"Progress" on Senate "Patent Reform" Bill

    By Kevin E. Noonan --

Today, the Senate Judiciary Executive Committee continued its Executive Business Meeting from last week and announced that "significant" progress had been made in reaching a compromise on S. 515 supported by Committee Chairman Senator Patrick Leahy (D-VT), ranking member Senator Arlen Spector (R-PA), and Senator Diane Feinstein (D-CA) (a webcast of today's meeting is available here).  The announcement was short on specifics, Senator Leahy explaining that Senate staffers are still working on the specific language of the amendments.  These amendments concern damages provisions (a major source of contention), with there being some form of "gatekeeper" role to be given to judges in patent cases; some modification of the best mode requirement under 35 U.S.C. § 112; and provisions reapportioning the royalties universities would be allow to keep under the Bayh-Dole Act.

The wet blanket in the room was Senator John Kyl (R-AZ) (at left).  In addition to pointing out that the amendments have yet to be reviewed by any Senator other than Senators Leahy, Spector, and Feinstein, Senator Kyl voiced some significant caveats about the compromise.  The most important was his understanding that the "compromise" bill adopted the language of last year's House bill (H.R. 1938) on post-grant review.  The problem, according to Senator Kyl, is that senior Patent Office officials informed Congress last year that the proposed post-grant review provisions of the House bill were completely unworkable.  For one thing, he said, the proposed threshold for "first window" post-grant review was too low, so that 90% of such requests would be granted, which would overwhelm the Office and subject patentees to challenges that would cost them hundreds of thousands of dollars.  He also complained that patentees could be subjected to harassment by successive proceedings, including review late in infringement lawsuits as a delaying tactic.  Worse, according to the Senator, the Patent Office was not consulted regarding adoption of these provisions into amended S. 515.

Senator Kyl also voiced dissatisfaction with provisions regarding interlocutory appeals and willfulness.  "Common sense" reforms were lacking, he said, and the proposal does "almost nothing to enhance the rights of patent owners and improve the system."  Indeed, he voiced his disappointment at proposals that he thinks could make the system worse.

Senator Kyl also mentioned the procedural prospects for the amendments:  they will be introduced in "tranches," two introduced this afternoon and another two tomorrow, in advance of the next Executive Committee meeting scheduled for Thursday, April 2nd at 10:00 am (Eastern) (a live webcast of that meeting will be available here).

Patent Docs will provide further information on the amendments as it becomes available.

Comments

[EG]

Kevin,

The concerns raised by Senator Kyl are significant. For example, how Congress can believe that the PTO is capable of handling post-grant review when they can't even keep up with pre-grant review strikes me as an "Alice in Wonderland" mindset. That doesn't bode well for this package being put together with any sort of rationality or cohesiveness. But that's unfortunately par for the course with Congress.

[EG]

Kevin,

Also, Mark Twain was right, Congress is the "insane asylum for the helpless." Just when you thought Congress couldn't do anything dumber, it surprises you with a new level of rhetorical nonsense: "an interesting question." What in the world is that supposed to mean?

[Kevin E. Noonan]

Dear EG:

The current economic crisis has certainly focused everyone on the importance of not harming the benefits of the patent system; that's one reason (utter failure on the part of Leahy and the IT crowd the last time, and more attention from interested stakeholders this time are others) why the Leahy bill was initially less ambitious in its "reforms." But the proof of what's at stake will be in the pudding of these amendments, so we will just have to wait and see.

Thanks for the comment.

[paul principato]

Sen. Kyl' attitude and his proposed exception (sect 13 of his version of the bill)is a clear and crass example of who gets bought in Congress?