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.

                          

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.

                          

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. 

Congress has been working for more than four years to reform U.S. patent law to enhance the ability of the U.S. patent system to promote innovation and strengthen the nation’s economic competitiveness.  The process has been complicated by the fact that different sectors rely on the patent system in varying ways and are affected differently by proposed reforms.  However, the Senate Judiciary Committee achieved a breakthrough on April 2nd with the adoption of a comprehensive amendment that included an effective compromise on major outstanding issues.  The resulting bill was reported by the Judiciary Committee on a 15-4 vote and now awaits a vote by the full Senate. 

The Congressional patent reform effort was prompted by seminal reports by the National Academies and the Federal Trade Commission.  In its report, the National Academies recommended reforming U.S. patent law to accomplish three goals:  1) harmonize U.S. patent law with international patent law, 2) improve patent quality, and 3) reduce unwarranted patent litigation costs.  Among the numerous improvements to U.S. patent law that would be achieved by S. 515, several respond directly to the National Academies’ recommendations.

On April 20th, the Associations’ Patent Reform Task Force, made up of university presidents and chancellors along with the co-chairs of the Associations’ Technical Advisory Committee, met to discuss the provisions of the legislation, outstanding areas of concern raised by several member institutions, and the overall strengths and weaknesses of the bill.  The Task Force recognized that while several universities have continuing concerns that remain unaddressed, Congress has been responsive to the major issues raised by the higher education associations.  In considering all these factors, the Task Force concluded that S. 515 is a strong bill that achieves a balanced compromise on a number of difficult issues, and addresses the major problems for universities identified by the associations. 

Accordingly, we sent the attached letter to the Senate leadership encouraging them to bring the bill before the full Senate for a vote.  In addition to the letter, we have attached two documents that provide descriptions of key provisions of S. 515 and background on the process the higher education associations have taken in addressing patent reform. 

It is important to note that Congressional consideration of patent reform is a continuing process, and its outcome is uncertain.  As the Senate is considering S. 515, the House of Representatives has recently begun to act on its own version of the bill.  We will remain engaged with Congress as these measures move through the legislative process, working to maintain the improvements included in the Senate bill and seeking opportunities to address remaining concerns.

                          

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

                          

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