Eric E. Bensen on the Patent Reform Act of 2007

Eric E. Bensen on the Patent Reform Act of 2007


If enacted, the Patent Reform Act of 2007, potentially the first major reform of the patent laws in more than 50 years, will have major effects on patent law. In an exhaustive analysis of the Act, Eric E. Bensen, co-author of Milgrim on Licensing and Milgrim on Trade Secrets, writes: 

 

     In April of 2007, members from both houses of Congress and both major political parties together announced that the Patent Reform Act of 2007 (“PRA”) would be introduced in both the Senate (S. 1145) and the House of Representatives (H.R. 1908) after six years of effort. The joint measure addresses most of the major issues in patent law today. The principal issues are enumerated here.

 

“First-to-File”. Converting the system from “first-to-invent” to “first-to-file.” 

 

Publication. Requiring the publication of all patent applications 18 months after filing.

 

“Post-Grant” Review. Providing for a post-grant review opportunity under which third parties could challenge the validity of a patent in a proceeding before the Patent and Trademark Office (“PTO”).

 

Venue. Limiting the venues in which a patentee could bring suit. 

 

“Prior Use” Defense. Expanding the availability of the “prior use” defense currently available when business method patents are asserted.

 

Interlocutory Appeals. Giving the Federal Circuit jurisdiction over interlocutory appeals from district court claim construction rulings.

 

Apportionment. Providing by statute for apportionment of patent damages in the reasonable royalty context.

 

Willfulness. Limiting the circumstances under which an infringer could be held liable for willful infringement.

 

The introduction of identical bills in both houses after so many years of work suggested to many that patent reform would finally become a reality.

 

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