On March 3, 2009, H.R. 1260 and S. 515 were introduced in Congress. These bills are similar to patent reform legislation introduced, but not enacted, in prior years. Both bills include provisions for transition from a “first to invent” to a “first to file” system.
Importantly, each bill includes a post-grant review procedure, similar to past legislation, but which is limited to review within 12 months of the issue date of a patent. In other words, no “second window” of review would be available when an accused infringer is notified of potential infringement after one year has passed.
Other provisions include changes to the manner in which courts calculate damages in patent infringement cases, thus requiring in most circumstances that a reasonable royalty be calculated based on a value attributed to the claimed invention’s specific contribution over the prior art, instead of considering the entire market value. Also, a willfulness determination would be required to satisfy specific criteria and could be defeated based on a defendant’s good faith belief that a patent was invalid, unenforceable, or not infringed. Additional provisions include changes to venue requirements and interlocutory appeals.