Today, Rep. Lamar Smith (R-TX) introduced a Manager’s Amendment to H.R. 1249. The amendment makes a number of changes to the text of the original bill.
First, the definition of prior art is amended under § 102. Subsection (a)(1) is amended to read:
the claimed invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the publicor otherwise disclosed to the public before the effective filing date of the claimed invention;
Subsection (b) which defines exceptions for disclosures by the inventor within one year of the filing date is also amended to use the term “disclosed to the public.” The amendment then adds a new subsection that seems to be an attempt to define “disclosed to the public.”
(o) IMPLEMENTATION BY THE PATENT AND TRADEMARK OFFICE.–In any guidelines for the examination of patents addressing whether a disclosure to the public has been maded under section 102 of title 35, United States Code, as amended by this section, the Office shall use the public accessability criteria employed by the courts in addressing whether a disclosure constitutes a printed publication under section 102 of title 35, United States Code, as in effect on the day before the date of the enactment of this Act. Such public accessability criteria shall be used regardless of the manner in which the disclosure resulted in the subject matter disclosed being known or used.
This seems to be Rep. Smith’s attempt to deal with problems regarding the grace period associated with disclosures by the inventor.
Next, the Amendment requires the GAO to conduct a study of patent litigation conducted by non-practicing entities. The study would include information as to the volume of such cases, the number found to be without merit after judicial review, the time required for such litigation, the estimated costs associated with the litigation, and the economic impact to the country of such litigation, including possible benefits to commerce.
The House appears to have backed down on the inter partes review standard. The bill is now amended to permit institution of such a review based on a “reasonable likelihood” that the challenger will prevail on invalidating at least one challenged claim. This is now the same language used in the Senate bill and is an improvement over the “substantial new question of patentability” standard where the PTO grants nearly all such petitions.
The House version still permits post-grant review within 12 months of the patent’s issuance, while the Senate version only permits review within 9 months of issuance.
The Amendment also amends the false marking statute to preclude liability for virtual (Internet) false marking for which the marker would otherwise be liable if it “is engaged in during the 3-year period beginning on the date on which the patent at issue expires.” Futher, after the patent has been expired for 3 years, there is no liability if the word “expired” is inserted before the expired patent number. This seems redundant and unnecessary. If the word “expired” is listed, it is hard to see how this would deceive the public.”
The Amendment also contains a provision to make it more difficult to join additional parties to an infringement action as accused infringers unless the proposed defendants are jointly, severally, or alternatively liable based on the same transaction or occurrence, and the questions of fact are common to all defendants.
Conversely, courts must permit intervention of a manufacturer of a product that is accused of infringement, or the user of a manufacturing process or the manufacturer of a system or components that implement the process alleged to infringe. In fact, the amendment permits a stay of suits against non-manufacturers, including distributors, resellers, customers, or users if the manufacturing party has filed or does file a declaratory judgment action against the patent owner.
Several other wording amendments were also introduced in the document. Other than some wording changes, there was no significant revision to the controversial prior user rights defense section of the bill.
Thanks to Hal Wegner for sending around the Manager’s Amendment.