04.01.09

Agreement Reached On Key Patent Reform Issues

WASHINGTON (Wednesday, April 1, 2009) – Leaders on the Senate Judiciary Committee have reached an agreement on several key issues in the debate over patent reform, Chairman Patrick Leahy (D-Vt.) announced Wednesday.  The Committee is scheduled to meet in executive session on Thursday, April 2, to consider amendments to S. 515, the Patent Reform Act of 2009.  It will be the third Committee meeting this year to mark up patent reform legislation. 

The agreement reached by Leahy, Ranking Member Arlen Specter (R-Pa.), and senior Committee member Dianne Feinstein (D-Calif.) addresses several of the most divisive issues in the debate over patent reform.  The Committee is expected to consider the amendment Thursday.

The text of the Leahy-Specter-Feinstein amendment is available online.  The amendment will:

  • DAMAGES:  Strike the calculation of reasonable royalty damages in Section 4 and include gatekeeper language developed by Senators Feinstein and Specter to provide more of a role for the judge to identify the appropriate legal standards and relevant factual contentions for the jury.
  • INTER PARTES REEXAMINATION:  Strike “in public use or on sale” in Section 5.
  • BEST MODE:  Retain the requirement that a specification contain the best mode of carrying out the invention as part of the patent application, but not allow best mode to be used as a means to invalidate a patent.
  • INTERLOCUTORY APPEALS:  Tighten the interlocutory appeals provision by providing the district court with specific standards that it must certify have been met. 
  • WILLFULNESS:  Tightens the willfulness provision in Section 4 to ensure that it is in line with the Federal Circuit’s decision in Seagate.
  • VENUE:  Strike the subsection of Section 8 relating to venue and insert a codification of the Federal Circuit’s recent decision in TS Tech.
  • PATENT PILOT PROGRAM:  Creates a pilot program in at least six district courts from at least three different circuits that will receive funding for training in patent law, and to hire law clerks devoted to working on patent cases.

On March 26, the Committee adopted an amendment sponsored by Leahy, Senator Orrin Hatch (R-Utah), Feinstein, Specter, and Committee members Sheldon Whitehouse (D-R.I.) and Jon Kyl (R-Ariz.) to tighten the language on prior art and derivation proceedings, clarify that first-window post-grant review proceedings must be instituted by the Director of the Patent and Trademark Office, correct drafting errors in the inter partes reexamination section and elsewhere, and to add a provision that permits patent holders to “virtually mark” a product by providing the address of a publicly available website that associates the patented article with the number of the patent.

On March 31, the Committee adopted a second amendment to add a provision to increase the ability of government-operated, contractor-owned facilities to reinvest licensing royalties for scientific research, development and education, and to establish a trial teleworking program for the Patent and Trademark Office.

Leahy and Hatch introduced the Patent Reform Act of 2009 on March 3.  It is the third Congress in which Leahy and Hatch have introduced patent legislation.  In the 110th Congress, the Judiciary Committee reported a bill to make the first major reforms to the nation’s patent system, but it’s consideration on the Senate floor was stalled when legislators were unsuccessful in reaching an agreement on key language on damages. 

The Patent Reform Act of 2009 is also cosponsored by Senators Chuck Schumer (D-N.Y.) and Sheldon Whitehouse (D-R.I.), both members of the Senate Judiciary Committee, and Senators Mike Crapo (R-Idaho), Kirsten Gillibrand (D-N.Y.), and James Risch (R-Idaho).  Companion legislation has been introduced in the House of Representatives.

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