Agreement Reached On Key Patent Reform Issues
WASHINGTON (Wednesday, April 1, 2009) – Leaders on the Senate Judiciary
Committee have reached an agreement on several key issues in the debate
over patent reform, Chairman Patrick Leahy (D-Vt.) announced Wednesday.
The Committee is scheduled to meet in executive session on
Thursday, April 2, to consider amendments to
S. 515, the Patent Reform Act of 2009. It will be the third
Committee meeting this year to mark up patent reform legislation.
The agreement reached by Leahy, Ranking Member Arlen Specter (R-Pa.),
and senior Committee member Dianne Feinstein (D-Calif.) addresses
several of the most divisive issues in the debate over patent reform.
The Committee is expected to consider the amendment Thursday.
The text of the Leahy-Specter-Feinstein amendment is
available online. The amendment will:
-
DAMAGES:
Strike the calculation of reasonable royalty damages in Section 4
and include gatekeeper language developed by Senators Feinstein and
Specter to provide more of a role for the judge to identify the
appropriate legal standards and relevant factual contentions for the
jury.
-
INTER PARTES REEXAMINATION:
Strike “in public use or on sale” in Section 5.
-
BEST MODE:
Retain the requirement that a specification contain the best mode of
carrying out the invention as part of the patent application, but
not allow best mode to be used as a means to invalidate a patent.
-
INTERLOCUTORY APPEALS:
Tighten the interlocutory appeals provision by providing the
district court with specific standards that it must certify have
been met.
-
WILLFULNESS:
Tightens the willfulness provision in Section 4 to ensure that it is
in line with the Federal Circuit’s decision in Seagate.
-
VENUE:
Strike the subsection of Section 8 relating to venue and insert a
codification of the Federal Circuit’s recent decision in TS Tech.
-
PATENT PILOT PROGRAM:
Creates a pilot program in at least six district courts from
at least three different circuits that will receive funding
for training in patent law, and to hire law clerks devoted to
working on patent cases.
On
March 26, the Committee adopted an
amendment sponsored by Leahy, Senator Orrin Hatch (R-Utah),
Feinstein, Specter, and Committee members Sheldon Whitehouse (D-R.I.)
and Jon Kyl (R-Ariz.) to tighten the language on prior art and
derivation proceedings, clarify that first-window post-grant review
proceedings must be instituted by the Director of the Patent and
Trademark Office, correct drafting errors in the inter partes
reexamination section and elsewhere, and to add a provision that permits
patent holders to “virtually mark” a product by providing the address of
a publicly available website that associates the patented article with
the number of the patent.
On
March 31, the Committee adopted a
second amendment to add a provision to increase the ability of
government-operated, contractor-owned facilities to reinvest licensing
royalties for scientific research, development and education, and to
establish a trial teleworking program for the Patent and Trademark
Office.
Leahy and Hatch
introduced the Patent Reform Act of 2009 on March 3. It is the
third Congress in which Leahy and Hatch have introduced patent
legislation. In the 110th Congress, the Judiciary
Committee
reported a bill to make the first major reforms to the nation’s
patent system, but it’s consideration on the Senate floor was stalled
when legislators were unsuccessful in reaching an agreement on key
language on damages.
The Patent Reform Act of 2009 is also cosponsored by Senators Chuck
Schumer (D-N.Y.) and Sheldon Whitehouse (D-R.I.), both members of the
Senate Judiciary Committee, and Senators Mike Crapo (R-Idaho), Kirsten
Gillibrand (D-N.Y.), and James Risch (R-Idaho). Companion
legislation has been introduced in the House of Representatives.
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