Lawmaker Seeks to Expand Post-Grant Reviews

Senator Charles Schumer recently introduced legislation that would expand the scope of covered business methods eligible for post-grant review.  The “Patent Quality Improvement Act of 2013” would also remove the sunset provision and make the program permanent.

Post-grant review procedures allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Schumer’s bill would expand the availability of post-grant review by amending the definition of “covered business methods” to remove the phrase “financial product or service.” The new definition would read as follows:

IN GENERAL- For purposes of this section, the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of an enterprise, product, or service, except that the term does not include patents for technological inventions. (Emphasis added)

If the bill passes, it would then be up to the USPTO to provide precise definitions for the new terms.  While Senator Schumer has stated that the bill would “crackdown on ‘patent trolls’” by providing “small technology start-ups with the opportunity to efficiently address [infringement suits] outside of the legal system,” it has the potential to benefit a wide variety of patent holders.

In addition to this bill there are several others that are pending votes as well:

Manufacturing Innovation in America Act of 2013 (H.R. 2605)

Patent Abuse Reduction Act of 2013 (S. 1013)

End Anonymous Patents Act (H.R. 2024)

Patent Litigation and Innovation Act of 2013 (H.R. 2639)

MODDERN Cures Act of 2013 (H.R. 3091)

PATENT Jobs Act (H.R. 2582)

STOP Act (H.R. 2766)

PACES Act (S. 1478)

PARTS Act (S.780)

Medical Innovation Prize Fund Act (S. 627)

I will keep you updated as the bills are passed or defeated.

How Can I Help?

For detailed advice about post-grant proceedings, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

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