The Senate returned from recess Tuesday and immediately took up the issue of patent reform. With a large margin of 93-5, the Senate invoked cloture on the reform bill already passed by the House, namely H.R. 1249. The invocation of cloture means that substantial restrictions have been put in place surrounding the Senate’s debate of H.R. 1249, including a limit on the amount of time that any such debate can last. Tuesday’s important cloture vote therefore sets the stage for the Senate to actually vote on H.R. 1249 within the next few days. Because that vote will likely pass, and because the President has already indicated his approval of the bill, patent reform appears to have finally overcome the hurdles that have prevented its passage in years past.
One of those hurdles has been controversy over what to do with fees that the US Patent Office collects. For years, Congress has diverted these fees away from the Patent Office and toward federal programs and operations that are important, but entirely unrelated to the Patent Office. This fee diversion has limited the Patent Office’s ability to retain the personnel and technology needed to tackle the ever increasing number of patent applications being filed.
If patent reform indeed passes as described in H.R. 1249, Congress will put an end to fee diversion. The Patent Office will be able to set its own fees and, more importantly, keep the fees that it collects. Congress will, however, maintain at least some oversight on those fees. Any fees collected over budget will be held in an account reserved for use by the Patent Office. But the Patent Office must ask Congress for permission to access that money.
Other significant changes accompanying imminent patent reform include a transition from a first-to-invent system to a first-to-file system, an expansion in the prior art that can be cited against patent applications, and an overhaul of the post-grant review process. Coats + Bennett explains these important changes and explores the resulting implications in a presentation that is accessible here.