On June 23, 2011, the House of Representatives voted to enact patent reform. Patent reform now seems to be a certainty. The House bill (H.R. 1249) is quite similar to the Senate version (S. 23) which previously passed earlier in the year. Ordinarily, the bills would now go to the joint Conference Committee to iron out the differences. Because both houses have passed companion patent reform bills, this revised bill out of the Conference Committee should pass both houses and will be signed by the President.
Common features of the two bills include
• A change in priority where two inventors, or sets of inventors, come up with the same invention and separately seek patent protection for that invention. Both versions provide that the U.S. should harmonize with all other countries, to award priority to the first party to file its application to obtain patent protection instead. • Allowing administrative proceedings after the patent issues to cancel the patent for invalidity (called post-grant review); • Requiring the trial court to set out the methodology for determining damages; • Eliminating invalidity challenges when an inventor fails to disclose the best mode of the invention known to the inventor; • Allowing corporations to file patent applications for inventions created by their employee-assignors. • Ending “false marking” suits by non-competitors, thus eliminating “bounty-hunter” suits by non-injured parties who claim a portion of the damages awarded by the court.The most significant difference in the bills is the fee-diversion issue. This was one of the main reasons for support among some industry groups, to speed the process of patent issuances by ensuring adequate funding of the Patent and Trademark Office. The Senate bill provides that the Patent Office may use all funds it collects, without diversion to other departments in the government. The House bill on the other hand sets up a fund from the fees but requires Congressional approval to tap into it. Other critics attacked the constitutionality of the "first to invent" centerpiece of the bill, but both versions incorporate this change.