Changes

Return to [[Innovation Policy#Proposed Patent Reform| Proposed Patent Reform]].

The act establishes that a claim construction ruling must occur prior to discovery. <ref name="patentlyoIA" /> Discovery is a process that occurs pre-trial in a civil action, a conflict between two private parties, and is defined by the federal government as any party's right to obtain relevant information for the trial. Claim construction defines exactly what a patent includes and the extent to which a patent holder can protect the subject matter. <ref name="claimconstruction" /> The provisions act also specify specifies that claim construction previously agreed upon in another court must hold when a patent claim is reviewed by the USPTOor in a new trial. <ref name="patentlyoIA" />

The act states that discovery Discovery of additional or non "core" documents may is not be approved allowed unless the party requesting them covers the costs of discovery and all parties consent to discovery. <ref name="patentlyoIA" /> By enabling courts to limit discovery, sponsors hope to reduce litigation costs and targets target patent trolls intending to settle a case quickly and early on by making use of using information revealed in discovery. <ref name="innovationactsummary" />

To protect small businesses, the act requires that the patent owner explain the reason for the lawsuit and how the infringement has occurred to the accused party or parties. <ref name="innovationactprovisions" /> A demand letter sent prior to the lawsuit cannot be used as evidence of willful infringement unless the demand letter specifies which patent is being infringed, what is infringing the patent, the parent company that owns the patent, and the grounds for lawsuit. The grounds for lawsuit consist of how the one or more claims in the patent are being violated. <ref name="patentlyoIA" /> The act states that plaintiffs who disregard the Anyone found violating these requirements and continue to send vague demand letters would be forced to pay additional damages. <ref name= "sectionsummary" />

Within the Innovation Act, several reforms are suggested to the Leahy-Smith America Invents Act. One of these reforms concerns codifying double patenting. <ref name="govtracksummary" /> Double patenting is when two patents are awarded for the same invention to one patent holder. The first-to-file (FTF) system was introduced in the American Invents Act and put into effect in March of 2013. In the FTF system, the first inventor to file for a patent has priority in protecting the idea. <ref name="entrepreneur" /> The Innovation Act applies the FTF system to double patenting restrictions. If a patent claim is filed on the same day or before a similar second patent, then the first patent will be deemed prior art to the second patent. Thus, preventing double patenting would be prevented unless nonobvious subject matter can be proven. <ref name="govtracksummary" />

To protect manufacturing investments and patent owners, the act prohibits foreign courts from eliminating a company's US IP licenses in bankruptcy, in accordance with US law. <ref name="sectionsummary" /> On the other hand, the act pushes for plaintiffs to deal with manufacturers instead of the retailers or end users that have purchased the manufacturer's products. <ref name="patentlyoIA" /> Courts may stay customer suits and hear suits brought before while litigation with manufacturers accused of infringing the same patentis ongoing. <ref name="govtracksummary" />

In addition to reducing costs and curbing patent troll abuses, the act requires the USPTO to create and distribute educational materials for small businesses involved in aggressive patent litigation. Working outreach programs would be modified to include information on patent litigation practices that are threatening to the success of small businesses. This information would also be disseminated through the Small Business Administration and the Minority Business Development Agency. The act directs the USPTO to have public records online about when a patent claim is brought to court along with other specifics regarding the patent's ownership to increase transparency. <ref name="govtracksummary" />