On February 5, 2015, House Judiciary Committee Chairman Bob Goodlatte (R-Va.) introduced the Innovation Act, which is touted as “address[ing] the ever increasing problem of abusive patent litigation.” The bill was introduced as H.R. 9, and is the same as the bill that passed the House in 2013 as H.R. 3309. As I wrote in this article, while the Goodlatte Innovation Act is focused on patent litigation, it includes significant changes to a variety of substantive provisions of U.S. patent law. With momentum building for patent reform, it is time for stakeholders to pay attention to the aspects of the bill that will impact an applicant’s ability to obtain a patent in the first place.

The Substantive Changes in Section 9

Section 9 of the Innovation Act is titled “Improvements and technical corrections to the Leahy-Smith America Invents Act,” and includes a number of changes related to patent trial proceedings (inter partes review, post-grant review, and covered business method patent review) and other substantive changes.

• Narrow estoppel arising from Post Grant Review: Remove “reasonably could have raised” from the estoppel provisions of § 325(e)(2).
• District Court-style claim construction in Inter Partes Review and Post Grant Review: Mandate the use of a district court-style claim construction in inter partes review and post-grant review proceedings.
• “Codification” Of Obviousness-Type Double-Patenting For First-Inventor-To-File Patents: Add a new statutory provision (35 USC § 106) relating to obviousness-type double patenting that would apply to applications and patents examined under the first-inventor-to-file version of 35 USC § 102.
  • Please see this article for a more in-depth discussion of proposed new 35 USC § 106 and potential unintended consequences.
  • This provision may have more significance in the wake of the Federal Circuit decision in Gilead.
• Elimination of Post-RCE Patent Term Adjustment for “B” Delay: Codfiy the USPTO’s original construction of the PTA statute that did not award any PTA for “B” delay once an RCE has been filed.
  • This would overrule the Federal Circuit decision in Novartis, but would apply only to applications pending on–or filed after–the date of enactment.

Stakeholders Need to Voice Their Concerns

It is likely that the patent litigation and patent trial provisions of the Innovation Act will receive the most attention and garner the most debate. Stakeholders who are concerned about the implications and effects of the other substantive changes included in the Innovation Act should make their voices heard, through their involvement with patent bar associations, and by contacting their Congressmen and Senators.

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