Promote the Progress

As expected, Congressional patent reform efforts officially started yesterday with the introduction of the Patent Reform Act of 2009 in both chambers. [House bill here, Senate bill here]

I spent an hour or so reviewing the Senate bill and jotted down some quick thoughts. Here’s a from-the-hip analysis:

• As a whole, the bill is largely ho-hum. Same stuff, different session. The tone is similar to that of the 110th Congress – this bill is a starting point and is intended to get the discussion off the ground, again. Where it goes from here is anybody’s guess.
• That being said, I see the absence of the “second window” from the post-grant review procedures as a significant development. This bill comes from the IT camps that have defended the need for the “second window” through several legislative cycles. The omission of a second window is a concession for sure.
• The 102 preamble language is interesting. Some, I think, will say that the new language, which no longer refers to the  “person” who is “entitled to a patent” is symbolic of the reform effort as a whole in that they believe it’s a grand cut at inventor’s rights.
• Interesting provision – “Examination and search duties are sovereign functions which shall be performed within the United States by United States citizens who are employees of the United States Government.” Sounds like Marcy Kaptur’s hand to me (Representative Kaptur has made several spirited floor speeches against patent reform efforts over the years and has famously called for requirements that patent examination be hard-wired as a US job).
• The damages section is interesting. It really sets up a system that will encourage forum shopping, hometowning, etc.
• Strangest provision – in prescribing regulations for the operation of the post-grant review procedure, the Director “shall consider the effect on the economy, the integrity of the patent system, and the administration of the Office.” Ok.
• It strikes me as odd that post-grant review proceedings should be allowed to be settled by way of a private agreement between the challenger and the patent owner. The post-grant review process is frequently positioned as necessary to protect the public from the evil of ‘bad patents.’ Does a provision that allows private settlement of these actions, after a challenger has stepped up and paid the bounty required to challenge the patent, serve this end?
• Absence of fee diversion language is interesting, but the grant of fee setting authority to the Office, which is explicitly tied to “compensation for services performed,” might diminish the possibility for diversion over time.

Tags: patent reform, Patent Reform Act of 2009

This entry was posted on Wednesday, March 4th, 2009 at 4:31 am and is filed under Congress, legislation. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.