STRONG Patents Act
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S.632: Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act of 2015 (Congress)
The STRONG Patents Act was introduced in the Senate in 2015 by Democratic Senator Christopher Coons of Delaware and assigned to the Senate Committee on Small Business and Entrepreneurship, as well as the Senate Judiciary Committee.
The full title of the bill is "A bill to strengthen the position of the United States as the world's leading innovator by amending title 35, United States Code, to protect the property rights of the inventors that grow the country's economy."
Currently the bills has 4 cosponsors (2 Democrats, 2 Republicans). GovTrack predicts that the STRONG Patents Act has a 4% chance of being enacted. Below are the main institutions that will be affected by the enactment of the STRONG Patents Act, as well as the other actions produced by the bill.
This bill mentions the terminology inter partes frequently; an inter partes review (IPR) is a procedure for challenging the validity of a United States patent before the United States Patent and Trademark Office. The procedure is conducted by the Patent Trial and Appeal Board (PTAB). The Bill also deals with Post Grant Review (more can be read on Post Grant Review below).
"Post Grant Review"
"Post grant review" is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting post grant review took effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA." (USPTO)
U.S. Patent and Trademark Office (USPTO)
The STRONG Patent Acts directs the U.S. Patent and Trademark Office (USPTO) to prescribe regulations requiring the Patent Trial and Appeal Board (PTAB) to construe patent claims in post-issuance proceedings for inter partes or post-grant review in the same manner as a court in a civil action is required to construe claims regarding the validity of a patent in accordance with the ordinary and customary meaning. The bill also requires that the USPTO consider a court's claim construction if the court has previously construed the claim in a civil action to which the patent owner was a party.
The bill prohibits post-issuance review petitions from being filed with the USPTO unless the person, or a real party in interest or privy of the person, is eligible to file: (1) a petition for an inter partes review because the person has been sued for or charged with infringement such that the petitioner would have standing to bring a declaratory judgment action in federal court, or (2) a petition for post-grant review because the person demonstrates a reasonable possibility of being sued for or charged with infringement or demonstrates a competitive harm related to the validity of the patent.
Patent Trial and Appeal Board (PTAB)
The act requires a patent owner's motion to amend a patent during a post-issuance review to be granted if the owner has not already amended the patent during the review and the proposed number of substitute claims is reasonable. STRONG also provides the PTAB with discretion to grant or deny any additional motions to amend the patent if the owner has already amended the patent during the review.
Under the bill, the PTAB would be required apply a presumption of validity standard during post-issuance challenges, thus placing the burden on the petitioner to prove "un-patentability" of: (1) a previously issued claim by clear and convincing evidence, and (2) an amended claim by a preponderance of the evidence. Currently, the preponderance of evidence standard applies to all such claims.
The bill prohibits post-issuance reviews from being heard by PTAB members who participated in a decision to institute the review.
The bill requires the Supreme Court to eliminate the model complaint for patent infringement.
Small Business Administration
The STRONG Patents Act directs the Small Business Administration to report on the impact of: (1) patent ownership by small businesses, and (2) civil actions against small businesses relating to patent infringement.
Administrative Office of U.S. Courts
The bill requires that the Administrative Office of U.S. Courts expand an existing pilot program to expedite and provide additional resources to cases in which an individual or small business is accused of patent infringement.
Federal Trade Commission
The bill directs the Federal Trade Commission, and authorizes state attorneys general, to enforce against the pattern or practice of sending written communications (commonly referred to as demand letters) that represent in bad faith that the recipient bears liability or owes compensation for infringing a patent. The bill also requires the practice of sending such bad faith demand letters to be treated as an unfair or deceptive act or practice in violation of the Federal Trade Commission Act.
Under the FTC Act, the Federal Trade Commission is empowered, among other things, to (a) prevent unfair methods of competition, and unfair or deceptive acts or practices in or affecting commerce; (b) seek monetary redress and other relief for conduct injurious to consumers; (c) prescribe trade regulation rules defining with specificity acts or practices that are unfair or deceptive, and establishing requirements designed to prevent such acts or practices; (d) conduct investigations relating to the organization, business, practices, and management of entities engaged in commerce; and (e) make reports and legislative recommendations to Congress.
Other Action Points
- Allows discovery for review proceedings to include evidence identifying the petitioner's real party in interest.
- Allows patent owners to present supporting evidence in a preliminary response to a petition for review.
- Prohibits inter partes or post-grant reviews while the patent is the subject of a reissue or reexamination proceeding.
- Requires reexamination requests to identify real parties in interest.
- Prohibits ex parte reexaminations if the request is filed more than one year after the requester, or a real party in interest or privy of the requester, is served with a complaint alleging infringement of the patent. (An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present.)
- Requires all patent and trademark fees to be credited to a revolving fund in the Treasury to be known as the United States Patent and Trademark Office Innovation Promotion Fund, which will be available to cover USPTO expenses without fiscal year limitation.
- Provides courts with discretion to increase damages awarded to a claimant up to three times the amount found by a jury or assessed by the court upon determining, by a preponderance of the evidence, that infringement was willful or in bad faith.
- Allows a finding of liability for actively inducing infringement of a process patent, or for contributory infringement of a process patent, even if the steps of the patented process are not practiced by a single entity.
- Provides micro entity status (such status makes certain small entities eligible for reduced patent fees) to certifying: (1) institutions of higher education; or (2) tax exempt, nonprofit organizations that hold title to patents and patent applications on behalf of such an institution of higher education for the purpose of facilitating commercialization of the technologies.