On April 14, 2005, the House Subcommittee on Courts, the Internet, and Intellectual Property released a draft version of sweeping changes in patent reform legislation to be considered in House hearings on April 20th and April 28th. The draft bill includes the following main provisions:

Post Grant Opposition. The bill would establish a post-grant opposition procedure to permit a challenge to a patent at the PTO within nine months of its issuance, and would require the opposition to be concluded within one year of its initiation. The opposition is similar to that described in the Berman Bill from 2004, except that a provision to also allow an opposition at the time of a notice letter or litigation is not included. Oppositions would not be available until one year after enactment.

First to File. The bill would adopt the first to file system of other countries. This would eliminate interferences, except to determine if the first to file is an inventor, and didn't derive it from someone else. Section 102 would be modified to drop provisions dependent upon invention dates.

Best Mode. The best mode requirement is eliminated, to conform to other countries.

Inequitable Conduct. Inequitable conduct cannot be plead until there is a finding of invalidity, and only serious inequitable conduct can be pursued in litigation, with lesser inequitable conduct being referred to the Patent Office. A new administrative procedure in the patent office is provided to deal with inequitable conduct, with civil penalties up to $1 million, or $5 million or more for egregious conduct.

Willful Infringement. Mere knowledge of a patent's contents is explicitly said to be not enough for willful infringement. Factors to be considered to determine willfulness include: (1) written notice of a charge of infringement; (2) intentional copying; or (3) a prior judicial proceeding in which the same conduct by the defendant was alleged to be infringing. Codifies the Knorr Bremse ruling of no adverse inference from not introducing an opinion of counsel.

Limits on broadening claims in continuations. Broader claims cannot be added after publication, issuance or after 12 months from the priority date.

Irreparable harm for injunctions. A finding of irreparable harm is required, it can't be presumed.

Inter Partes Reexam. The estoppel for inter partes reexamination is limited to grounds actually raised, not those that could have been raised. Also, inter partes reexamination will apply to any patent, eliminating the current limitation to only patents issuing after the original enactment date of Nov. 9, 1999.

All applications published. The exception to publication where there will be no foreign filing is eliminated.

Royalties or damages for components. Where the infringing item is a component of a product or method, damages are not to be based on the entire product or method (entire market value rule), but only the value attributable to the invention.

Filing application by assignee. A patent application can be filed in the name of an assignee, rather than the inventors, as is the practice in other countries.

Click here to read the Committee Print.