Draft Report on Senate Patent Reform Bill: Assignee Filings, Mandatory Publication, and Third Party Submissions

    By Donald Zuhn --

As we reported on Monday, 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 sections 3 and 7 of the bill.

Noting that patent applications are now commonly assigned to corporate entities, most frequently the inventor's employer, and that many employment contracts require employees to assign their inventions to their employer, the draft report contends that it is time that U.S. patent law be changed to eliminate the "antiquated notion" that it is the inventor who files the application.  The draft report also notes that corporate assignees sometimes have difficulty locating inventors and obtaining their signatures for the oath or declaration that must be submitted with an application.

Section 3, entitled "Inventor's oath or declaration," would allow an "obligated assignee" (i.e., a person to whom the inventor is obligated to assign, but has not assigned, rights to the invention) to submit a substitute statement in place of the oath or declaration when the inventor is unable to do so or is both unwilling to do so and under an obligation to assign the invention.  In addition, section 3 allows obligated assignees (or a person having a sufficient proprietary interest in an invention) to file a patent application.

Section 7, entitled "Submissions by third parties and other quality enhancements," provides two additional changes to U.S. patent law.  First, this section institutes mandatory publication by eliminating prior publication exemptions.  In justifying the change, the draft report asserts that "[t]he publication of patent applications is beneficial to both the patent community and the general public, since it promotes the disclosure benefit of the patent system and allows the public (including competitors) to learn for which inventions patents are being sought."  The second change to be introduced under this section of the bill concerns third-party submissions.  Explaining that restrictions in current U.S. patent law often deter third parties from submitting information relevant to the examination of pending applications, the Senate bill would allow third parties to submit more than just patents or publications, and to provide explanations as to why prior art is being submitted.

For additional information on the draft report, please see:

• "Late Patent Filings - Section 13" January 15, 2008
• "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