Patent Reform Act

Patent Reform - Pending Legislation 

Due to scheduling changes in the Senate, the Patent Reform Act may not go to a vote before the end of the current legislative session. We will continue to post periodic updates as they happen.

The Patent Reform Act of 2007 was introduced on April 18, 2007 in the U.S. House of Representatives (H.R. 1908) and the U.S. Senate (S.1145).   The bills closely follow the Patent Reform Act of 2005, which sought to harmonize U.S. patent law with the patent laws of the rest of the world.  The House of Representatives version was passed on September 7, 2007 with heavy favor from Democrats.  The Senate version remains pending, with debate scheduled for the spring of 2008. If the Patent Reform Act of 2007 were to pass, it would be the most sweeping reform since the Patent Act of 1952.

Within our 175-member Intellectual Property practice, we have attorneys following the issues that impact a wide variety of industries, and from all angles. 

Timeline

September 25, 2008  U.S. Senate Minority Whip Jon Kyl (R-AZ) introduced the Patent Reform Act of 2008 (S.3600), which significantly revises the earlier proposed legislation on patent reform. The bill was referred to the Committee on the Judiciary, and is not expected to reach the floor until 2009.

August 8, 2008  U.S. Senate Minority Whip Jon Kyl (R-AZ) is reportedly drafting a new version of a patent reform bill to be presented in September when the second session of the 110th Congress convenes.  In a departure from earlier versions of the Patent Reform Act of 2007, Kyl’s proposed bill would require litigants to present exact calculations of damages, and would limit time for patent re-examinations to 12 to 18 months if a patent does not meet novelty and non-obviousness requirements.  Kyl’s bill would also create an administrative rather than judicial proceeding to address inequitable conduct claims, and follow U.S. Commerce Secretary Carlos Gutierrez’s suggestion of requiring search reports and patentability analysis to be submitted by applicants.

July 31, 2008  The U.S. House of Representatives sent proposed legislation to the White House to clarify whether the Director of the U.S. Patent and Trademark Office improperly appointed patent and trademark judges.  The proposed legislation would amend the Patent Act and the Lanham Act, and was drafted in response to an article suggesting that the PTO Director, who is not the head of a department under the Appointments Clause of the U.S. Constitution, does not have the authority to appoint board members.  The House floor proceedings on the bill are available here.

May 11, 2008  U.S. Commerce Secretary Carlos Gutierrez wrote an editorial for The San Jose Mercury News Sunday expressing regret that the Patent Reform Act of 2007 has stalled in the Senate due to proposed language on how damages are awarded in infringement cases. The editorial can be found here.

May 6, 2008  Sen. Sheldon Whitehouse (D-RI) confirmed that Senate Majority Leader Harry Reid (D-NV) is unlikely to return the Patent Reform Act of 2007 to the Senate schedule unless and until the Senate Judiciary Committee agrees on language regarding how damages are awarded in infringement lawsuits. Sen. Whitehouse, a member of the Judiciary Committee, spoke about the bill at the annual meeting of the Computer and Communications Industry Association.

May 2, 2008  Senate Majority Leader Harry Reid (D-NV) removed the Patent Reform Act of 2007 (S. 1145) from the Senate calendar, pending disagreement on the Senate Judiciary Committee about certain provisions regarded as controversial.

April 24, 2008  Sen. Orrin Hatch (R-UT) met with executives from technology and financial services industries while he redrafts certain provisions of the patent reform bill. Hatch believes that a revised section on inequitable conduct and continued support from Senate Judiciary Chairman Patrick Leahy (D-VT) will allow the bill to reach the Senate floor for debate before Memorial Day (May 26, 2008).

April 16, 2008  Senate Judiciary ranking member Arlen Specter (R-PA) noted in a press conference that he and other members of the Senate Judiciary Committee are working to “resuscitate” the patent reform bill in order to bring it for debate on the Senate floor. Sen. Specter’s comments came after Sen. Patrick Leahy (D-VT), one of the bill’s co-sponsor’s, disagreed with Sen. Specter about the proposed calculation of damage awards in infringement lawsuits.

April 9, 2008 Senate Judiciary ranking member Sen. Arlen Specter (R-PA) issued a statement that he has backed off supporting the patent bill currently awaiting floor debate due to continued concerns about language on calculating damages in infringement lawsuits. Sen. Specter’s statement is available here. Senate Judiciary Chairman Patrick Leahy (D-VT) had hoped to bring revised language to the floor this week.

April 7, 2008  Senate Judiciary Chairman Patrick Leahy (D-VT) may be expected to reveal amendments to the patent reform bill this week in response to concerns about how damage awards would be calculated and about certain post-grant review procedures. The bill may come to a vote before Congress takes its Memorial Day recess.

April 3, 2008  The White House reiterated its position on the pending Senate bill in a letter to Senate Judiciary Chairman Patrick Leahy (D-VT), stating its support for the bill’s provision for applicant quality submissions and the post-grant review process, but with the requirement that it protect patent holders from harassment. The letter also stated its continued concern that the bill’s current damages provision would limit courts’ discretion, although the White House stated it would support statutory guidelines to identify relevant factors to calculating damages. The letter may be accessed here.

April 2, 2008  A federal court voided the U.S. Patent and Trademark rules introduced last fall.  The new rules were an attempt to reduce the number of claims and continuations allowed in patent applications.  Judge James Cacheris in the Eastern District of Virginia held that the changes were substantive and therefore the PTO exceeded its rulemaking authority.  The memorandum is available here.

