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Bush Administration Views on Senate Patent Reform Bill

By William F. Heinze

According to a February 4, 2008 letter to Senator Patrick Leahy from Nathaniel F. Wienecke, U.S. Department of Commerce Assistant Secretary for Legislative and Intergovernmental Affairs:

The Administration continues to oppose Section 4, "Right of the Inventor to
Obtain Damages." Consequently, we continue to oppose S. 1145 - in its entirety - unless Section 4 is significantly revised . . . .

[T]he judiciary needs the flexibility to determine a reasonable royalty based on the circumstances of a particular case. Greater certainty is needed in patent litigation, but the language currently in S. 1145 is not the most effective way to create that certainty. The ambiguities introduced by the bill's proposed language will, in fact, increase uncertainty in how damages are determined or calculated. This uncertainty will take years to resolve in the courts, and could result in long-lasting uncertainty over the value of the Nation's stock of intellectual property. We believe that the risks to the patent system created by Section 4 are overwhelming.

The letter also notes that the Bush Administration supports many provisions of S. 1145, with some qualifications, including

• Applicant Quality Submissions - "[W]e appreciate S. 1145's inclusion of inequitable conduct reform language, but believe there is more to be done to ensure that patent applicants fully and fairly share relevant information with the United States Patent and Trademark Office (USPTO)."
• Fee-Setting Authority for the USPTO
• Establishment of Post-Grant Patent Review Procedures - "[I]mprovements are required to make the bill's post-grant procedures more effective, efficient, and manageable. For example, the threshold standards for access to both the first and second-window challenges need to be clarified. Further, the efficiency of the procedures would be improved by applying the estoppel effect for first-window reviews to 'issues actually raised,' and to "issues that were or could have been raised" for second-window reviews."
• End of inter partes Reexamination
• First- Inventor-to- File System - "Although the Administration supports the bill's efforts to transition the United States to a first inventor-to-file patent system, we would like to work with you to address technical issues regarding the scope and application of prior art and the grace period. Further, we believe that the effective date of the first-to-file provisions should be contingent upon a formal determination that specific progress and certain agreements have been reached in relevant international negotiations."
• Willful Patent Infringement - "Because this decision [In re Seagate Technology] is consistent with both the bill's intent and the Administration's views on the issue, the proposed statutory revisions in Section 4 are no longer necessary."

The Administration also "opposes the proposed language of the bill that would fund the USPTO through a mandatory revolving fund account as we believe it is unnecessary and would reduce oversight."

Full post as published by I/P Updates on February 04, 2008 (boomark / email).