Senator Hatch remarks on patent reform legislation - no insight on controversial issues, but forecasts a lengthy process

Senator Orrin Hatch recently addressed the Generic Pharmaceutical Association and focused a large portion of his remarks on patent reform legislation.

As the Chairman of the Senate Subcommittee on Intellectual Property, Senator Hatch is expected to be an original sponsor of any major reform bill introduced in the Senate.  To date, Senator Hatch has played the issue close to the vest — making the his approach to patent reform one of the most significant open questions at this time.

His remarks before the GPA are worth reviewing because they provide a brief introduction and outline to the controversy underlying several of the proposed reforms.

You will be disappointed, however, if you’re looking for insight into the direction on which Senator Hatch is leaning on any particular reform issue.

Here are a few quotes:

On post-grant review and related quality issues

“Although there is little consensus regarding the details, there is some consensus for addressing this problem either by fixing the existing re-examination process or by creating a post-grant review process so that third parties can challenge suspect patents in an administrative process. Similarly, many support allowing third parties to submit prior art that is relevant to an applicant’s patent claims before the patent is issued.

I believe that any patent reform legislation that is to have a long-term impact will necessarily include one or more of these proposals.”

On harmonization issues (first-to-file, elimination of the best mode requirement, changing the definition of prior art, and publication of all applications at 18 months)

“In the context of patent reform legislation, we are working through the arguments regarding moving from our traditional first-to-invent regime to the internationally adopted first-to-file system; eliminating the best-mode requirement; requiring publication of all patent applications after 18 months; and, moving toward a more uniform definition of prior art that is closer to what is used internationally.

It seems clear that some of the harmonization proposals have significant support both in Congress and in the patent community. I would anticipate that aspects of international harmonization will be included in patent reform legislation this Congress.”

On litigation reforms

“Two approaches to dealing with the current problem of patent litigation have emerged in the patent reform debate.

One focuses on eliminating subjective elements and fact-intensive inquiries from patent litigation.  The other, and much more controversial, approach involves altering the remedies available to patent holders in litigation.

Crafting language that satisfactorily codifies a proportional contribution measure of damages is just one of the many challenges that Congress faces in the process of drafting patent reform legislation.”

Certainly non-committal and lacking insight.

The Senator’s closing remarks on the reform issue might be the most informative:

“As you may have guessed from my remarks, my sense is that patent reform still has a fair distance to go before a sufficient consensus forms in Congress around a particular set of reforms. In my experience, this is not uncommon for patent reform legislation, which often takes several years from conception to enactment.”