Patent law reform has garnered a lot of attention recently and there has been extensive media coverage about various patent law reform proposals. There are, however, several statutes and other rules that govern patent cases and, an appropriate question to be asked is "What exactly are the 'laws' that are potentially going to be reformed?"

The primary law governing patents and patent cases is, and the primary focus of patent law reform proposals is on, the Patent Act of 1952. It is set forth at 35 USC S 1 et seq. The Patent Act is divided into four main parts.

Part I relates to the United States Patent and Trademark Office and it contains sections dealing with the establishment and management of the Patent and Trademark Office as well as sections pertaining to proceedings in, and practice before, the Patent and Trademark Office.

Part II of the Patent Act relates to the patentability of inventions and the grant of patents. There are provisions in Part II governing patent applications and the review of those applications by the Patent and Trademark Office. Part II also contains the rules relating to secrecy, foreign filings and patent rights in inventions made with federal assistance and funds.

Part III of the Patent Act primarily relates to issued patents and the protection of issued patents. Part III contains the rules relating to reissue of defective patents, reexamination of patents and correction of mistakes in issued patents. Part III also contains the rules relating to ownership and assignment of patents. The laws relating to infringement of patents and the remedies for any such infringement also are found in Part III of the Patent Act.

Part IV of the Patent Act contains the laws relating to the Patent Cooperation Treaty.

The patent law reform proposals pending in Congress primarily focus on modifying sections of, and adding sections to, this Patent Act and, in particular, to the laws contained in Part III of the Patent Act.

Venue for patent infringement cases is governed by 28 USC S1400(b). It states that patent cases "may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business". Potential revisions to this statute and thus to venue for patent cases is also the subject of patent law reform proposals.

Patent cases also are subject to the local rules of the court where the case is pending. Many such local rules, for example ND California and ED Texas, set forth procedures for disclosing infringement and invalidity contentions and for the claim construction process. The pending legislation will not per se change these local rules, but local rules may be modified by the respective district courts after, and as a result of, any legislation passed by Congress.

Russell Levine

Kirkland & Ellis LLP
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