Senate Introduces Patent Reform Bill that would maintain BRI standard in Patent Office Trials

May 07, 2015

On April 29, 2015, the Judiciary Committee of the Senate introduced an anti-patent troll bill (Protecting American Talent and ENTrepreneurship Act — or PATENT Act — S.1137).  The Senate bill is very different from a competing bill that was introduced by the House of Representatives in February.  Focusing on patent office trials, highlights from the bill are:

Like the House bill, the Senate bill would reduce the estoppel provision for a PGR petitioner.  This would-allow patent challengers to start PGR proceedings without the substantial “chilling” effect of not knowing how far estoppel would apply, should the PGR prove unsuccessful.

Unlike the House bill, the Senate bill does not include provisions that would change the the claim scope in IPR and PGR to the Philips v. AWH (Fed. Cir. 2005)(en banc.) standard used in district court litigation, rather than the Broadest Reasonable Interpretation (BRI) standard that the USPTO currently uses when an unexpired patent is involved in a IPR or PGR proceeding.

We’ll be watching the competing House and Senate bills as they progress.


John Bird


John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the ‎protection and enforcement of designs and a wide range of electrical and mechanical technologies, ‎including analytical/measurement systems, medical ‎devices, HVAC systems, printers/copiers, ‎telecommunications systems, ‎data recording mediums, semiconductor fabrication, bearings, ‎welding ‎processes, sports equipment, footwear, and various automobile ‎components, such as tires, ‎transmissions, engines, fuel-injection systems, ‎motors, lamps, steering systems, connectors/wiring, ‎valves, and ‎control/monitoring systems. ‎

See his full biography here.