Senate introduces counterpart to the House Patent Reform Act of 2005
The Senate introduced their counterpart to the House Patent Reform Act of 2005 this month ( August 3, 2006).
The two most substantial changes to the Patent Act involve limitations on the availability of enhanced damages upon a showing of “willful” infringement by a plaintiff and a parallel limitation on the availability of unenforceability under the doctrine of “inequitable conduct.” Like its House counterpart, the bill proposes these changes in an effort to streamline and reduce the cost of litigation. The bill, however, was not able to reach an agreement regarding the continued efficacy of the best mode requirement - elimination of this requirement would also serve to streamline litigation.
The bill makes further efforts to reduce the costs or, at least, improve the ability of litigants to predict those costs. For instance, the bill provides a broader safe harbor for prior users of patented technology.
This section also addresses Section 271(f) of Title 35. Under current law, either a foreign or domestic patent holder may be able to obtain damages based on foreign uses of domestically-manufactured components of an infringing article. The House bill only sought to curtail the effect of this provision (entered by Congress in 1984) by applying it to tangible items (as opposed to software inventions per the 2005 Federal Circuit appeal of Eolas Techs. v. Microsoft Corp. The Senate bill goes a step further an repeals the 1984 provision in its entirety. This may be a case of throwing the baby out with the bath water as it will open the field for everyone to partially develop inventions in the
While much of patent reform still remains an open debate, it is clear that Congress is making progress toward reaching a resolution on many of the points discussed in the House version of this bill. Even so, it is unlikely that reconciliation between both halves of Congress will be reached in the 2006 term. Thus, time remains to contact your representatives with any opinions you might have on this pending bill.