On March 13, 2008, the Senate Judiciary Committee released 15 proposed amendments to the Patent Reform Act of 2007 (S. 1145) in advance of full Senate consideration of the bill, anticipated to occur in April. Summaries of the significant amendments follow below.
Amend best mode to align with language in House version: The "best mode" requirement would be considered in the process of obtaining a patent, but it would not be a permissible ground upon which to institute a post-grant review proceeding to invalidate a patent.
Delete marking provision: The amendment would strike the marking requirement for certain to receive damages for past infringement.
Codify Seagate's willful infringement standard: The amendment would codify the new standard for willful infringement announced in the 2007 Federal Circuit decision, In re Seagate Tech., which requires a patentee to show clear and convincing evidence that an accused infringer acted with "objective recklessness" in order to prove willfulness.
Interlocutory appeals of claim construction orders: The amendment would limit interlocutory appeals to those that the district court : (i) determines that there was a reasonable ground for difference of opinion; and (ii) such an appeal may advance the ultimate termination of the litigation. The amendment would also give the Federal Circuit discretion whether or not to accept an appeal of a second claim construction order after it has already heard one interlocutory appeal in that same case.
Appropriate facilities for Federal Circuit judges: The amendment ensures that Federal Circuit judges are provided with use of appropriate existing facilities and administrative services by allowing judges who do not reside within a 50-mile radius of Washington, D.C. to use chambers of an existing courthouse in the district where they reside.
Post grant review—disqualification: The amendment corrects inconsistency between section 337 (1) and (2) by disqualifying post-grant reviews in which issues were raised (or could have been raised) in the litigation.
Post grant review— "final decision" defined: The amendment defines "final decision" for estoppel purposes as any final decision of a United States district court or the International Trade Commission.
Interference appeals amendment: The amendment would allow the Federal Circuit to hear interference decisions from the Board of Patent Appeals and Interferences that commenced prior to the effective date of the Act.
Derivation proceedings amendment: The amendment clarifies procedures relating to derivation proceedings (to "replace" interference practice).
Additional amendments are expected to follow in the coming weeks.
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