Co-author of Milgrim on Licensing and Milgrim on Trade Secrets and a Visiting Assistant Professor of Law at Hofstra University School of Law

The Patent Reform Act of 2007, potentially the first major reform of the patent laws in more than 50 years, would leave virtually no aspect of a patent practice untouched. Driven by concerns about patent quality and excessive litigation, the Act can plainly be seen as a marked setback for patentees accustomed to consistently advantageous treatment by the Court of Appeals for the Federal Circuit, though it may prove in practice to be less of a setback than some might expect. In discussing the implications of the Act, Eric E. Bensen writes that the principal issues addressed by the Act are:

• “First-to-File”. Converting the United States system from “first-to-invent” to “first-to-file.”
• Publication. Requiring the publication of all patent applications 18 months after filing.
• “Post-Grant” Review. Providing for a post-grant review opportunity under which third parties could challenge the validity of a patent in a proceeding before the Patent and Trademark Office (“PTO”).
• Venue. Limiting the venues in which a patentee could bring suit.
• “Prior Use” Defense. Expanding the availability of the “prior use” defense currently available when business method patents are asserted.
• Interlocutory Appeals. Giving the Federal Circuit jurisdiction over interlocutory appeals from district court claim construction rulings.
• Apportionment. Providing by statute for apportionment of patent damages in the rea-sonable royalty context.
• Willfulness. Limiting the circumstances under which an infringer could be held liable for willful infringement.

He further states that “Given the concerns that gave rise to it, i.e., the questionable quality of many patents and the excess of patent litigation, the PRA is distinctly pro-defendant and, naturally, has received much opposition from patent holders, most notably the ethical pharmaceutical companies (“Branded Pharma”). It has also found strong support among other patent holders, most notably, computer technology, software, memory device, etc. companies (the “Tech Industry”).” In his discussion, Mr. Bensen explores each issue in detail, discusses the rationale behind each issue, and identifies the probable winners and losers if the Act should become law.

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