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Senate Patent Reform Bill on Mandatory Search Requirements

By William F. Heinze

Section 11 of the 106-page draft report of the Senate Judiciary Committee on the Patent Reform Act of 2007 (S. 1145) gives the Director express authority to require by regulation the submission of search reports and other relevant information as the Director determines. Failure to comply with such requirements shall constitute abandonment of the applications. However "Micro-Entities" would be exempted.

Specifically, the proposed bill amends Title 35 to add the following new section:

§ 123. Additional information; micro-entity exception

(a) IN GENERAL.--The Director shall, by regulation, require that an applicant for a patent under this title submit to the Director--

(1) a search report and analysis relevant to patentability; and
(2) any other information relevant to patentability that the Director, in
hisdiscretion, determines necessary.

(b) FAILURE TO COMPLY.--If an applicant fails to submit the search report, analysis, or information required under subsection (a) in the manner and within the time period prescribed by the Director, such application shall be regarded as abandoned.

(c) EXCEPTION.--Any application for a patent submitted by a micro-entity shall not be subject to the requirements of this section.

(d) MICRO-ENTITY DEFINED.--

(1) IN GENERAL.--For purposes of this section, the term "micro-entity" means
an applicant who makes a certification under either paragraph (2) or (3).
(2) UNASSIGNED APPLICATION.--For an unassigned application, each applicant
shall certify that the applicant--

(A) qualifies as a small entity, as defined in regulations issued by the
Director;

(B) has not been named on 5 or more previously filed patent applications;

(C) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or any other ownership interest in the particular application; and

(D) does not have a gross income, as defined in section 61(a) of the Internal Revenue Code (26 U.S.C. 61(a)), exceeding 2.5 times the average gross income, as reported by the Department of Labor, in the calendar year immediately preceding the calendar year in which the examination fee is being paid.

(3) ASSIGNED APPLICATION.--For an assigned application, each applicant shall certify that the applicant--

(A) qualifies as a small entity, as defined in regulations issued by the
Director, and meets the requirements of paragraph (2)(D);

(B) has not been named on 5 or more previously filed patent applications;
and(C) has assigned, granted, conveyed, or is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the particular application to an entity that has 5 or fewer employees and that such entity has a gross income, as defined in section 61(a) of the Internal Revenue Code (26 U.S.C. 61(a)), that does not exceed 2.5 times the average gross income, as reported by the Department of Labor, in the calendar year immediately preceding the calendar year in which the examination fee is being paid.

(4) INCOME LEVEL ADJUSTMENT.--The gross income levels established under paragraphs (2) and (3) shall be adjusted by the Director on October 1, 2009, and every year thereafter, to reflect any fluctuations occurring during the previous 12 months in the Consumer Price Index, as determined by the Secretary of Labor.

Here are links to a few recent public comments on the need for pre-filing patent searches:

• ?Patent quality should start with a focus on high quality search.? ?-Ruud Peters, CEO of Philips Intellectual Property and Standards
• ?Quality patents start with a quality search.? -- Mark Adler, Chief IP Counsel, Rohm and Haas Company
• ?The process of quality examination begins with the applicant. Too little or too much information both present serious challenges to examination quality, and both abuses are created solely by applicants. These abuses must be prevented if the system is to function properly for the benefit of the public.? -- USPTO Public Advisory Committee Report for 2007

Full post as published by I/P Updates on January 25, 2008 (boomark / email).