HR1908SEP7

The bill defines inventors and co-inventors as those who invented or discovered the subject matter of the invention and changes current law making the patent holder the first to file rather than the first to invent. The filing date gives that inventor the right of priority over other, later filed, applications for the same invention.

A patent for a claimed invention may not be obtained, however if the claimed invention was patented, described in a printed publication or in public use, or on sale more than one year before the effective filing date.

The ‘prior art’ claim exception is modified if the subject matter of the prior art was obtained from the inventor if the differences between the claimed invention and the prior art is such that the claimed invention would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains. The patent can not be negated by the manner in which the invention was made.

An inventor can file a claim against an earlier filing for patent if he can set forth the basis to find that the earlier applicant derived the invention from the inventor, and without authorization filed an application for patent on the invention. The original inventor has 18 months to file his dispute.

Assignment to the claimed person under a research agreement is simplified. An inventor can assign another to make application for a patent and a person showing a proprietary interest in the matter may make an application for the patent on behalf of and as an agent for the inventor.

Damages for infringement are amended to include consideration of the market value of the invention including an exclusive or nonexclusive license to market the invention. If, however, the infringer did so willfully the damages can be increased up to three times. The venue for such a court case can be brought in the district where either party resides rather than currently where the defendant resides. the bill explains, "The basic goal of damages for infringement is to put the plaintiff patent holder in the same position (economically) as it would have been had the defendant not infringed."

The Board of Patent Appeals is renamed as the Patent Trial and Appeals Board.

The bill report explained the need for the legislations:

" Patents are provided to inventors as an incentive to advance the state of knowledge and to develop innovative products and services. They do this by granting inventors exclusive rights to their inventions for a limited period. In exchange for the temporary monopoly right, inventors are required to disclose to society the knowledge behind their inventions. This social bargain is enshrined in the Constitution, which empowers Congress to `promote the progress of . . . science and the useful arts . . . by securing for limited times to . . . inventors the exclusive right to their . . . discoveries.' 1

Over the last several years, agencies like the USPTO and FTC, the National Academy of Science, professional organizations, industry coalitions, economists, academics and others have identified significant problems in the patent system. These problems boil down to two main areas--the issuance of poor-quality patents and abusive practices particular to patent litigation. These problems have hindered the ability of patents to spur innovation today and have put at risk future innovation. H.R. 1908, the Patent Reform Act of 2007, is designed to address several of the problems identified in the United States patent system and modernize it for the 21st Century.

The Patent Reform Act of 2007 affects several parts of our patent law. The most significant changes pertain to the first-inventor-to-file system, the inventor's oath requirement, apportionment of damages, willful infringement, prior user rights, reexamination generally, ex parte reexamination, inter partes reexamination, post-grant review, 18 month publication of patent applications, prior art submissions by third parties, tax patents, venue, interlocutory appeals, applicant disclosure requirements, inequitable conduct, best mode and USPTO regulatory authority. Background for each of these topics is provided below. "

Sponsor: Rep. Howard Berman (D-CA-28^th)

Vote: Passed the House amended 220 to 175 RC 863 September 7, 2007

Cost to the taxpayers: "CBO estimates that implementing the bill would have a net discretionary cost of $3 million in 2008 and $11 million over the 2008-2012 period. Enacting H.R. 1908 could affect direct spending and revenues, but CBO estimates that any such changes would be negligible over the 2008-2017 period."

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