Compromise Allows Patent Reform to Move to Senate Floor

Congress has been debating the need to revise U.S. patent law for years, and, while the debate certainly is not over, a significant hurdle was passed last week when the Senate Judiciary Committee voted 15-4 to move S.515, as amended, for full Senate consideration. 

Several provisions in the bill as introduced had met opposition from vocally significant groups, such as the biotech and academic communities. On the other side of the issue have been equally powerful players such as large information technology & communications companies.

S.515, the Patent Reform Act of 2009, amends federal patent law to rewrite provisions concerning the conditions for patentability. Foremost among the changes is the adoption of a first-to-file patent system that defines the "effective filing date of a claimed invention" as the filing date of the patent or the application for patent containing the claim to the invention. By abandoning the first-to-invent system, the move brings the U.S. patent system in line with the rest of the developed world.

Other provisions of the bill revise various rights and requirements related to patents regarding: damages; post-grant procedures; citation of prior art; inter-partes reexaminations; pre-issuance submissions by third parties; venue and jurisdiction; and the regulatory authority of the Patent and Trademark Office. In addition, S. 515 replaces the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board.

The damages, venue and post-grant review conditions have proven to be the most contentious since hearings started on patent reform in 2005. According to Senate Judiciary Committee chair Sen. Patrick Leahy (D-VT), Sens. Dianne Feinstein (D-CA) and Arlen Specter (R-PA) were particularly critical in developing the compromise.

As amended, S.515 provides a greater role for the judge to serve as gatekeepers to identify the appropriate legal standards and relevant factual contentions for juries to consider when determining damages in patent infringement cases. The bill also clarifies and facilitates changes of venues.

The compromise that allowed the bill to advance, while picking up broad bipartisan endorsement in the committee, cost the support of one of the original and long-standing supporters of patent reform, Senator Orrin Hatch (R-UT).

A specific date for full Senate consideration has not been set as the Senate is on recess until April 20. No action has been taken yet on H.R.1260, the House version of the original bill.

S. 515, as amended, is available at: http://thomas.loc.gov/