Promote the Progress

The Senate Judiciary Committee gave us a watershed moment in the patent reform movement when, last week, it approved an amended version of the Patent Reform Act of 2009. The Committee’s action is a significant step toward enactment of comprehensive patent reform, particularly because it represents a compromise amongst major stakeholders on the controversial damages provision that has, for some time, played spoiler for the legislation.

So now what?  Where do we go from here?

Turns out, we’re not going anywhere…for now. All eyes will remain fixed on the Senate Judiciary Committee in the foreseeable future for two reasons:

1. Will the Judiciary Committee issue a written report to accompany the bill?

First, we’re looking for a Committee Report. Reports are an important part of the legislative process as they serve to inform the public and other members of Congress about the purpose of the proposed legislation and its impact on current law and life. Committee reports often explain the perceived need for the legislation and may present dissenting views. Reports can also include the views of executive agencies that stand to be impacted by the bill, and are required to include cost estimates and regulatory impact statements.

In contrast to the rules of the House, Senate committees are not required to submit a written report when approving a bill and passing it to the entire chamber. Indeed, as noted on its web site, the Judiciary Committee “sometimes publishes reports to accompany legislation that [it has] reported to the Senate Floor.” (emphasis added)

If the Committee publishes a report, potential interesting content includes the dissenting views of Senator Kyl, who has introduced a competing patent reform bill (S.610 [.pdf]) and represents the most visible opposition to S.515, and Senator Hatch, who voted against the bill he originally sponsored because it fails to address his concerns over inequitable conduct. If included, any input from the Patent and Trademark Office would also make interesting reading, particularly in light of the first-to-file and post-grant review provisions that stand to significantly change the operations of the Office.

2. When will the Judiciary Committee consider a nomination for Director of the Patent and Trademark Office?

With the confirmation of Gary Locke as the Commerce Secretary, we’re now waiting for President Obama to nominate a Director of the Patent and Trademark Office (Under Secretary, Intellectual Property). Once he does, the nomination goes to the Judiciary Committee for hearings.

With respect to any report it may decide to publish, the Committee has a chicken-and-egg issue of sorts.  Does it wait to publish a report until after it acts on a forthcoming Director nomination? Or does patent reform have sufficient inertia in light of the agreement on damages that the Committee (read Leahy, Specter, Feinstein) chooses to push the bill even in the absence of a Director nomination? On this question, a comment made by Senator Feinstein during markup might prove telling: “We have substantial meeting of the minds…We’ve got what we need to move the bill.”

Certainly quick passage by the Senate is possible, particularly if the Committee elects not to publish a report. Considering the importance and controversial nature of the bill, though, this seems highly unlikely.

The relative timing of any report that might issue and the Director nomination will be interesting to watch.

But, for now, we’re not going anywhere.

The GPO has published S.515, the Patent Reform Act of 2009, as reported out of the Senate Judiciary Committee on April 2, 2009.

You can view/download a .pdf of the reported version of the bill here.

Fueled by an agreement between the competing camps, the Senate Judiciary Committee voted last week to pass the Patent Reform Act of 2009 to the full Senate for debate. The Committee adopted a manager’s amendment that embodies the changes required by the agreement.

A .pdf redline version of the bill, as amended and passed by the Committee, is available here.

The significance of the agreement between the camps cannot be understated. Insider Hal Wegner has called it “historic” and sees the resulting changes as producing a “margin of support…so great that it appears, at least at present, as though the difficult cloture obstacle will be surmounted.” (emphasis Hal’s).

In a committee meeting led forcefully by Chairman Leahy, the Senate Judiciary Committee today voted to pass the Patent Reform Act of 2009 to the whole Senate. The Committee voted to adopt the proposed manager’s amendment [.pdf] and voted against various other proposed amendments.

Senator Hatch offered resistance based primarily on the inquitable conduct provision – “I’m sick and tired of non-innovators who use the inequitable conduct provision and then walk away as infringers.”

Senator Kyl, who has proposed an alternative patent reform bill, offered resistance in the form of a proposed amendment to the post-grant review provision of the bill. He sought to add a prima facie requirement that would “protect the patent office from having to accept 90% of requested challenges.” The committee did not adopt his proposed amendment, but Chairman Leahy did indicate that, at the request of Senator Kyl, he will discuss the post-grant review procedure and the proposed amendment with USPTO officials over recess.

Senator Coburn offered an amendment that would prevent diversion of USPTO fees for a period of five years. Senator Leahy expressed support for the idea, but led a vote to table the proposed amendment as one that is better considered by the whole Senate. As an appropriations issue, he expressed concern that the amendment might infringe on the jurisdiction of another committee.

Several comments of Senator Feinsten on the adopted amendment provide insight into the status of the compromise that appears to have been reached by the relevant groups:

“I think this amendment to the patent reform act of 2009 gives all parties 90% of what they want, not 50%.”

“We have substantial meeting of the minds…We’ve got what we need to move the bill.”

While the Committee successfully moved the bill to the full Senate, today’s hearing makes it clear that many more proposed amendments loom. Senate debate will likely be very intense.

The Senate Judiciary Committee is scheduled to meet again today to continue its consideration of S.515, The Patent Reform Act of 2009. Several amendments to the Act have been proposed and will be considered, including changes to the controversial damages provision that, to date, presents the biggest roadblock to enactment.

One proposed amendment [.pdf] includes changes to both the damages provision and the interlocutory appeals section, the current version of which stands to create a whole new patent backlog. Interestingly, the amendment also incorporates Representative Issa’s patent expert judge bill into the Patent Reform Act of 2009. Representative Issa has introduced his bill in several sessions now and it has generally been well-received. It is noteworthy, though, that Chief Judge Michel, speaking at the recent University of Akron Sughrue Symposium, noted that the bill is not needed to accomplish the stated purpose.

Lest you think that no sense of practicality remains in the reform debate, consider this proposed amendment [.pdf] which would amend the statute to allow marking of patented articles by reference to a website. I’ve wondered about this issue for years and would guess that a clear indication that virtual marking is acceptable would offer everyone in the debate a practical solution to an administrative and technical headache – maintaining patent marking information and updating products and/or literature.