Senate Patent Reform Leaders
Release Amendments
In Advance Of Patent Reform Debate
WASHINGTON (Wednesday, March 12,
2008) – Senate Judiciary Committee members today released more
than a dozen possible amendments to important patent reform
legislation awaiting consideration in the Senate.
Senate Judiciary Committee
Chairman Patrick Leahy (D-Vt.), Committee Member Orrin Hatch
(R-Utah), and Ranking Member Arlen Specter (R-Pa.), have been
working for months with a bipartisan coalition of senators in
preparation of floor consideration of the Patent Reform Act,
which would make the first reforms to the country’s patent laws
in more than 50 years. The Judiciary Committee passed the
legislation last July, and Leahy, Hatch and Specter have held
dozens of meetings and briefings in the months since, listening
to concerns from stakeholders, and working to address the
concerns of the wide cross-section of interested parties.
The Senators have been urging
consideration of the legislation in the full Senate for months,
and Majority Leader Harry Reid (D-Nev.) has signaled the chamber
could take up the bill in April. The House of Representatives
passed patent reform legislation last year.
“Senator Hatch and I have been
working for years to address needed reforms to our patent
system,” said Leahy. “Senator Specter’s support in this process
has been both constructive and valuable. The time for patent
reform is now. We have been working carefully to address many
concerns with the country’s patent laws, and we are looking
forward to a thorough debate in the Senate after recess. These
amendments are the first step forward in perfecting our bill and
ensuring it has the support needed to become law.”
“We’re encouraged to see this
progress toward a compromise, one that will be functional for
interested stakeholders,” Hatch said. “These amendments are yet
another sign that we can work through the few remaining issues.
With the nation’s economic troubles so prevalent in people’s
minds nowadays, Congress must strive to help America keep its
competitive edge. When finally enacted, our patent reform is
going to play an important role in doing just that. After years
of negotiations, we believe we are close to striking the right
balance to modernize our nation’s outdated patent system, so
innovators can receive high-quality patents more efficiently and
avoid wheel-spinning and counterproductive litigation.”
“We are working to structure a
patent reform bill that will protect intellectual property and
give due recognition to innovation,” Specter said. “I intend to
have my shoulder to the wheel to make sure that the final stages
of patent reform are handled properly and that innovation,
scientific research, and patent rights are protected.”
Further amendments to address
issues including venue, post grant review, damages and
inequitable conduct are expected to be released in the coming
weeks. The amendments released Wednesday include:
-
“Best Mode” – eliminates ‘best mode’
as a ground for invalidating a patent, but maintains it as a
requirement to obtain a patent
-
Ex Parte Provision – restores third
party ex-parte reexamination
-
Federal Circuit Judges – ensures that
any Federal Circuit judge who does not reside within a
50-mile radius of Washington, DC, must use the chambers of
an existing courthouse in the district where they reside
-
Interference – technical amendment to
allow for appeal to the Federal Circuit of USPTO board
interference decisions commenced prior to the date of the
Act
-
Interference – amends the bill to
delete interference-related provisions and replace with new
derivation-related provisions
-
Interlocutory Appeals – limits
interlocutory appeals of claim construction orders to those
for which the District Court determines there is a
reasonable basis for disagreement and the appeal may advance
the ultimate termination of the litigation
-
Marking Provision – deletes the
marking provision in the bill and maintains the current law
-
“Objective Recklessness” – codifies
the Federal Circuit court’s ruling in
Seagate, holding
that infringement is only willful if the infringer acts with
objective recklessness of the patent
-
Patent and Trademark Board Judges –
ensures that the appointment of patent and trademark judges
is consistent with the Appointments Clause
-
Patent Board Judges – technical
amendment to clarify that the Patent Board’s duties include
the conduction of derivation proceedings
-
Post-Grant Review – technical
amendment to delete a redundancy
in sec. 338 as created in S 1145
-
Post-Grant Review – corrects an
inconsistency between S 337 (1) and (2), to preclude
requesting or maintaining a post-grant review proceeding
after a final decision in litigation on the same patent,
based on any issue that was raised or could have been
raised, in the litigation
-
Post-Grant Review – defines “final
decision” in the estoppel provision
-
Post-Grant Review
– technical amendment to delete a redundancy
-
Severability
– establishes a severability clause in the bill
To download all of the above
amendments,
click here.
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