In an action that would affect patent applicants in Indiana and other states, the Senate Judiciary Committee on February 3, 2011, approved an Amendment to S. 23, patent reform legislation to implement a first-inventor-to-file system, revise provisions on damages awards, create a new post-grant review system, and grant the PTO fee setting authority. The vote was 15-0.
The amendments approved were: (1) to delete provisions addressing willful infringement; (2) to delete provisions that would have repealed the requirement that Federal Circuit judges live within 50 miles of the District of Columbia; and (3) to add a provision addressed stating that the Federal Circuit’s exclusive appellate jurisdiction as including compulsory counterclaims arising under patent law.
Note: Some other changes have been made to the legislation to refine and clarify language or to make changes that conform to other provisions. For example:
- 35 U.S.C. § 292(b) would eliminate qui tam actions for “false marking,” allowing only actions for those suffering competitive injury; and to provide that only the United States may bring a penalty action under that provision. “False marking” claims exist when a patent owner marks its products with a patent number that either does not cover the product, or for which the patent is expired. These claims have become prevalent in Indiana and surrounding states in recent years.
- The statute of limitations for PTO actions against attorneys for misconduct would no longer run from discovery. Instead the statute would run either within 10 years of the misconduct or 1 year after the misconduct is discovered, whichever is earlier; and
- Language 35 U.S.C. § 282 on the presumption of validity would be deleted because it is already referenced in Section 103(b).
The full text of the Amendment is as follows: