updates

Patent Reform Act of 2005

On Wednesday, June 8, 2005, Congressman Lamar Smith (R-TX) introduced the Patent Reform Act of 2005. (H.R. 2795). This bill includes sweeping reforms to fundamental aspects of the U.S. patent laws and procedures, including:

  • Change to a first-to-file system (including elimination of the 1-year grace period for certain third party public disclosure);

  • Elimination of the best mode requirement;

  • Changes to the duty of candor (violations will be adjudged bythe PTO rather than in Federal Court);

  • Damages to be limited to the inventive contribution rather thancalculated on the selling price of an entire product;

  • Limitations on damages for willfulness;

  • Adding a factor of "fairness" to the determination of whether to enter an injunction;

  • Automatic stay of injunctions for appeals;

  • Limits on scope of continuation applications (to be made by PTO);

  • Introduction of a post-grant opposition procedure and submission of prior art by third parties, etc.

  • Although some of the provisions in the proposed legislation are toned down from the discussion draft distributed this spring, this version still has something to offend almost every interest. Congressman Smith has called the bill "without question, the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act."

    The legislation is available for download here: http://media.aplf.org/rm/20050630-public/PatentAct2005.pdf

    The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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