S.23 on patent reform introduced on January 25, 2011
S. 23, was introduced 25 January 2011. Co-sponsors include Democrats Amy Klobuchar of Minnesota and Chris Coons of Delaware; Republicans Orrin Hatch of Utah, Chuck Grassley of Iowa and Jon Kyl of Arizona; and Joe Lieberman, a Connecticut independent (not running for re-election)..
S.23 (2011) is very similar to the "Manager's Amendment" version of S.515 (2010). For example, it still contains the opposition procedure. There were some slight changes in the "first inventor to file" provision. There is a "report to Congress on impact of first inventor to file on small business" provision.
Concerning derivation proceedings (section 135):
‘‘(a) INSTITUTIONOFPROCEEDING.—An applicant
13
for patent may file a petition to institute a derivation pro-
14
ceeding in the Office. The petition shall set forth with par-
15
ticularity the basis for finding that an inventor named in
16
an earlier application derived the claimed invention from
17
an inventor named in the petitioner’s application and,
18
without authorization, the earlier application claiming
19
such invention was filed. Any such petition may only be
20
filed within 1 year after the first publication of a claim
21
to an invention that is the same or substantially the same
22
as the earlier application’s claim to the invention, shall
23
be made under oath, and shall be supported by substantial
24
evidence.25
Concerning oppositions. Inter partes review:
‘‘(b) SCOPE.—A petitioner in an inter partes review
9
may request to cancel as unpatentable 1 or more claims
10
of a patent only on a ground that could be raised under
11
section 102 or 103 and only on the basis of prior art con-
12
sisting of patents or printed publications.
13
‘‘(c) FILINGDEADLINE.—A petition for inter partes
14
review shall be filed after the later of either—
15
‘‘(1) 9 months after the grant of a patent or
16
issuance of a reissue of a patent; or
17
‘‘(2) if a post-grant review is instituted under
18
chapter 32, the date of the termination of such post-
19
grant review.
20
As to estoppel:
‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The
10
petitioner in an inter partes review under this chap-
11
ter, or his real party in interest or privy, may not
12
request or maintain a proceeding before the Office
13
with respect to a claim on any ground that the peti-
14
tioner raised or reasonably could have raised during
15
an inter partes review of the claim that resulted in
16
a final written decision under section 318(a).
17
S.23 (2011) is very similar to the "Manager's Amendment" version of S.515 (2010). For example, it still contains the opposition procedure. There were some slight changes in the "first inventor to file" provision. There is a "report to Congress on impact of first inventor to file on small business" provision.
Concerning derivation proceedings (section 135):
‘‘(a) INSTITUTIONOFPROCEEDING.—An applicant
13
for patent may file a petition to institute a derivation pro-
14
ceeding in the Office. The petition shall set forth with par-
15
ticularity the basis for finding that an inventor named in
16
an earlier application derived the claimed invention from
17
an inventor named in the petitioner’s application and,
18
without authorization, the earlier application claiming
19
such invention was filed. Any such petition may only be
20
filed within 1 year after the first publication of a claim
21
to an invention that is the same or substantially the same
22
as the earlier application’s claim to the invention, shall
23
be made under oath, and shall be supported by substantial
24
evidence.25
Concerning oppositions. Inter partes review:
‘‘(b) SCOPE.—A petitioner in an inter partes review
9
may request to cancel as unpatentable 1 or more claims
10
of a patent only on a ground that could be raised under
11
section 102 or 103 and only on the basis of prior art con-
12
sisting of patents or printed publications.
13
‘‘(c) FILINGDEADLINE.—A petition for inter partes
14
review shall be filed after the later of either—
15
‘‘(1) 9 months after the grant of a patent or
16
issuance of a reissue of a patent; or
17
‘‘(2) if a post-grant review is instituted under
18
chapter 32, the date of the termination of such post-
19
grant review.
20
As to estoppel:
‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—The
10
petitioner in an inter partes review under this chap-
11
ter, or his real party in interest or privy, may not
12
request or maintain a proceeding before the Office
13
with respect to a claim on any ground that the peti-
14
tioner raised or reasonably could have raised during
15
an inter partes review of the claim that resulted in
16
a final written decision under section 318(a).
17
posted by Lawrence B. Ebert at 5:07 AM
1 Comments:
I haven't checked out the text of the proposed legislation yet, but from the synopses I've read it sounds like Leahy didn't include any provisions for discontinuing fee diversion in his supposed "patent reform" bill. Is he for real? I realize that, as a congressman, he might not be too eager to cut off a source of revenue for the legislature; but enough is enough. Also, I think this proposed legislation has way too many contentious issues to pass. If Leahy really wants to enact patent reform, I suspect that he may have to be somewhat less ambitious and more incrementalist in his approach.
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