As you are aware, on March 8, 2011 the senate passed S.23 bill on Patent Reform entitled “America Invents Act.” The matter is now with the House of Representatives. On Wednesday, March 30, 2011, the House Subcommittee on Intellectual Property of the House Judiciary Committee introduced a revised version of the Senate bill. The bills are very similar in nature but have several differences.
The most pertinent changes are as follows. First is that the post grant review window in the House bill is 12 months. This contrasts with the 9 month window in S.23. In addition, the standard to be used for inter partes review proceedings in the House bill is a standard of an SNQ, or substantial new question of patentability. In S.23 the standard for granting a petition for inter partes review is the stricter standard that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims. Moreover, the House bill has expanded prior user’s rights by deleting the phrase “the term ‘method’ means a method of doing or conducting business”. We will keep you appraised of developments in the House bill as they occur.
For a full version of the House Bill, please click here.