Legislation Interest Group Report: Extract

• Jurisdiction: United States,Federal
• Publication year: 2014
• Citation: Vol. 39 No. 1

Legislation Interest Group Report: Extract

The Interest Groups of the IP Law Section are responsible for delivering programming on the designated subject matter of the committee, networking among members, building community, alerting Section members to hot topics and law updates, and increasing the opportunities for Section members to volunteer and become involved with the Section through Interest Group activities.

The following is extracted from the report by the Legislation Interest Group, the chair of which is Ben Borson (who prepared the report) and the vice chair is Mark Leonard.

RECENT MEETINGS, ACTIVITIES, AND EVENTS:

Federal Law Innovation Act H.R. 3309

On October 23, 2013, Representative Goodlatte of Virginia introduced a new bill into the House (H.R. 3309). On December 5, 2013, the House passed the Innovation Act by a vote of 325 to 91. Prior to its passage, an amendment was offered and passed to restore the right of an aggrieved patent applicant to sue the USPTO in district court. A second amendment will require claimants to provide additional disclosure of an alleged willful infringement in a pre-suit notification (e.g., a cease and desist letter). A third amendment requires the Director of the USPTO to carry out a study of the economic impact the Act on individuals, and small businesses owned by women, veterans, and minorities to protect their "constitutionally guaranteed exclusive right in their inventions.

The Senate is considering a companion bill sponsored by Senators Leahy, Lee, and Whitehouse (S.1720).

Patent Transparency and Improvements Act of 2013

S.1720 was introduced by Senator Leahy as a companion to H.R. 3309. There are some substantive differences between the House and Senate versions. One provision of the proposed legislation would require that any patentee filing suit in Federal Court would be required to disclose any and all persons that have a financial interest in the controversy or in a party to the proceeding. Also, assignment of substantial rights in an issued patent would require the recording of the name of the assignee and the ultimate parent entity of the assignee with the USPTO within three months of the assignment. The proposed penalty would be to bar the plaintiff from recovering enhanced damages or attorney fees that are expended during a period of non-compliance.

Another provision would allow a customer to stay an infringement case against it, provided the manufacturer of the product at issue agrees to take the...