April 1, 2008 Senate Majority Leader Harry Reid (D-NV) has indicated the Patent Reform Act of 2007 is in line for debate after Congress addresses new housing market legislation. The reform bill, which proposes major changes to the U.S. patent system, is likely to hit the Senate floor sometime in June or July 2008. 

March 26, 2008  U.S. Patent and Trademark Office Director Jon Dudas spoke at the Tech Policy Summit in Hollywood, CA about possible solutions to reduce the number of bad patent applications filed each year in his office. Dudas stated his belief that the patent reform bill currently pending in the U.S. Senate is more likely pass than not. More coverage on Dudas’ talk is available here.

March 17, 2008 An amendment to the FY09 budget resolution passed last week by the U.S. Senate unanimously condemned the practice of diverting funds away from the U.S. Patent and Trademark Office to other programs. Sen. Orrin Hatch (R-UT), a sponsor of the pending patent reform legislation, endorsed the amendment’s language.

March 13, 2008 Senate Judiciary Chairman Patrick Leahy (D-VT), ranking member Sen. Arlen Specter (R-PA), and Sen. Orrin Hatch (R-UT) announced several proposed amendments to the Senate version of the currently pending patent reform bill. Amendments include the codification of the In Re Seagate (Fed. Cir. 2007) objective recklessness standard for willful infringement, Federal Circuit jurisdiction over interlocutory appeals during Markman hearings, and the elimination of the best mode requirement. Senate Majority Leader Harry Reid (D-NV) expects the bill to be on the Senate floor for debate sometime this spring, between March 24th and May 23rd, 2008.

March 11, 2008 Two advocacy groups, the Innovation Alliance and the Coalition for 21st Century Patent Reform, separately critiqued the Senate version of the patent reform bill, which is expected to reach the Senate floor in April or May 2008.  Proposed changes to damage calculations were of particular concern to both groups.

March 6, 2008 The Coalition for Patent Fairness, a collective of entertainment, financial services, technology and telecommunications firms, sent a series of suggested changes to the patent reform bill currently pending in the Senate. The group previously sent a letter to Senate Majority Leader Harry Reid and Mitch McConnell (R-KY) urging quick passage of the Senate version of the patent reform bill. More information is available at http://www.patentfairness.org.

March 5, 2008 Fifteen members of the U.S. House of Representatives, led by Michael Michaud (D-ME) and Donald Manzullo (R-IL), asked for a hearing on the international implications of the patent reform legislation, currently pending in the Senate.

March 4, 2008 The AFL-CIO announced its opposition to the current version of the Senate patent reform bill in a press release due to concerns about the changes in the standard for calculating damages in infringement cases, post-grant review and publication.

February 27, 2008 In an oversight hearing, the U.S. House Judiciary Courts, the Internet and Intellectual Property Subcommittee members questioned U.S. Patent and Trademark Office Director Jon W. Dudas about the backlog of patent applications and the increasing amount of time it takes examiners to process those claims. More information, including a video webcast of the hearing, is available at http://judiciary.house.gov/Oversight.aspx?ID=417.

February 26, 2008 Senate Majority Leader Harry Reid (D-NV) told reporters that the Senate version of the patent reform bill is likely to be debated on the floor after the Easter recess ends on March 30, 2008.

February 15, 2008 The U.S. Congressional Budget Office published the cost estimate for the patent bill as reported by the Senate Committee on the Judiciary on January 24, 2008. 

February 14, 2008 The House Subcommittee on Courts, the Internet, and Intellectual Property held hearings on amendments to the design patent laws. The two primary specific issues on the table are whether to eliminate design patents covering replacement automobile parts and whether to extend IP protection to fashion designs. More information is available at http://judiciary.house.gov/oversight.aspx?ID=412.

February 4, 2008 The Bush administration’s opposition to the Senate version of the patent reform legislation was expressed in a letter from the U.S. Department of Commerce to Senate Judiciary Chairman Patrick Leahy (D-VT).

Janaury 10, 2008  The Congressional Research Service issues their report for Members and Committees of Congress -- Patent Reform in the 110th Congress: Innovation Issues.

December 18, 2007 Senators Orrin Hatch (R-UT) and Patrick Leahy (D-VT) spoke on the Senate floor about the merits of the Patent Reform Act of 2007.  The transcript is available at http://thomas.loc.gov/r110/r110.html.

September 10, 2007 The Patent Reform Act of 2007 was placed on the Senate Calendar.

September 7, 2007 The U.S. House of Representatives passed the Patent Reform Act of 2007 (H.R. 1908) by roll call vote. The totals were 220 Ayes, 175 Nays, 37 Present/Not Voting.  The bill was sponsored by Rep. Howard Berman (D-CA) and 23 co-sponsors. 

September 6, 2007 The Bush administration’s opposition to the House version of the patent reform legislation was expressed in a Statement of Administration Policy from the U.S. Office of Management and Budget. 

May 18, 2007 The Bush administration’s views of the patent reform legislation was expressed in a letter from the U.S. Department of Commerce to Senate Judiciary Chairman Patrick Leahy (D-VT) and Arlen Specter (R-PA). 

April 26, 2007 U.S. House of Representatives Subcommittee on Courts, the Internet, and Intellectual Property held a hearing on H.R. 1908, The Patent Reform Act of 2007.  More information, including a video webcast of the hearing, is available at http://judiciary.house.gov/hearings.aspx?ID=169.