Intellectual Property Law

Patent reform is again before Washington legislators, as Congress continued to fail to reach a consensus on the legislation in 2007.

By Sheppard Mullin

The push to reform the U.S. patent system tracks back to February 2003 with the publication of the USPTO's 21st Century Strategic Plan.  Other studies followed, identifying key areas for reform: improving the quality of patents, litigation reform, and harmonization of U.S. patent law with the laws of the U.S.'s major trading partners.

The 108^th Congress began addressing patent reform (to no avail) and congressional activity continued into 2006 with the 109^th Congress.  However, none of these bills were enacted.  In 2007, identical bills, H.R. 1908 and S. 1145, were introduced, with the expectation that refinements would be made during the legislative process.  H.R. 1908, with amendments, was passed on September 7, 2007.  But when the 110^th Congress adjourned its first session in December, the full Senate had not acted on its amended version of the bill.

Now that the Senate is in session in 2008, patent reform remains a topic of interest.  A draft committee report on S. 1145 has been circulated among the Senate, and been described as a "comprehensive and methodological report [] aimed at setting the stage for congressional action in the coming year."  The following bullet point list summarizes the key provisions to the amended Senate bill:

• change the U.S. patent system to a "first-inventor-to-file" system (it is currently first to invent);
• make it simpler for patent applicants to file and prosecute their applications;
• codify and clarify the standard for calculating reasonable royalty damage awards, as well as awards for willful infringement;
• create a relatively efficient and inexpensive administrative system for resolution of patent validity issues before the PTO;
• establish a Patent Trial and Appeal Board;
• provide for eventual publication of all applications and enhance the utility of third parties' submissions of relevant information regarding filed applications;
• improve venue in patent cases and provide for appeals of claim construction orders when warranted;
• give the PTO the ability to set its fees;
• authorize the PTO to require patent searches with explanations when a patent application is filed;
• codify and improve the doctrine of inequitable conduct;
• give the director of the PTO discretion to accept late filings in certain instances; and
• end diversion of PTO user fees to other government programs.

Whether patent reform will occur in 2008 remains a question to be answered only by legislative action.  Some are pessimistic that any patent reform legislation will pass before the November 2008 elections.  Importantly, the House bill only narrowly passed and the Senate bill is expected to be aggressively opposed by small vendors and labor unions, who will target lawmakers supporting the legislation during the 2008 elections.  Further, the Commerce Department, on behalf of the Bush administration, has taken issue with portions of the Senate bill, suggesting that further tinkering with the legislation will be necessary.

Sources:

Gross, Grant, "U.S. patent bill still faces obstacles," InfoWorld, Sept. 10, 2007.

Mossinghoff, Hon. Gerald J. and Kunin, Stephen G., "The Need for Consensus on Patent Reform," Feb. 1, 2008.

"Senate Judiciary Committee Draft Report Suggests Outline for Patent Reform in 2008," Patent, Trademark & Copyright Journal, v. 75, no. 1851 (Jan. 18, 2008).

"Commerce Official Says Bush Administration Opposes Patent Reform's Damages Provisions," Patent, Trademark & Copyright Journal, v. 75, no. 1854 (Feb. 8, 2008).

Full post as published by Intellectual Property Law on February 19, 2008 (boomark / email).