As with previous patent reform bills, the 2011 bill proposes changes to how granted patents can be challenged by third parties (through processes that are referred to as post-grant review and inter partes ('between the parties') review. At present, the US patent system does not have an administrative proceeding for opposing granted patents — challenges currently take place through litigation in court, which is often costly and time-consuming. By adopting new post-grant review procedures, patent validity could be challenged through the US Patent and Trademark Office (PTO), which is similar to how patents can be currently challenged in the European Union and Japan. However, a major difference in this bill compared with previous years' bills is that a higher threshold must be met before the PTO will review granted patents. In particular, the bill proposes that it must be “reasonably likely” that the review procedures would find the patent invalid. The aim of this amendment is to prevent or reduce spurious or non-meritorious challenges to patent validity; the possibility of such challenges had raised concerns (for example, by some senators and by the Biotechnology Industry Organisation) with some of the patent reform acts of previous years.
As with previous years' bills, the 2011 bill aims to move US patent law from a 'first to invent' system to a 'first to file' system. Currently, US patents are awarded to the companies or individuals who are the first to invent — and determining this can sometimes be difficult — but the proposed changes would mean that patents would be awarded to those companies or individuals who were first to file the application for a particular invention. This change would harmonize the patent system of the United States with those of most other countries. Also, similarly to past bills, the 2011 version proposes a new way of calculating damages that are awarded to infringed parties. This year's amendments aim to provide more certainty in the proposed procedures; namely, the court will ensure that only “methodologies and factors” that are legally relevant are considered in damage calculations. The bill now moves to the full US Senate for consideration.
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