CRS Reviews Patent Reform Legislation in 112th Congress

Congressional interest in patent reform has increased as the patent system becomes more significant to U.S. industry. Patent ownership is perceived as an incentive to the technological advancement that leads to economic growth. Yet, this augmented attention to patents has been accompanied by persistent concerns about the fairness and effectiveness of the current system. Several studies, including those by the National Academy of Sciences and the Federal Trade Commission, recommended reform of the patent system to address perceived deficiencies in the operation of the patent regime. Other experts maintain that major alterations in existing law are unnecessary and that the patent process can adapt, and is adapting, to technological progress.

Two omnibus patent reform bills introduced in the 112^th Congress, each titled the America Invents Act, would make significant changes to the patent system. Both S. 23 and H.R. 1249 would adopt a first-inventor-to-file priority system, allow assignee filing, establish USPTO fee-setting authority, provide for post-issuance review proceedings at the USPTO, and introduce other reforms. Several of these proposals have been the subject of discussion within the patent community for many years, but others present more novel propositions.

Although S. 23 and H.R. 1249 have many similarities, the two bills differ in some respects. For example, S. 23 would address the residency requirement of judges serving on the U.S. Court of Appeals for the Federal Circuit, while H.R. 1249 would not. Unlike S. 23, H.R. 1249 would significantly broaden patent law's first inventor defense. Other distinctions with respect to USPTO post-issuance review proceedings and other topics exist as well.

While the provisions of the proposed legislation would arguably institute the most sweeping reforms to the U.S. patent system since the nineteenth century, many of these proposals, such as pre-issuance publication and prior user rights, have already been implemented in U.S. law to a more limited extent. These and other reforms, such as the first-inventor-to-file priority system and post-grant review proceedings, also reflect the decades-old patent practices of Europe, Japan, and our other leading trading partners.

Some observers are nonetheless concerned that certain of these provisions would weaken patent rights, thereby diminishing incentives for innovation. Other experts believe that changes of this magnitude, occurring at the same time, do not present the most prudent course for the patent system. Patent reform therefore confronts Congress with difficult legal, practical, and policy issues, but also with apparent possibilities for altering and possibly improving the legal regime that has long been recognized as an engine of innovation within the U.S. economy.

                            Contents

Congressional interest in patent reform is evidenced by sustained legislative activity over the last four congresses.¹ There is broad agreement that more patents are sought and enforced than ever before; that the attention paid to patents in business transactions and corporate boardrooms has dramatically increased; and that the commercial and social significance of patent grants, licenses, judgments, and settlements are at an all-time high.² As the United States becomes even more of a high-technology, knowledge-based economy, the importance of patents may grow even further in the future.

Expanded attention to patents has been accompanied by persistent concerns about the fairness and effectiveness of the current system. The American Inventors Protection Act, passed in the 106^thCongress, mandated several changes to the patent laws, including U.S. Patent and Trademark Office (USPTO) publication of certain patent applications prior to grant and patent term restoration for delays caused by the USPTO during grant proceedings.³ Several studies completed since the enactment of that legislation, including those by the National Academy of Sciences and the Federal Trade Commission, have recommended additional legal reforms to address perceived deficiencies in the operation of the patent regime.⁴ Other experts maintain that major alterations in existing law are unnecessary and that the patent process can adapt, and is adapting, to technological progress.

Legislation introduced in the 112^th Congress attempts to respond to current concerns about the functioning of the patent process. S. 23, originally titled the Patent Reform Act of 2011, now the America Invents Act, was introduced on January 25, 2011. S. 23 was reported, amended, from the Senate Committee on the Judiciary on February 3, 2011. Consideration of the bill on the Senate floor commenced on February 28, 2011; S. 23 passed the Senate, as amended, on March 8, 2011. H.R. 1249, also titled the American Invents Act, was introduced on March 30, 2011. It was ordered reported from the House Committee on the Judiciary on April 14, 2011.

S. 23 and H.R. 1249 have many provisions that are worded similarly or identically. Both S. 23 and H.R. 1249 would adopt a first-inventor-to-file priority system, allow assignee filing, establish USPTO fee-setting authority, provide for post-issuance review proceedings at the USPTO, and introduce other reforms. However, the bills differ in some respects. For example, S. 23 would address the residency requirement of judges serving on the U.S. Court of Appeals for the Federal Circuit, while H.R. 1249 would not. Unlike S. 23, H.R. 1249 would significantly broaden patent law's first inventor defense. Other distinctions with respect to USPTO post-issuance review proceedings and other topics exist as well.

Two additional bills in the 112^th Congress are directed to a single topic that is addressed within the more comprehensive provisions of S. 23 and H.R. 1249. The Patent Lawsuit Reform Act of 2011, H.R. 243, would also limit the currently available cause of action for false patent marking. As well, S. 139 (not yet titled) would place restrictions upon the availability of patents on tax strategies and is comparable to section 14 of S. 23. Appropriate sections of this report review H.R. 243 and S. 139. In the event additional patent reform bills are introduced, this report will be updated to address them.

