Senate Passes Historic Patent Reform Bill

The Senate yesterday passed the America Invents Act (S. 23) by a vote of 87-3.
Although some provisions were dropped, the Senate bill retained the following key elements:

• Third party submissions of prior art for pending applications;
• USPTO fee setting authority;
• Supplemental examination authority;
• Repeal of the residency requirement for Federal Circuit judges;
• Micro entity status for reduced fees;
• Unpatentability of tax strategies as within the prior art;
• Elimination of the best mode defense;
• Creation of a special post-grant review for business method patents;
• USPTO authority to establish satellite offices;
• Creation of a USPTO ombudsman; and
• USPTO authority to prioritize examination of inventions of national importance.

Focus now will move to the Judiciary in the House of Representatives.  In the House, the Judiciary Chairman Lamar Smith (R-TX) and Eric Cantor (R-VA) are preparing the House version of the legislation.

Senate Defeats Feinstein Patent Amendment

An amendment that was offered by Senator Dianne Feinstein (D-CA) to the patent reform bill (America Invents Act S. 23) has been tabled by a vote of 87 to 13.

The Feinstein Amendment removed the First To File provision in favor of the existing First to Invent System.  Arguments against the First to File System include not allowing independent inventors time to develop or market test their inventions prior to filing.  However, provisions do exist, such as the Provisional Patent Application, which can be filed less expensively and more quickly than a traditional non-provisional patent application.

The First to File provision is one of the primary components of the America Invents Act.  In addition, the Act would provide the US Patent and Trademark Office (USPTO) full fee making authority and would prevent Congress from diverting funds obtained by the USPTO through its fee collections.