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08.09

Patent Reform Déjà vu

By Erica Wissolik

In recent years, Congress has introduced legislation to overhaul the U.S. patent system. Each effort has failed. And it appears that the 111th Congress may not fare any better. Back in April, when we last heard about patent reform in the 111th Congress, the Senate Judiciary Committee passed the Patent Reform Act of 2009 (S. 515). The bill has not yet been scheduled for the floor. Meanwhile, the House Judiciary Committee has not acted on a House version of a reform bill.

Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) has championed patent reform legislation for years, but had faced considerable opposition on the issue of how to award damages in infringement cases. Interest groups representing the biotechnology and pharmaceutical industries expressed concern about previous versions of the damages provision, saying the bill would dilute the value of their patents.

Patent reform legislation stalled in the last Congress, when Leahy was unable to reach an agreement on the same issue with key committee member Arlen Specter (D-Pa.). This time around, however, Specter and another key committee member, Dianne Feinstein (D-Calif.), agreed to a compromise that would make judges the gatekeepers in deciding what evidence juries can hear when determining how to apportion damages. Their compromise reflects input which IEEE-USA's Intellectual Property Committee (IPC) provided to the Senate as they drew up their patent reform bill. The compromise also addresses post-grant review of patents, inequitable conduct by patent applicants and venue rules for patent infringement cases. Feinstein said the measures “heal” the split that pitted a coalition of mostly big technology corporations against manufacturers, universities, smaller technology companies and individual inventors.

Opponents of the Senate-passed bill say they will now focus on making sure the House version reflects their concerns regarding the damages provision. (They have an ally in former House Judiciary Intellectual Property Subcommittee chairman Lamar Smith (R.-Texas), who dislikes the Senate “damages” language and believes the “gatekeeper” concept warrants further review.) However, it is unclear when the House will take up the bill. While the House Judiciary did hold one hearing on the subject this year, they have yet to consider actual legislative language. The rumor mill indicates that some House members want to wait until the full Senate moves the bill first, hoping to see additional changes, while other Members have stated they have no intention of going along with their Senate counterparts’ approach to a patent system overhaul — conditions that may lead to yet another death for patent reform efforts. In the meantime, the IPC will continue to work with members of both the House and Senate, as well as the new U.S. Patent & Trademark Office commissioner, on the central sticking point of language — addressing how to apportion damages in infringement suits.

Erica Wissolik is IEEE-USA's program manager for government activities. She is also the editor of the biweekly What's New @ IEEE-USA Eye on Washington e-mail update.

Comments may be submitted to todaysengineer@ieee.org.