This study provides an overview of current patent reform issues. It begins by offering a summary of the structure of the current patent system and the role of patents in innovation policy. The specific components of this legislation are then identified and reviewed in greater detail. The report closes with a review of some of the broader issues and concerns, including patent quality, the high costs of patent litigation, international harmonization, and speculation in patents, which have motivated these diverse legislative reform proposals.

Patents and Innovation Policy

The Mechanics of the Patent System

The patent system is grounded in Article I, Section 8, Clause 8 of the U.S. Constitution, which states that "The Congress Shall Have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . . . " As mandated by the Patent Act of 1952,⁵ U.S. patent rights do not arise automatically. Inventors must prepare and submit applications to the U.S. Patent and Trademark Office (USPTO) if they wish to obtain patent protection.⁶ USPTO officials known as examiners then assess whether the application merits the award of a patent.⁷ The patent acquisition process is commonly known as "prosecution."⁸

In deciding whether to approve a patent application, a USPTO examiner will consider whether the submitted application fully discloses and distinctly claims the invention.⁹ In addition, the application must disclose the "best mode," or preferred way, that the applicant knows to practice the invention.¹⁰ The examiner will also determine whether the invention itself fulfills certain substantive standards set by the patent statute. To be patentable, an invention must consist of a process, machine, manufacture, or composition of matter that is useful, novel and nonobvious.

The requirement of usefulness, or utility, is satisfied if the invention is operable and provides a tangible benefit.¹¹ To be judged novel, the invention must not be fully anticipated by a prior patent, publication or other state-of-the-art knowledge that is collectively termed the "prior art."¹² A nonobvious invention must not have been readily within the ordinary skills of a competent artisan at the time the invention was made.¹³

If the USPTO allows the patent to issue, the patent proprietor obtains the right to exclude others from making, using, selling, offering to sell or importing into the United States the patented invention.¹⁴ Those who engage in these acts without the permission of the patentee during the term of the patent can be held liable for infringement. Adjudicated infringers may be enjoined from further infringing acts.¹⁵ The patent statute also provides for the award of damages "adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer."¹⁶

The maximum term of patent protection is ordinarily set at 20 years from the date the application is filed.¹⁷ At the end of that period, others may employ that invention without regard to the expired patent.

Patent rights are not self-enforcing. Patentees who wish to compel others to observe their rights must commence enforcement proceedings, which most commonly consist of litigation in the federal courts. Although issued patents enjoy a presumption of validity, accused infringers may assert that a patent is invalid or unenforceable on a number of grounds.¹⁸ The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) possesses national jurisdiction over most patent appeals from the district courts.¹⁹ The U.S. Supreme Court enjoys discretionary authority to review cases decided by the Federal Circuit.²⁰

Innovation Policy

Most experts agree that patent ownership is an incentive to innovation, the basis for the technological advancement that contributes to economic growth. It is through the commercialization and use of new products and processes that productivity gains are made and the scope and quality of goods and services are expanded. Award of a patent is intended to stimulate the investment necessary to develop an idea and bring it to the marketplace embodied in a product or process. Patent title provides the recipient with a limited-time monopoly over the use of his discovery in exchange for the public dissemination of information contained in the patent application. This is intended to permit the inventor to receive a return on the expenditure of resources leading to the discovery but does not guarantee that the patent will generate commercial benefits. The requirement for publication of the patent is expected to stimulate additional innovation and other creative means to meet similar and expanded demands in the marketplace.

Innovation produces new knowledge. One characteristic of this knowledge is that it is a "public good," a good that is not consumed when it is used. This "public good" concept underlies the U.S. patent system. Absent a patent system, "free riders" could easily duplicate and exploit the inventions of others. Further, because they incurred no cost to develop and perfect the technology involved, copyists could undersell the original inventor. The resulting inability of inventors to capitalize on their inventions would lead to an environment where too few inventions are made.²¹ The patent system corrects this market failure problem by providing innovators with an exclusive interest in their inventions for a period of time, thereby allowing them to capture the innovation's marketplace value.

The regime of patents purportedly serves other goals as well. The patent system encourages the disclosure of products and processes, for each issued patent must include a description sufficient to enable skilled artisans to practice the patented invention.²² At the close of the patent's 20-year term,²³ others may practice the claimed invention without regard to the expired patent. In this manner the patent system ultimately contributes to the growth of the public domain.

