Senate Patent Bill Aims to Help Inventors Fight Challenges

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By Malathi Nayak

Legislation that would limit patent validity challenges at the Patent and Trademark Office and strengthen patent owner rights in court was introduced in the Senate June 21 by Sen. Christopher Coons.

The Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Act, would make it easier for patent holders, including individual inventors and universities, to enforce their patents, Coons (D-Del.) said in a statement. Sens. Tom Cotton (R- Ark.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) are co-sponsors, according to the statement.

A similar measure by Coons did not advance past the Senate Judiciary Committee in the last Congress.

Patent owners have complained that PTO proceedings, such as inter partes review, that let alleged infringers challenge the validity of patents are unfair. The bill would make it easier for patent owners to amend patent claims during a challenge and would limit repetitive attacks against patents.

Proposals New and Old

The inter partes review process, adjudicated by the PTO’s Patent and Trial Board, lets patent owners submit substitute claims for each patent claim that is challenged.Such motions to amend claims are rarely granted.

Under the bill, once a patent holder asks to submit amended claims, the PTAB may order an “expedited patentability report” from a patent examiner on the substitute claim.

The bill would block reviews of patent claims that have already been challenged in a previous inter partes review or post-grant review.

The bill would clarify that an entity making financial contributions to a patent validity challenge is a “real-party-in-interest” and is barred from making future attempts to challenge the same patent. Patent owners have complained that after they have successfully fended off a challenge by one party, they often face petitions from related parties or ones funded by the first challenger.

The bill would also restore the presumption that a patent owner is entitled to an injunction from court when a patent is found to be valid and infringed. The U.S. Supreme Court’s decision in eBay Inc. v. MercExchange LLC took away that presumption, making it harder for patent owners to get injunctions.

The bill includes various provisions from Coons’ earlier bill. Among them is language that would give the Federal Trade Commission more authority to go after senders of abusive patent-related demand letters intended to scare small businesses into paying licenses for equipment they bought at a retail store. It also calls for fully funding the PTO by stopping the diversion of the agency’s patent application fees to other government programs.

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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