Senators Introduce Bipartisan Patent Bill

On September 29, 2021, Senator Patrick Leahy (D-Vt.) and Senator John Cornyn (R-Texas) introduced the Restoring the America Invents Act (the Act), which would change the proceedings made to the U.S. Patent and Trademark's office patent tribunal.

A statement by Senator Leahy boasted about the success of the Leahy-Smith America Invents Act (the ‘Leahy-Smith Act’), which was enacted ten years prior to the introduction of the Act and established the process of public challenge to the validity of a patent to ensure that no “poor-quality patents” were granted with the intention of decreasing competition and, as a result, unnecessarily increasing costs placed on the consumer. Accordingly, Senator Leahy stated the Restoring the America Invents Act would “build on and support”—but, not amend¾the processes established by the Leahy-Smith Act and enhance the United States Patent and Trademark Office's (PTO) review processes to enhance transparency and availability of patent and patent appeals to the public—without political or financial interference.

Specifically, the proposed amendments to the Act would:

• limit the PTO Director’s discretion regarding a denial of institution.

• expand the grounds for attaining a patent to include “admissions in the patent specification, drawings, or claims” and “statutory or obviousness-type double patenting[.]”

  • provide a list of factors that a district court [should review when?] presented with a request for a stay of a civil action. These factors include:

    • ‘‘(i) the outcome of the inter partes review will likely simplify the issues in question in the civil action and streamline the proceedings in the civil action;

    • ‘‘(ii) as of the date on which the stay is requested, discovery in the civil action is complete;

    • ‘‘(iii) a stay, or the denial thereof, would—

      • ‘‘(I) unduly prejudice the non moving party; or

      • ‘‘(II) present a clear tactical advantage for the moving party; and

    • ‘‘(iv) a stay, or the denial thereof, will reduce the burden of litigation on the parties to the civil action and the court.

  • impose a burden of proving the patentability by a preponderance of the evidence under sections 101, 102, 103, and 112.

  • provide that a lawsuit dismissed without prejudice will not trigger the 1-year deadline for filing an inter vivos review.

  • allow “a governmental entity” to petition for inter vivos review.

  • establish estoppel against the patent owner for any “claim that is not patentably distinct from a claim that was issued and was subsequently—

    • (i) found to be unpatentable; or

    • (ii) canceled in any proceeding before the Office, including under section 135, 251, 253, 301, 311, or 321.’”

  • prevent ex parte communication between an officer possessing “review authority, supervisory authority, or disciplinary authority with respect to an administrative patent judge of the Patent Trial and Appeal Board”  and a “judge who is a member of that panel concerning any pending matter before that panel.”

The bill has been read twice and referred to the Committee on the Judiciary. The Act would be enacted in 2022, if it secures the necessary votes. Businesses should undertake to review the specifics of the Act and consult legal counsel regarding any questions or concerns that they may have.