Wednesday, July 18, 2007 — STRATEGIC MANAGEMENT OF IP, GLOBAL IP STRATEGY

US Patent Reform moves on, and on, and on...

by Duncan Bucknell

The US Patent Reform Act of 2007 moved further forward yesterday (18 July) when the full House Judiciary Committee voted to advance the Bill. The Senate's Judiciary Committee will continute to debate the Bill today (19 July).

Anyone who is not a US patent attorney can probably be excused for a little confusion over the status of the various amendments now pending before Congress. Wikipedia has a nice list of intellectual property amendments currently pending before Congress.

Just to be clear - the Patent Reform Act of 2007 contains provisions such as:

• apportionment of damages based on the contribution of the patented technology to the product;
• restriction on the award of punitive damages for willful infringement;
• restrictions on forum shopping;
• broadening prior user rights;
• restriction on the right to recover damages for unmarked inventions associated with method patents;
• clarification of the prior art base in relation to prior secret agreements;
• requirements for the submission of searches and analysis of prior art by patent applicants; and
• enabling the USPTO to set its own fees.

The earlier, Patent Reform Act of 2005 is the one which contains the much debated (and anticipated) provision which would change the US system from first-to-invent to -first to-file.

The Strategic response? Start planning now about how this is going to change the way you deal with patents in the US.

For example - this probably does not mean that you should be any less concerned about willfulness in the US. On the other hand, there should be some substantive changes to the way you deal with searches. Similarly, instructions associated with method patents should now more than ever carry patent notices.Links:Reuters

Patently-O

PLI Patent Blog

Philip Brooks' Patent Infringement Updates

Patent Prospector

Peter Zura's 271 Patent Blog

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