Draft Report on Senate Patent Reform Bill: Late Patent Filings

    By Christopher P. Singer --

As we reported yesterday, a draft of the Senate Judiciary Committee's report on the Patent Reform Act of 2007 (S. 1145) has begun to circulate on the internet.  The 106-page draft report contains sections on the background and purpose of the bill, the legislative history of the bill, a section-by-section summary of the bill, a placeholder for a cost estimate, a regulatory impact evaluation, and a list of the changes to Titles 15, 28, and 35 that would result if the Senate bill were passed into law.  The circulation of the draft report suggests that Senator Patrick Leahy, Chairman of the Senate Judiciary Committee, intends to keep his mid-December patent reform bill pledge to seek "favorable Senate action as early as the floor schedule permits" (see "Patent Reform Discussed on Senate Floor").  In view of the length of the draft report, Patent Docs will be providing a discussion of selected sections of the bill over the next few days.  Today, we address section 13 of the bill.

Section 13 of the draft report expands the situations in which the Director would have authority to consider and accept filings that would otherwise be considered late.  As noted in the report, the current scope of the Director's authority is limited to revival of an application for unintentional delay; reinstatement of a patent for unintentional delay; revival for unintentional or unavoidable delay in submitting the filing fee or oath; and revival if failure to prosecute was unavoidable.  The proposed amendment, which would introduce 35 U.S.C. § 2(e), serves to expand the Director's authority to accept any filings which are considered late as long as the filer of the late items can demonstrate that the delay in filing was unintentional.

Under new 35 U.S.C. § 2(e) the Director is authorized to accept a late filing when the filer (1) files a petition within 30 days after the missed deadline, and (2) demonstrates to the satisfaction of the Director that the delay was unintentional.  If the Director fails to act on the petition within 60 days of its filing date, the petition is effectively denied.  The final decision on the request is at the discretion of the Director and cannot be appealed.  This new subsection would be enforced to the extent that it would not apply to any other provision of the patent or trademark laws that allow the Director to accept late filings, or to any statutory deadlines required by treaty.  The applicability of this amendment would be to any application or other filing that (1) is filed on or after the date of the enactment of the bill, or (2) on the date of enactment, is pending before the Director or is subject to judicial review.  In such cases, the 30-day period would start from the enactment of the bill.

According to the legislative history, this section was proposed as an amendment by Senator Kennedy.  Initially, the amendment was agreed to by unanimous consent, but subsequently Senators Grassley and Sessions changed their votes to no, which did not affect the outcome of the overall vote.

For additional information on the draft report, please see:

• "Draft Report on Senate Patent Reform Bill Circulated - Sections 9 and 15," January 14, 2008

For additional information regarding this topic, please see:

• "Patent Reform Discussed on Senate Floor," December 21, 2007
• "Enjoined New Rules and Patent Reform Finally Appearing on Biotech Industry's Radar," December 20, 2007
• "Chinese IP Judge Discusses Implications of U.S. Patent Reform Bill and Two Congressmen Heed Warning," December 17, 2007
• "IPO President Seeks Deletion of Patent Reform Provision," December 12, 2007
• "Senate May Act on Patent 'Reform' Bill in the New Year," December 2, 2007
• "The Wall Street Journal Gets It Half Right," November 5, 2007
• "BIO CEO Provides Briefing on Follow-On Biologics and Patent Reform," September 18, 2007
• "Patent 'Reform' Bill Passes House of Representatives," September 9, 2007
• "Reversal in Microsoft Case Weakens Patent Reform Argument," August 7, 2007
• "San Francisco Chronicle Opines on Patent Reform," August 6, 2007
• "Patent Reform Bill to Be Delayed?" June 12, 2007
• "Senate Judiciary Committee Holds Hearing on Patent Reform," June 10, 2007
• "Could Creating a U.S. 'Utility Model' Patent Fulfill the 'Need' for Patent Law Reform?" May 21, 2007

Comments

[David]

Too bad. I wish they had simply adopted and reaffirmed the current unintentional abandonment/late filing practice and made it retroactive to do away with the Aritocrat v. IGT issue.

[Chris Singer]

David- I think you are right to assume that this would give explicit statutory authority to the PTO to consider accepting late filings, such as presented to the court in the Aristocrat v. IGT case. It'll be interesting to see how the Federal Circuit deals with this issue on appeal. Also, the language of the amended section appears to give a lot of room for the Director's discretion concerning each petition/request. Perhaps the threshold showing for these type of petitions will be high (or higher than revival because of unintentional abandonment)? Thanks for the comment.