The lead congressional negotiators on a major overhaul of the nation's patent laws predicted today that they would complete their work in the next two years.
Identical pieces of legislation are being filed today in the House and Senate, picking up where the lawmakers left off last year when the legislation stalled in the Senate. Negotiations began four years ago on what is described as the biggest set of changes in intellectual property law in five decades.
"We can't go on in the modern age operating on patent laws that have been in place for 50 years," said Rep. Lamar Smith (R-Texas), ranking Republican on the House Judiciary Committee.
Smith spoke at a news conference with House Judiciary Chairman John Conyers (D-Mich.), Senate Judiciary Chairman Patrick Leahy (D-Vt.), and Sen. Orrin Hatch (R-Utah). The four struck a bipartisan tone, pledging action this Congress and saying that the recession has made the need for change more urgent.
"Now is the time to bolster our role as the world leader in innovation. Now is the time to create jobs at home," Leahy said.
Among the legislation's many changes is a conversion to a "first-to-file" system for determining inventors' rights. The Patent and Trademark Office currently tries resolve competing claims by trying to determine who first invented the innovation. The bill also would affect enforcement and jurisdiction provisions.
Conyers said the main sticking points continue to be the standard for calculating damages and possible changes to the standard for determining "inequitable conduct" on the part of a patent holder. "There's a lot of effort going into that," he said.
The Senate Judiciary Committee is scheduled to hold a hearing on the legislation March 10.
UPDATE (5:27 p.m.): Via Law.com, The Recorder reports today on the intense interest in the patent legislation among Silicon Valley lawyers. They crowded into the home of Symantec Corp. CEO John Thompson for a Leahy fundraiser two weeks ago.
Among the key provisions in the senate version, damages would be reformed by requiring courts to ensure that if a reasonable royalty is awarded it reflects "the specific contribution over the prior art" of the patent. This was the critical issue that ultimately caused an impasse with the patent reform bill last year. It remains to be seen whether this language will be acceptable to key stakeholders.
Post-grant opposition is provided with a single 12 month window following issuance, but inter partes reexam is expanded by elimination of "could have raised" estoppel. If enacted, there will be 3 post-grant procedures for challenging a patent (ex parte reexam, inter partes reexam and post-grant opposition).
The bill also includes conversion from a first-to-invent to a first-to-file patent system.
Posted by: Stephen Maebius | March 03, 2009 at 05:16 PM