Senate will review H.R.1249 in Early September


August 03, 2011


Summarized by Tatsuo YABE

August 15, 2011





この度、上院の多数派のリーダーであるHarry Reid氏は夏季休暇終了後の議会の開催時(9月初旬)に即刻当該改正法案に関して審理をすることを明言しました。 さらに、上院の民主党は討論終結の申し立て(Cloture Motion)を申請し、H.R.1249に対して即刻多数決を取ることを提案しています。 この状況下においてH.R.12499月早々にも上院で承認され、後は大統領の署名という運びになる可能性が見えてきました。











What are the significant provisions in the 2011 Patent Reform Bill (H.R. 1249)?


@     First Inventor to File;  -- 35 U.S.C.102

-       Switching the US to first-to-file country, joining the rest of the world.

-       One year grace period for the inventor (or someone who obtained the disclosed material from the inventor) is preserved.


A     Derivation Proceedings; -- 35 U.S.C.135

-       The present interference proceeding will be terminated, however, determination on who the real inventor(s) is will remain.

-       The inventor may initiate a derivation proceeding when it is believed that a person named in an earlier-filed application derived the invention from the inventor within one year of the publication of the earlier application based on substantial evidence in support of the asserted derivation.


B     False Marking Provision; -- 35 U.S.C.292

-       Under the present provision, section 292, anybody can initiate a lawsuit against the party for the false marking. – “Qui Tam Action

-       The revised section 292 limits qui tam plaintiff to only U.S. or individual who can show a competitive injury resulting from the false marking.


C     Inventor’s Oath; -- 35 U.S.C.115

-       Both bills require an inventor to sign an oath, however, it made easier for a person to whom an inventor is obligated to assign can apply for patent with a simple substitute statement, mentioning that the inventor is obligated to assign but refuses to sign an oath.


D     Prior User Rights (Defense to Infringement); -- 35 U.S.C. 273

-       The current law allows only a person who reduced the invention to practice more than a year before the effective filing date and must have commercially used the invention before the effective filing date to rely on this defense with regard to business methods.

-       H.R. 1249 expands prior user’s rights available to all inventions.

-       S.23 does not expand the prior user’s right to the H.R.’s level.


E     Advice of Counsel; -- 35 U.S.C. 298

-       In both bills, failure of an infringer to obtain the advice of counsel is not used to prove the willfulness of the infringer.


F     Post-Grant Proceedings; -- 35 U.S.C. 321 & 311

-       Two types of post grant review proceedings:

Ø  Post-grant review petition based on 102, 103, and 112 (petition must be filed within 9 Months (H.R.) and 12 Month (S)) of the issuance of the patent;

Ø  Inter-partes review based on 102 and 103 and only on publications (petition must be filed within 9 Months (H.R.) and 12 Months (S)) of the issuance of the patent.

-       Must name the real parties of interest.


G     Pre-issuance Submission by 3rd Party; -- 35 U.S.C. 122

-       Before later of 6 months from publication or first rejection, any 3rd party can submit printed publication with the relevance of the submission materials to the claims to be attacked.

-       Also, before the notice of allowance, the same as above can be done by any 3rd party.


H     Supplemental Examination; -- 35 U.S.C. 257

-       Any none-submitted information during the prosecution can be submitted with the request of supplemental examination so that an inequitable conduct defense based on the information submitted for the supplemental examination will not be available in the later litigation by the defendant (infringer).

-       So, none-submission of the material information during the prosecution can be cured by this proceeding.


I     Micro Entity – 35 U.S.C. 123

-       A party who is qualified as a small entity who has not been named as an inventor on more than 4 previously filed U.S. applications.


J     3 or More Satellite Offices

-       First to be opened is Detroit Michigan


K     Best Mode Requirement; -- 35 U.S.C. 282


-       Preserve the best mode requirement under 112, but exclude this requirement as a basis for invalidating the patent during the litigation under 35 USC282.




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