04.02.09

Senate Panel Reports Patent Reform Legislation

WASHINGTON (Thursday, April 2, 2009) – At a business meeting Thursday, the Senate Judiciary Committee voted to report critical legislation to make reforms to the nation’s dated patent reform system.  The 19-member panel voted 15-4 to report the bipartisan Patent Reform Act of 2009 after debating the measure in three executive sessions over the last week.

The bill was introduced in early March by Committee Chairman Patrick Leahy (D-Vt.) and former Committee Chairman Orrin Hatch (R-Utah).  It is the third Congress in which Leahy and Hatch have introduced patent reform legislation.   Since 2005, the Senate Judiciary Committee has held eight hearings and several executive meetings to consider the legislation.  Members of the Committee have held dozens of meetings with stakeholders and interested parties.  In 2007, the Committee reported patent reform legislation, but it stalled on the Senate floor due to a dispute over damages provisions in the bill.  The Committee heard from stakeholders about the need for patent reform at a public hearing on March 10.

“Patent reform is an important way that this Committee can contribute to restoring our economic engine and supporting economic recovery,” Leahy said.  “Earlier this week I thanked Senators for working together on a compromise.  Patent reform is urgently needed.  We need to move forward.  Over the last couple of days we have reached agreement on issues that had prevented the bill from moving forward.”

On Thursday, the Committee adopted an amendment to address some of the most divisive issues in the patent reform debate, including damages, venue, and post-grant review.  A complete list of amendments considered during the debate on the bill is available on the Judiciary Committee website.

After the Committee vote, Leahy praised the work of several Committee members in striking an agreement on the legislation, including Ranking Member Arlen Specter (R-Pa.) and Senator Dianne Feinstein (D-Calif.).

“Senator Specter and Senator Feinstein have worked tirelessly with me on this legislation.  The agreement this Committee has reached to move forward with patent reform is the culmination of months of arduous negotiations and compromise.  Senator Specter, Senator Feinstein, and so many others have lent important voices to this debate, and working together, we can make the necessary, long-overdue improvements our patent reform system requires,” Leahy said.

During the course of the debate, the Committee adopted three amendments.

  • April 2: An amendment sponsored by Leahy, Specter, Feinstein, and Senators John Cornyn (R-Texas), Sheldon Whitehouse (D-R.I.), and Ted Kaufman (D-Del.):
    • DAMAGES:  Strike the calculation of reasonable royalty damages in Section 4 and include gatekeeper language developed by Senators Feinstein and Specter to provide a greater 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:  Tighten 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:  Create 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.
  • March 31:  An amendment sponsored by Leahy and Hatch:
    • LICENSING ROYALTIES:  Add a provision to increase the ability of government-operated, contractor-owned facilities to reinvest licensing royalties for scientific research, development and education.
    • TELEWORKING:  Establish a trial teleworking program for the Patent and Trademark Office
  • March 26: An amendment sponsored by Leahy, Hatch, Whitehouse, Specter, Feinstein, and Senator Jon Kyl (R-Ariz.)
    • PRIOR ART: Tighten the language on prior art and derivation proceedings
    • FIRST-WINDOW POST-GRANT REVIEW: Clarify that first-window post-grant review proceedings must be instituted by the Director
    • TECHNICAL: Corrects drafting errors in the inter partes reexamination section and elsewhere
    • VIRTUAL MARK: Adds 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

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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