Even during their term, issued patents may also encourage others to "invent around" the patentee's proprietary interest. A patentee may point the way to new products, markets, economies of production and even entire industries. Others can build upon the disclosure of a patent instrument to produce their own technologies that fall outside the exclusive rights associated with the patent.²⁴

The patent system has also been identified by legal observers as a facilitator of markets. Absent patent rights, an inventor may have scant tangible assets to sell or license. In addition, an inventor might otherwise be unable to police the conduct of a contracting party. Any technology or know-how that has been disclosed to a prospective licensee might be appropriated without compensation to the inventor. The availability of patent protection decreases the ability of contracting parties to engage in opportunistic behavior. By lowering such transaction costs, the patent system may make technology-based transactions more feasible.²⁵

Through these mechanisms, the patent system can provide more socially desirable results than its chief legal alternative, trade secret protection. Trade secrecy guards against the improper appropriation of valuable, commercially useful and secret information. In contrast to patenting, trade secret protection does not result in the disclosure of publicly valuable information. That is because an enterprise must take reasonable measures to keep secret the information for which trade secret protection is sought. Taking the steps necessary to maintain secrecy, such as implementing physical security measures, also imposes costs that may ultimately be unproductive for society.²⁶

The patent system has long been subject to criticism, however. Some observers have asserted that the patent system is unnecessary due to market forces that already suffice to create an optimal level of innovation. From this perspective, the desire to obtain a lead time advantage over competitors, as well as the recognition that technologically backward firms lose out to their rivals, can provide sufficient inducement to invent without the need for further incentives.²⁷ Other commentators believe that the patent system encourages industry concentration and presents a barrier to entry in some markets.²⁸ Still other observers believe that the patent system too frequently attracts speculators who prefer to acquire and enforce patents rather than engage in socially productive activity.²⁹

When analyzing the validity of these competing views, it is important to note the lack of rigorous analytical methods available for studying the effect of the patent law upon the U.S. economy as a whole. The relationship between innovation and patent rights remains poorly understood. As a result, current economic and policy tools do not allow us to calibrate the patent system precisely in order to produce an optimal level of investment in innovation. Thus, each of the arguments for and against the patent system remains open to challenge by those who are not persuaded by their internal logic.

Proposed Legislative Initiatives

S. 23 and H.R. 1249 include numerous substantive, procedural, and technical amendments to the patent laws. The following table identifies and contrasts the principal provisions of the two bills.

         Table 1. Principal Provisions of S. 23 and H.R. 1249

In recent years, the USPTO has issued patents on financial, investment, and other methods that individuals might use in order to minimize their tax obligations.¹²⁴ The so-called "SOGRAT" patent, U.S. Patent No. 6,567,790, has been identified as one such "tax planning method" patent. The SOGRAT patent is titled "[e]stablishing and managing grantor retained annuity trusts funded by nonqualified stock options." The patent's abstract explains that it concerns:

On the other hand, some commentators explain that patents concerning the broader category of "business methods" have been obtained and enforced for many years.¹²⁹ Legislation enacted in 1999 that accounted expressly for patents claiming "a method of doing or conducting business" arguably approved of such patents.¹³⁰ Some observers believe that tax planning method patents present a positive development offering taxpayers access to a variety of legal tax minimizing strategies. In addition, these patents may potentially improve the public disclosure of tax shelters for the attention of Congress and federal tax authorities.¹³¹ Other experts assert that many kinds of patents, on subject matter ranging from automobile seat belts to airplane navigation systems, potentially involve legal compliance.¹³²

Under S. 23 and H.R. 1249, for purpose of evaluating whether an invention meets the requirements of novelty and nonobviousness, "any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art."¹³³ Under this rule, unless a tax strategy patent claimed an additional component that met the novelty and nonobviouness requirements -- such as new computer hardware -- then the invention could not be patented. S. 23 and H.R. 1249 stipulate that this provision does not apply to that part of an invention "used solely for preparing a tax or information return or other tax filing . . . ." A stand-alone bill, S. 139, would act similarly.

H.R. 1249 includes additional provisions not found in the Senate bills. First, the House bill stipulates that the tax strategy patent provision does not apply to "a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax adviser." H.R. 1249 also includes language stating that "[n]othing in this section shall be construed to imply that other business methods are patentable or that other business-method patents are valid."

² Statistics from the United States Patent and Trademark Office (USPTO) support this account. In 1980, 104,329 utility patent applications were received at the U.S. Patent and Trademark Office (USPTO); by 2009, this number had more than quadrupled to 456,106 applications. During the same time period, the number of U.S. utility patents granted grew from 61,819 to 167,349. U.S. Patent and Trademark Office, U.S. Patent Statistics, Calendar Years 1963-2009, available at http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.pdf.

³ The American Inventors Protection Act of 1999, P.L. 106-113, was part of the Intellectual Property and Communications Omnibus Reform Act of 1999, attached by reference to the Consolidated Appropriations Act for Fiscal Year 2000. President Clinton signed this bill on November 29, 1999.

