Provisions of Passed
Bill
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Effective Date
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Inventor's oath or declaration:
Modification of inventor's oath or declaration requirements
so that a person to whom an inventor has assigned (or is under an
obligation to assign) an invention can file a patent application as
an agent of the inventor
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1-year from date of enactment.
Applies to any patent application that is filed on or after that
effective date.
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First inventor to file:
Replacement of the current "first to invent" system
with a new "first inventor to file" system
Amendment of 35 U.S.C. Sections 102 and 103, including changes
as a result of the elimination of "first to invent," such
as the removal of Sections 102(c)-(g)
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18 months from date of enactment.
Applies to any application and patent with a claim having an
effective filing date on or after the effective date for this
provision, or having a specific reference under 35 U.S.C. Sections
120, 121, or 365(c) to an application or patent having such a
claim.
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Defense to infringement based on prior commercial
use:
Addition of a "commercial use" defense, which permits
an accused infringer to prove that it had commercially used the
claimed subject matter more than one year before the earlier of the
effective filing date of the claimed invention, or the date on
which the claimed invention was disclosed to the public in a matter
that qualified for the exception from prior art under 35 U.S.C.
Section 102(b)
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Applies to any patent issued on or after date of enactment.
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Best mode requirement:
Elimination of patent infringement defense of failure to comply
with the best mode requirement of Section 112
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Date of enactment.
Applies to proceedings commenced on or after that date.
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Human Organism Limitation:
Prohibits issuance of any patent claim directed to or
encompassing a human organism
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Date of enactment.
Applies to any application that is pending on, or filed on or
after, the date of enactment.
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Patent Term Extension for Drug Product:
Calculation of Patent Term Extension modified in pending
applications and matters subject to judicial review
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Date of enactment.
Applies to any application for extension that is pending on, filed
after, or to which a decision regarding the application is subject
to judicial review on the date of enactment.
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Third Party Preissuance Submissions:
Allowance of third parties to submit patents or publications
along with a statement of relevance for the PTO's consideration
before certain specified events in the examination of a pending
patent application
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1-year from date of enactment.
Applies to any patent application filed before, on, or after that
effective date.
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Post-Grant Review:
Creation of a new third-party post-grant review procedure to
allow a third party to request cancellation on any invalidity
ground not later than 9 months after the date of the grant of the
patent or of the issuance of a reissue patent
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1-year from date of enactment.
Applies with certain exceptions to patents described in section
3(n)(1), "First-to-File Provision." E.g.,
patents with a claim having an effective filing date on or after
the 18 months from date of enactment, or a specific reference under
35 U.S.C. Sections 120, 121, or 365(c) to an application or patent
having such a claim.
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Supplemental Examinations:
Establishment of supplemental examination procedures for issued
patents to allow cure of potential inequitable conduct occurring
during the original prosecution. Our previous alerts on an earlier
version of this provision can be found
here and
here.
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1-year from date of enactment.
Applies to any patent issued before, on, or after that effective
date.
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Inter Partes Review:
Replacement of an existing inter partes reexamination
with an inter partes review procedure that may only be
used after the newly established third-party post-grant review
procedure, or after the 9 month period for requesting third-party
post-grant review expires; inter partes review may only be
based on prior art consisting of patents and printed
publications
Transition inter partes from "a substantial new
question of patentability affecting any claim of the patent"
to "a reasonable likelihood that the requester would
prevail"
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Inter partes review: 1-year from date of enactment and
applies to any patent issued before, on, or after that effective
date.
Reexamination (transition): Date of enactment and applies to
requests for inter partes reexaminations filed during the
1-year period beginning on enactment date.
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Patent Trial and Appeal Board:
Elimination of the Board of Patent Appeals and Interferences and
creation of a new Patent Trial and Appeal Board with responsibility
(1) to conduct post grant review proceedings, (2) to conduct
derivation proceedings to determine whether the subject matter of a
filed application was misappropriated from an actual inventor, and
(3) to review decisions of examiners in examination and
reexamination proceedings
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1-year from date of enactment.
Applies to proceedings commenced on or after that effective date,
except for certain specific exceptions.
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Fee Setting Authority:
Authority to set or adjust fees for recovering costs for fees
specified by statute
Fees including a temporary, statutory fee schedule;
establishment of fees for "micro entities" and filing a
prioritized application
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Fee-setting authority: Date of enactment with a 7 year sunset
provision.
Fee schedule: There are different effective dates for the specific
fees.
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Business Method Patents:
Tax avoidance/reduction strategies will be within the prior
art
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Date of enactment.
Applies to any application that is pending on, or filed on or after
enactment date, and to any patent that is issued on or after
enactment date.
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Advice of Counsel:
Prohibits use of an accused infringer's failure to obtain
advice of counsel regarding infringement to prove that any
infringement was willful or induced
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1-year from date of enactment.
Applies to any patent issued on or after that effective date.
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Marking:
Changes false marking legislation (35 U.S.C. § 292)
eliminating the qui tam provision (which permits any
person to sue on behalf of the United States); the passed bill
states that only the United States or a person who has suffered a
competitive injury may bring a false marking case. Patentees
are protected from false marking actions based on the marking of a
product with matter relating to a patent that covered that product
but has expired.
Allows a patent holder to satisfy the patent marking statute (35
U.S.C. § 287) through "virtual marking," which is a
mark directing a reader to a public website listing relevant
patents
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False marking: Applies to all cases, without exception, that are
pending on, or commenced on or after, the date of enactment.
Virtual marking: Applies to any case that is pending on, or
commenced on or after, the date of enactment.
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Jurisdiction and Procedural Matters:
Adds procedural provisions regarding joinder of accused
infringers in patent cases (not involving certain drugs and
biologics, in particular, cases brought under 35 U.S.C.
§ 271(e)(2)) such that parties accused as defendants may
be joined in one action only if questions of fact common to all
defendants will arise in the action, and (1) any right to relief is
asserted against the parties jointly and severally, or (2) if it
arises out of the same transaction or occurrence relating to the
alleged infringement; however, accused infringers may not be joined
solely based on allegations that each has infringed the patents in
suit
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Applies to any civil action commenced on or after the date of
enactment.
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Transitional Program for Covered Business Method
Patents:
Requires the PTO Director to establish a transitional program to
allow post-grant review of the validity of business method patents
claiming "a method or corresponding apparatus for performing
data processing or other operations used in the practice,
administration, or management of a financial product or
service"
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1-year from date of enactment.
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Diversity Studies:
Directs the PTO to establish methods for studying the diversity
of patent applicants and prohibits the results of any such study to
be used to provide preferential treatment to patent applicants
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Not later than 6 months after date of enactment.
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Genetic Testing Study:
Mandates a PTO study on genetic diagnostic testing to determine
whether providing independent, confirming genetic diagnostic
testing activity (for second opinions to patients) would impact
existing patent and license holders of exclusive genetic tests
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Report is due no later than 9 months after date of
enactment.
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