Patent Reform Bill S.23 Passed

March 9, 2011

On the evening of March 8, 2011, the U.S. Senate passed the patent reform bill S.23 by vote of 95 to 5. This is the first time in six years that the Senate has passed a bill on general patent reform, with the hopes that it is a major step forward to improve the U.S. patent system.

Some of the major features of the bill are:

  • First-inventor-to-file system
  • Revolving fund giving the USPTO access to all fee collections
  • New requirements for suits for false patent marking
  • New 9-month "Post Grant Review" proceeding in which all grounds of patent invalidity can be raised
  • Revamped life-of-the-patent inter partes reexamination, called "Inter Partes Review"
  • Deletion of litigation-related provisions on damages, venue, and willfulness from the bill

While some support the bill, others see concerns. Targets of patent litigation by so-called non-practicing entities are no doubt disappointed that many of the litigation reform provisions were stripped from the final bill. The bill seems mainly to focus on various changes to the Patent Office and its funding. Some post-grant review procedures are established, and these might offer additional mechanisms for dealing with patent challenges, but time will tell if these are any more useful than the current procedures in place. The bill has lessened concerns with the estoppel that attached to prior re-examination procedures, while expanding the scope of post-grant review. In addition, the bill has eliminated the "best mode" defense to patent validity.

For more information on how this affects you, please contact your Marshall, Gerstein & Borun attorney at 312.474.6300.