⁴ National Research Council, National Academy of Sciences, A Patent System for the 21^st Century [Washington, National Academies Press, 2004] and Federal Trade Commission, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, October 2003, available at http://www.ftc.gov.

⁵ P.L. 82-593, 66 Stat. 792 (codified at Title 35 United States Code).

⁶ 35 U.S.C. § 111.

⁷ 35 U.S.C. § 131.

⁸ John R. Thomas, "On Preparatory Texts and Proprietary Technologies: The Place of Prosecution Histories in Patent Claim Interpretation," 47 UCLA Law Review (1999), 183.

⁹ 35 U.S.C. § 112.

¹⁰Ibid.

¹¹ 35 U.S.C. § 101.

¹² 35 U.S.C. § 102.

¹³ 35 U.S.C. § 103.

¹⁴ 35 U.S.C. § 271(a).

¹⁵ 35 U.S.C. § 283.

¹⁶ 35 U.S.C. § 284.

¹⁷ 35 U.S.C. § 154(a)(2). Although patent term is based upon the filing date, the patentee gains no enforceable legal rights until the USPTO allows the application to issue as a granted patent. A number of Patent Act provisions may modify the basic 20-year term, including examination delays at the USPTO and delays in obtaining marketing approval for the patented invention from other federal agencies.

¹⁸ 35 U.S.C. § 282.

¹⁹ 28 U.S.C. § 1295(a)(1).

²⁰ 28 U.S.C. § 1254(1).

²¹See Rebecca S. Eisenberg, "Patents and the Progress of Science: Exclusive Rights and Experimental Use," 56 University of Chicago Law Review 1017 (1989).

²² 35 U.S.C. § 112.

²³ 35 U.S.C. § 154.

²⁴ Eisenberg, supra, at 1017.

²⁵ Robert P. Merges, "Intellectual Property and the Costs of Commercial Exchange: A Review Essay," 93 Michigan Law Review (1995), 1570.

²⁶ David D. Friedman et al., "Some Economics of Trade Secret Law," 5 Journal of Economic Perspectives (1991), 61.

²⁷See Jonathan M. Barnett, "Private Protection of Patentable Goods," 25 Cardozo Law Review (2004), 1251.

²⁸See John R. Thomas, "Collusion and Collective Action in the Patent System: A Proposal for Patent Bounties," University of Illinois Law Review (2001), 305.

²⁹Ibid.

* * *

¹¹⁹ Aventis Pharma S.A. v. Amphastar Pharmaceuticals, Inc., 525 F.3d 1334, 1341 n.6 (Fed. Cir. 2008).

¹²⁰ 28 U.S.C. § 44(c).

¹²¹ S. 23 at § 11.

¹²² 28 U.S.C. § 1295(a)(1).

¹²³ Marcia Coyle, "Court's Residency Rule May Fall: Federal Circuit Rule Limits Bench Talent," 29 National Law Journal no. 44 (July 9, 2007), 1.

¹²⁴See CRS Report RL34221, Patents on Tax Strategies: Issues in Intellectual Property and Innovation, by John R. Thomas.

¹²⁵See, e.g., Jo-el J. Meyer, "Proliferation of Retirement Plan Patents Poses Problems for Practitioners," Patent, Trademark, & Copyright Journal (BNA June 8, 2007), 186; Wealth Transfer Group LLC v. Rowe, D. Conn., No. 3:06cv00024 (AWT), filed January 6, 2006.

¹²⁶See Letter from Jeffrey R. Hoops, Chair, American Institute of Certified Public Accountants Tax Executive Committee, to Members of Congress (February 28, 2007) (available at http://www.macpa.org/content/Public/Documents/PDF/aicpa_tax030607.pdf).

¹²⁷See Letter from Kimberly S. Blanchard, Chair, New York State Bar Association Tax Section, to Members of Congress (August 17, 2006) (available at http://www.nysba.org/Content/ContentGroups/Section_Information1/Tax_Section_Reports/1115rpt.PDF).

¹²⁸See William A. Drennan, "The Patented Loophole: How Should Congress Respond to This Judicial Invention?," 59 Florida Law Review (2007), 229.

¹²⁹See Andrew F. Palmieri & Corinne Marie Pouliquen, "A Primer on Business Method Patents: What You Need to Know for Your Real Estate Practice," 21 Probate and Property (May/June 2007), 26.

¹³⁰ First Inventor Defense Act of 1999, P.L. 106-113, § 4302, 113 Stat. 1501 (codified at 35 U.S.C. § 273 (2006)).

¹³¹ Drennan, supra, at 328 (noting this argument).

¹³² Stephen T. Schreiner & George Y. Wang, "Discussions on Tax Patents Have Lost Focus," IP Law 360 (available at http://www.hunton.com).

¹³³ S. 23 at § 14; H.R. 1249 at § 13.