Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
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.
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 firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek at email@example.com
Text available at http://src.bna.com/p44
Copyright © 2017 The Bureau of National Affairs, Inc. All Rights Reserved.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)