I have been reporting upon the several attempts at patent reforms, beginning with the comprehensive reform introduced into the House in 2005. (See 2005 Patent Opposition Procedure, Patent Reform/Post Grant Opposition.) Now the House approved a version of reform (September 7, 2007). It is reported likely that some form of reform is likely to be approved in the Senate.

First, the House version has revised the long standing law and made patent rights awarded to the first party to file the patent application, in contrast to the first party to invent the invention. It has been claimed that this change favors large corporations over the small inventor. However, the small inventor should be thinking of prompt filing a provisional application. I don’t recommend filing a provisional application without the assistance of a patent attorney. However, many practitioners will draft a provisional application at a rate lower than the customary rate for a utility application.

The rules pertaining to a grant of injunction to the successful patent holder in an infringement action is being altered. (It already had been significantly constrained by the Supreme Court in the e-bay case.) The proposed law would require the court to consider all the facts and interests of the parties in deciding whether to grant an injunction. Note this is in addition to consideration of the standard equitable considerations. Further, an injunction must be stayed during the pendancy of an appeal.

The law approved by the House repeats the post grant opposition proceeding discussed in a 2005 article referenced at the beginning of this article. Briefly, a third party may request review of a granted patent within 9 months of award. There is limited discovery. The dispute is decided by a panel of 3 administrative law judges and they must make a decision within 12 months.

Another significant change is that the challenging party is not barred from later raising arguments against the patent, such as in an infringement action. The challenger is only limited to arguments actually made in the challenge.

Finally, the House approved bill expands the ability of third parties to submit prior art. The existing law only permits submission (w/o comment) of prior art within a 2 month window of the application being published. The House bill would require the third party to explain the relevance of the submitted prior art and pay a fee.

But how do you get around an argument that the modification was within the realm of common knowledge. One thought, it to try and rebut the status of the common knowledge by affidavit. I am not happy with that solution. Affidavit practice has its own faults.

My other thought is to try and isolate in the claim structure and in the detailed specification an attribute of the invention that will be very difficult to argue as common knowledge. This will require a through knowledge of the invention at the start of the drafting phase. The inventors may be a big help in this task (and therefore they may be more willing sign affidavits).

October 8, 2007