Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     On March 12, 2008, Senate Judiciary Committee Chairman Patrick Leahy (D-VT) issued a press release outlining possible amendments to S.1145, the Patent Reform Act of 2007. As stated in the press release:

"Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.), Committee Member Orrin Hatch (R-Utah), and Ranking Member Arlen Specter (R-Pa.), have been working for months with a bipartisan coalition of senators in preparation of floor consideration of the Patent Reform Act, which would make the first reforms to the country's patent laws in more than 50 years. The Judiciary Committee passed the legislation last July, and Leahy, Hatch and Specter have held dozens of meetings and briefings in the months since, listening to concerns from stakeholders, and working to address the concerns of the wide cross-section of interested parties."

     Apparently, at least some of the Judiciary Committee members and other Senators have been "urging consideration of the legislation in the full Senate for months, and Majority Leader Harry Reid (D-Nev.) has signaled the chamber could take up the bill in April."

     The major proposed amendments to the bill are summarized below and contained in detail here (zip file):

• “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 – provides technical amendment to allow for appeal to the Federal Circuit of USPTO board interference decisions commenced prior to the date of the Act; and 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 – provides technical amendment to delete a redundancy in sec. 338 as created in S. 1145; 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; defines “final decision” in the estoppel provision; and provides for technical amendment to delete a redundancy
  
  
• Severability – establishes a severability clause in the bill 
   

    Several sources have reported in the last few weeks that proponents of the bill may not have the required votes to invoke the Cloture Rule, which limits the amount of debate on the floor prior to a vote (thereby blocking any filibuster).

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     A search of Google© on February 4, 2008 (Monday) using the search terms "patent reform" and the date limiter "last 24 hours" returned "about 13,400" hits.  That compares to 15,400 hits for the entire previous week (same search terms, but using the date limiter "last week").  The 24-hour statistic is interesting, because the time period included Super Bowl Sunday when, presumably, even the most staunch advocates for and against patent reform took time off to watch the big game. Today, a search for "patent reform" and "last 24 hours" returned 14,600 hits. Clearly, reporting about patent reform efforts has increased on the Internet. This may be due to the fact that this week and next are considered by many to be the home stretch before the Senate votes on its current version of S.1145, the Patent Reform Act of 2007.

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     Several sources (see 271 Blog, for example) are reporting that another obstacle facing patent reform was overcome yesterday when the Senate Judiciary Committee reported on S. 1145, the Patent Reform Act of 2007. According to the Intellectual Property Owners Association (IPO), the "106-page draft report explains in depth the provisions of the bill as approved by the Senate on July 19, 2007, but does not contain any new or compromise provisions."

     So, will patent reform actually happen this year, as some predict? Gene Quinn over at the PLI Blog notes that "patent legislation usually has a gestation period of between 2 to 3 years, and given that Congress began working seriously on some form of patent reform in 2005 the timing is right." On the other hand, industry associations, individuals, and other stakeholders have been pulling Congressional ears in different directions as long as patent reform legislation has been around, so I'm not sure that we'll see significant patent reforms, especially when you consider that several contentious provisions are still present in the Senate bill. However, it seems likely that at least some reforms will be seen this year, as long as Congress doesn't wait too long and get distracted by the election cycle, and some of those anticipated "compromise provisions" make their way into the legislation before the Senate votes.

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     Peter Zura suggested in his article "R.I.P. Patent Reform" (271 Patent Blog) that the Senate will not take action on the Patent Reform Act of 2007, S. 1145, this year. His prediction is based on comments by Matthew Sandgren, counsel to Sen. Orrin Hatch (R-Utah), that were presented at a speech in Washington, D.C. in early November. Peter noted that the biggest sticking points preventing a full Senate vote today are the second window of post-grant review and apportionment of damages provisions. The FDANews Drug Daily Bulletin for Nov. 19, posted a similar summary of Sandgren's comments. The Intellectual Property Owners Association reportedly expects the Senate will consider patent reform in February 2008. 

     The BNA Daily Report for Executives, Nov. 7 and 16, 2007 (subscription required), and other sources suggest that the following stakeholders have been or are still opposed to portions of the Patent Reform Act, and many may continue to yield as much influence as possible to win over Senators: the venture capital industry (at least 30 members who sent Senators a letter earlier in November); Innovation Alliance; American Bar Association's Intellectual Property Law Section; AFL-CIO; Paul R. Michel, Chief Judge of the U.S. Court of Appeals for the Federal Circuit; The Patent Officials Professional Association (the union representing patent examiners); Coalition for 21st Century Patent Reform, whose members include the American Intellectual Property Law Association, as well as companies from the manufacturing, information technology, consumer products, energy, financial services, medical products, pharmaceutical, and biotechnology industries.

     Of course, there are many in favor of the current bill, and would love to see an up vote sooner rather than later. Certain technology companies strongly back patent reform legislation because of provisions they see as leveling the playing field in lawsuits brought by non-practicing entities and so-called "patent trolls."

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     In an earlier post this week--Seagate vs. Patent Reform Act of 2007--I included a link to R. David Donoghue's Chicago IP Litigation Blog and his post "Is the Patent Reform Act Stalled?"  David may have been onto something, as only a day later blogger Dennis Crouch reported in his post "Congressional Patent Reform is Dead; Long Live Adminstrative Patent Reform" that Congressional Republicans have asked Speaker Pelosi to put the brakes on patent reform legislation. In their letter to Pelosi (D-CA) dated August 30, 2007, available here, Representatives Boenner (R-OH) and Blunt (R-MO) asked for the reprieve to allow additional consensus building "so that all U.S. companies benefit from reforming the patent system rather than advantaging one business model over another." 

Comments:

• The introduced Senate and House versions of patent reform legislation are: S.1145 and H.R.1908, respectively
  


• A search of the Internet revealed Patent Reform Acts of 2005, 2006, and 2007; perhaps we should start looking forward to the 2008 or 2009 versions
  


• The Pelosi letter was copied to Representatives Conyers (D-MI), L. Smith (R-TX), Berman (D-CA), and Coble (R-NC), all members of the House Judiciary Committee (Subcommittee on Courts, the Internet, and Intellectual Property)

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