March 5, 2009
On March 3rd, the House and Senate judiciary committees introduced bipartisan patent reform legislation. The legislation has been considered by the previous two Congresses with little result to date. The Patent Reform Act of 2009 was introduced by Senators Patrick Leahy (D-VT) and Orrin Hatch (R-UT), and by Representatives John Conyers (D-MI) and Lamar Smith (R-TX).
The Senate Judiciary Committee will hold a hearing on the measure on March 10; no House Judiciary Committee hearing has been scheduled to date by Chairman Conyers.
Some initial observations from the Association of American Universities include:
- The damages language appears to be placeholder language. It is the language from S. 1145, the bill approved last session by the Senate Judiciary Committee, which had little prospect of broad acceptance.
- Inequitable conduct language has been omitted, although Senator Hatch is expected to seek to reinstate language modifying current inequitable conduct provisions.
- The new bill eliminates the requirement that all applications be published 18 months after their effective filing date, a provision recommended by the National Academies and supported by the higher education associations.
- On the issue of post-grant “second window,” the bill adopts the treatment contained in H.R. 1908, the patent reform bill approved by the House last session. Instead of a post-grant second window, the new bill includes the improved inter partes re-examination procedure of H.R. 1908, which was endorsed by the higher education associations.
- The applicant quality submissions provision, which required mandatory submission by patent applicants of prior art and other material relevant to patentability, has been omitted. This provision was opposed by virtually all sectors of the patent community.