The Letters Keep Coming Over the Senate Transom

    By Kevin E. Noonan  --

The rising tide has now become a flood of U.S. universities, businesses, and individuals in opposition to the patent "reform" bill poised for a vote in the Senate (S. 1145).  And the mechanism for this opposition is the traditional way Americans petition their government for redress -- the letter.  Like our previous reports on earlier letters (see "U.S. Senate Mailbox Filling with Letters against Passage of Patent 'Reform' Bill" and "An Update"), Senators from eight states have now received letters (see below) signed by hundreds of interested parties.  These Senators include Specter (R) and Casey (D) of Pennsylvania, Chambliss (R) and Isakson (R) of Georgia, Alexander (R) and Corker (R) of Tennessee, Allard (R) of Colorado, McCain (R) and Kyl (R) of Arizona, Cornyn (R) and Hutchinson (R) of Texas, Ensign (R) of Nevada, Bunning (R) of Kentucky, and both Majority Leader Reid (D-NV) and Minority Leader McConnell (R-KY).

The letters are similar in content.  Each asserts that the legislation will harm innovation and American business and cost jobs.  They are consistent in opposing the damages and post-grant opposition proceedings, as well as calling for inequitable conduct reform along the lines of the recommendations in the National Academy of Sciences (NAS) report.  Some of the letters also challenge the venue provisions, interlocutory appeals, and the expanded search and analysis provisions, and the letter to Texas Senator Kay Bailey Hutchinson mentions the Supreme Court decisions and Patent and Trademark Office regulatory initiatives undertaken in 2007.  The letter suggests that the cumulative effect of the combination of these decisions and regulations and the changes contained in the legislation would harm rather than reform patent law.

Significantly, the letter containing the most extensive discussion of the deficiencies of S. 1145, and suggestions for how the bill should be amended or rewritten, is the letter to Senate Minority Leader McConnell.  Like the others, this letter highlights damages, venue, inequitable conduct, and the search and analysis provisions of the bill as being harmful to U.S. innovation and the economy, but it also contains some suggestions.  These include:  elimination or curtailment (along the lines of H.R. 1903, the corresponding patent "reform" bill passed by the House of Representatives last year; see "Patent 'Reform' Bill Passes House of Representatives") of the "second window" for patent oppositions; maintaining a court's discretion on calculating damages; affirmatively not granting the Patent and Trademark Office any substantive rulemaking authority (S. 1145 limits the PTO's authority to fee-setting), eliminating the enhanced prior art search and characterization requirements or tying such requirements to changes (such as those suggested by the NAS in its 2004 report) in the thresholds and activities that constitute inequitable conduct, and permitting venue in patent infringement cases to lie in districts where the claimant has its principal place of business or has engaged in substantial research, development, or manufacturing activities.

It is apparent that large segments of the U.S. technology industry are opposed to this bill, and that activities by the Judiciary Committee Chairman, Senator Leahy (D-VT), and Majority Leader Reid to bring the bill to a vote have galvanized the signatories to action.  Letter-writing may not be enough, however;  although their letters are appropriately respectful and focused on their concern for the American economy and innovative technology, it should not be too much for these signatories to suggest, in this election year, that there will be a political price to be paid by any legislator who fails to heed these concerns.

To view any of the nine letters, please see:

• Letter to Senators Alexander and Corker
• Letter to Senator Allard
• Letter to Senators Chambliss and Isakson
• Letter to Senator Cornyn
• Letter to Senator Hutchinson
• Letter to Senators McCain and Kyl
• Letter to Senators McConnell and Bunning
• Letter to Senators Reid and Ensign
• Letter to Senators Specter and Casey

For additional information regarding this topic, please see:

• "U.S. Senate Mailbox Filling with Letters against Passage of Patent 'Reform' Bill: An Update," January 23, 2008
• "U.S. Senate Mailbox Filling with Letters against Passage of Patent 'Reform' Bill," January 18, 2008
• "Patent Reform Discussed on Senate Floor," December 21, 2007
• "Enjoined New Rules and Patent Reform Finally Appearing on Biotech Industry's Radar," December 20, 2007
• "Chinese IP Judge Discusses Implications of U.S. Patent Reform Bill and Two Congressmen Heed Warning," December 17, 2007
• "IPO President Seeks Deletion of Patent Reform Provision," December 12, 2007
• "Senate May Act on Patent 'Reform' Bill in the New Year," December 2, 2007
• "The Wall Street Journal Gets It Half Right," November 5, 2007
• "BIO CEO Provides Briefing on Follow-On Biologics and Patent Reform," September 18, 2007
• "Patent 'Reform' Bill Passes House of Representatives," September 9, 2007
• "Reversal in Microsoft Case Weakens Patent Reform Argument," August 7, 2007
• "San Francisco Chronicle Opines on Patent Reform," August 6, 2007
• "Patent Reform Bill to Be Delayed?" June 12, 2007
• "Senate Judiciary Committee Holds Hearing on Patent Reform," June 10, 2007
• "Could Creating a U.S. 'Utility Model' Patent Fulfill the 'Need' for Patent Law Reform?" May 21, 2007

For Patent Docs' series on specific sections of the Senate's draft report, please see:

• "Interlocutory Decisions & Venue," Section 8, January 29, 2008
• "Damages," Section 4, January 28, 2008
• "Applicant Quality Submissions & Micro-Entities," Section 11, January 25, 2008
• "Post-Grant Procedures," Section 5, January 22, 2008
• "Inequitable Conduct Provisions," Section 12, January 21, 2008
• "First Inventor to File Provisions," Section 2, January 17, 2008
• "Assignee Filings, Mandatory Publication, and Third Party Submissions," Sections 3 and 7, January 16, 2008
• "Late Patent Filings," Section 13 January 15, 2008
• "Draft Report on Senate Patent Reform Bill Circulated," Sections 9 and 15, January 14, 2008