The Senate has been unable to quickly vote on the House-passed version of Patent Reform, and it now looks increasingly likely that votes will have to be allowed on a couple of controversial amendments to the bill which could cause further problems.

One of the House adopted amendments would recalculate the filing period for patent term extension applications for drug products and other patents covered by the Hatch-Waxman Act. This has raised concern among certain Senators because it would essentially only benefit one biotech firm which filed its application for extension of patent protection on day late.

The other amendment which has already proven to be an obstacle is the issue of patent office funding. While the House version of the bill included language that directed revenue to be continued to be handled through the appropriations process, a larger group of Senators continue to push for allowing USPTO to keep all of the revenue it generates from fees.

It is expected that the House would likely accept changes to the former amendment, but would refuse any alteration to the latter. Also holding up the process is the refusal by many in both chambers to refuse to discuss any other issues until the debt ceiling debate is resolved.

The Senate has released an amended version of S. 515, the Patent Reform Act of 2009 that appears to address many of the hopes for a simplified, and increasingly objective and transparent patent system in the United States. Two reforms included in the legislation that are key to the higher education community include: harmonizing U.S. law with that of the international community by adopting a first-inventor-to-file procedure, and improving patent quality and reducing litigation costs by creating a post-grant administrative procedure for challenging patents in their first year. Several higher education associations have expressed support for the amended legislation. In the associations’ letter it is noted that the substitute amendment “represents the successful culmination of a thorough, balanced effort to update the nation’s patent reform system to support more effectively the nation’s innovative capacity in the increasingly competitive global environment of the 21st century.”

At this time, it is unclear when the legislation will advance further in the Senate, and several challenges appear likely on the House side. In the coming weeks, Federal Relations will be briefing WA delegation staffers on the impact of the legislation at UW. Interested members of the UW community are encouraged to contact the Office of Federal Relations.

Memorandum

To: Association constituents

From: Robert M. Berdahl, President, Association of American Universities
 Molly Corbett Broad, President, American Council on Education
 Darrell G. Kirch, President and CEO, Association of American Medical Colleges
 Peter McPherson, President, Association of Public and Land-grant Universities
 Arundeep S. Pradhan, President, Association of University Technology Managers
 Anthony P. DeCrappeo, President, Council on Governmental Relations

Subject: S. 515, the Patent Reform Act of 2009

We write to inform you about S. 515, the Patent Reform Act of 2009, and our associations’ engagement in the Congressional patent reform process begun four years ago.  S. 515 modifies U.S. patent law in ways that strengthen the system’s ability to promote innovation.  Earlier versions of patent reform legislation, while containing many beneficial changes, also included several provisions of concern for universities.  S. 515 effectively addresses the concerns our associations have raised.  Read more

On Thursday April 2nd, the Senate Judiciary Committee approved Patent Reform Act of 2009 (S. 515) by 15-4 vote after an agreement was reach on how to award damages in infringement cases. The bill establishes judges as the mechanism for deciding hwat evidence can be presented to juries in determining how to award damages.  Additionally, the compromise addresses post-grant review of patents, in-equitable conduct by patent applicants and venue rules for patent infringement cases. The committee rejected an amendment offered by Senator Jon Jyl (R-AZ) to raise the threshold for patents to be challenged in a post-grant review process. According to Senator Dianne Feinsten (D-CA), the legislation “heals” the rift between large technology corporations and universities, manufacturers, and smaller technology companies. The actiontaken by the Senate Judiciary Committee has been endorsed by several national higher education association. Further work on the legislation in both chambers of Congress is required.

A full copy of the Senate Judiciary Committee legislation is available here.

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.

Press Release