Senate Patent Reform Legislation -- One Old Bill and One New Bill

    By Donald Zuhn --

Last Tuesday, CongressDaily reported that Senate Judiciary Chairman Patrick Leahy (D-VT) (at right) and ranking member Arlen Specter (R-PA) have indicated that patent reform will be a top priority for the new session.  Coalition for Patent Fairness lobbyist Steve Elmendorf told the publication that he expects to begin working in earnest early next year to help push the Senate bill through, and predicted that it was "highly probable" that a bill would pass in the 111th Congress, given the Democratic leadership's support of the House bill, which passed in September 2007.

However, CongressDaily also noted that the ultimate fate of patent reform legislation in the 111th Congress may rest with the outcome of the fall elections.  If the Democrats retain control of Congress, Representative Howard Berman (D-CA) (at left), the current Chairman of the Courts, Internet and Intellectual Property Subcommittee of the House Judiciary Committee and a strong supporter of the House patent reform bill, would likely move to the Foreign Affairs Committee.  According to the publication, Representatives Rick Boucher (D-VA), Zoe Lofgren (D-CA), and Jerrold Nadler (D-NY) have been named as potential candidates to replace Chairman Berman, and where the potential successors stand on the issue of patent reform remains to be seen.

On Friday, CongressDaily reported on a new Senate patent reform bill that Senator Jon Kyl (D-AZ) (at right) intends to introduce this fall.  According to the publication, the patent reform bill being drafted by Senator Kyl's staff is said to be "much different" from the bill (S. 1145) introduced by Senators Leahy and Orrin Hatch (R-UT) in April 2007, and is the result of several meetings Senator Kyl has held with critics of S. 1145 -- including representatives from the pharmaceutical and life-sciences industries, but not any members of the Coalition for Patent Fairness.  Senators Tom Coburn (R-OK) and Sam Brownback (R-KS), who along with Senator Kyl are members of the Senate Judiciary Committee, have also been participating in the discussions.

While Senator Kyl is not expected to unveil the specific provisions of his bill until September, CongressDaily reported on a number of key provisions in the new bill.  With respect to damages calculations, Senator Kyl's bill would encourage litigants "to use precise economic analyses to determine damages rather than less exact calculations."  In addition, the new bill "would limit re-exams to 12 to 18 months for applications that do not comport with 'novelty and non-obviousness' conditions for obtaining a patent."  Finally, the new bill would address allegations of inequitable conduct through administrative proceedings rather than in the courts.  The Senator's staffers have also been attempting to craft a workable proposal for post-grant review, as well as "[v]oluntary provisions to ensure applicant quality."

Coalition for Patent Fairness lobbyist Mark Isakowitz (at left) told CongressDaily that Senator Kyl's bill was a "well-intended," but "rejectionist" effort, and noted that Coaltion members were "not among the rejectionists."

For additional information regarding this and other related topics, please see:

• "BIO Commends Senator Specter for Patent Reform Stance," April 10, 2008
• "Judge Michel Doesn't Think Much of Senate Bill S. 1145, Either," February 20, 2008
• "The (Un)Intended Consequences of the Law," February 18, 2008
• "BIO CEO Provides Update on Patent Reform and Follow-on Biologics Legislation - Part I," February 14, 2008
• "BIO Report Indicts "Patent Reform" Proponents," February 13, 2008
• "Patent Reform and Infringement Damages: Some Economic Reasoning," February 5, 2008
• "Department of Commerce Sends Letter on Patent Reform to Senator Leahy," February 4, 2008
• "Biotech and Pharma Opposition to Senate Patent Reform Bill," February 3, 2008
• "The Letters Keep Coming Over the Senate Transom," January 30, 2008
• "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

Comments

[EG]

Don,

I do hope this Kyl effort goes no further than S. 1145 did. S. 1145 was bad enough, and I, like many others, are glad it died, at least for this term of Congress. We don't need "phoenix arising from the ashes" now. Kyl's proposal would be "rushed" effort at best (given the approaching elections in November), and what we don't need here is "rushed" bill that, like S. 1145, is poorly thought through and driven strictly by the "politics".

[anonymousAgent]

The whole problem with "quality" submissions is that the practitioner is "damned if he does, damned if he doesn't."
If he admits that certain elements are in the Prior art, then s/he is making an admission. If he doesn't (and they ARE there), then s/he may be guilty of inequitable conduct.
PROPOSED SOLUTION #1:
There is a duty to disclose a ref on an IDS. The applicant has the choise of characterizing the ref or NOT. If the applicant does NOT characterize the ref then:
a) there is no inequitable conduct;
b) there is NO presumption of validity over the reference.
PROPOSED SOLUTION #2:
We must file 'quality submissions.' Anything we say in these submissions is, by definitino, NOT construed as an admission taht something is prior art, and is not admissable evidence in litigation.
PROPOSES SOLUTION #3:
like the proposed legistlation - however, the only 'punishment' for Inequitable Conduct is that there is no presumption of validity for the mischaracterized reference.
-------
I don't like these "quality submissions' any more than the rest of you, but since it seems that CPF $$$ is flowing and some sort of 'reform' is inevitable (unfortunately), it is important for teh patent bar to come up with proposals so that patent reform slightly devalues patents (say by 20-30%), rather than gutting them and devaluing patents by 95%.

Thoughts?

[dinnerbell]

please see http://www.piausa.org/ for a different/opposing view on patent reform