William John Stoffel Esq.

The amendments released include:

• “Best Mode” – eliminates ‘best mode’ as a ground for invalidating a patent, but maintains it as a requirement to obtain a patent
• Ex Parte Provision – restores third party ex-parte reexamination
• Federal Circuit Judges – ensures that any Federal Circuit judge who does not reside within a 50-mile radius of Washington, DC, must use the chambers of an existing courthouse in the district where they reside
• Interference – technical amendment to allow for appeal to the Federal Circuit of USPTO board interference decisions commenced prior to the date of the Act
• Interference – amends the bill to delete interference-related provisions and replace with new derivation-related provisions
• Interlocutory Appeals – limits interlocutory appeals of claim construction orders to those for which the District Court determines there is a reasonable basis for disagreement and the appeal may advance the ultimate termination of the litigation
• Marking Provision – deletes the marking provision in the bill and maintains the current law
• “Objective Recklessness” – codifies the Federal Circuit court’s ruling in Seagate, holding that infringement is only willful if the infringer acts with objective recklessness of the patent
• Patent and Trademark Board Judges – ensures that the appointment of patent and trademark judges is consistent with the Appointments Clause
• Patent Board Judges – technical amendment to clarify that the Patent Board’s duties include the conduction of derivation proceedings
• Post-Grant Review – technical amendment to delete a redundancy in sec. 338 as created in S 1145
• Post-Grant Review – corrects an inconsistency between S 337 (1) and (2), to preclude requesting or maintaining a post-grant review proceeding after a final decision in litigation on the same patent, based on any issue that was raised or could have been raised, in the litigation
• Post-Grant Review – defines “final decision” in the estoppel provision
• Post-Grant Review – technical amendment to delete a redundancy
• Severability – establishes a severability clause in the bill