Patent Reform Roundup – May 2015 Edition
Client Alert | 6 min read | 05.04.15
In the wake of last year's patent reform efforts by Congress, which came to an abrupt halt in the Senate, the newly seated 114th Congress recently introduced four patent reform bills for consideration: the STRONG Patents Act (S. 632), the PATENT Act (S. 1137), the TROL Act (H.R. 2045), and the reintroduced Innovation Act (H.R. 9, previously H.R. 3309).
The following chart highlights some of the important provisions in each bill:
Bill |
Innovation Act |
Support Technology and Research for Our Nation's Growth (STRONG) Patents Act |
Protecting American Talent and Entrepreneurship (PATENT) Act |
Targeting Rogue and Opaque Letters (TROL) Act |
Heightened Pleading Requirements |
Yes. Also requires information regarding the real party in interest. |
Yes |
Yes. Also requires information regarding the real party in interest. |
No |
Fee Shifting Provisions |
|
No |
|
No |
Demand Letter Requirements |
Requires additional information in the demand letter, if the demand letter is to be used to support willful infringement. |
|
|
|
Changes to PTO Practice |
|
|
Requires patentee to record assignments at the USPTO. |
N/A |
Changes to Litigation Practice |
|
|
|
N/A |
Original Sponsors |
Rep. Goodlatte and 19 co-sponsors |
Sen. Coons and Sens. Durbin and Hirono |
Sens. Grassley and Leahy, with five co-sponsors |
Rep. Burgess and five co-sponsors |
Current Status |
Referred to the House Committee on the Judiciary on February 5, 2015. Committee hearings held on March 18 and 19, 2015 and on April 14, 2015. |
Referred to the Senate Committee on the Judiciary on March 3, 2015. Hearings held in the Committee on Small Business and Entrepreneurship on March 19, 2015. |
Referred to the Senate Committee on the Judiciary on April 29, 2015. |
Referred to House Committee on Energy and Commerce on April 28, 2015. Marked-up in Committee on April 29, 2015. Approved 30-22 by Committee. |
Each Bill attempts to curb patent assertion entities (PAEs, sometimes referred to as "patent trolls") in a different way, although there is some overlap among the various proposals. The STRONG Patents Act is generally directed toward modifying USPTO practice, particularly in Inter Partes Review and Post-Grant Review proceedings in front of the Patent Trial and Appeals Board (PTAB). It also incorporates the provisions of the TROL Act, which is directed solely to more strict requirements on demand letters from patentees to potential infringers. The PATENT Act proposes patent reform by looking toward litigation practice, while the Innovation Act attempts a combination of reform proposals—both in litigation and at the USPTO.
There is still much debate in Congress over the particulars of patent reform, such as whether fee shifting should be presumed (as in the Innovation Act), or permissive as in the current state of the law (the STRONG Patents Act), or on a lower burden (the PATENT Act). All proposals dealing with broad patent reform, however, seek to place more scrutiny on patent infringement complaints, eschewing the low bar set by Form 18 to the Federal Rules, which does not even go as far as the general pleading requirements under Federal Rule 8 and the Supreme Court's landmark decisions in Twombly and Iqbal nearly a decade ago. Interestingly, the Judicial Conference has already committed to eliminating Form 18 as of December 2015, regardless of any movement from Congress on the above proposals.
While much work is still to be done, Senator Charles Schumer has predicted that 2015 "WILL be" the year Congress takes action on "patent troll" reform. Whether Senator Schumer's statement is prescient or merely optimistic is unclear at this point. In the meantime, we will continue to cover any developments on this front.
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