With the Patent Reform Act of 2007 through the US House of Representatives and before the Senate, its passage should now be plain sailing – so why the delay? asks PatNews’s Greg Aharonian.

On 28 September 2007, the US House of Representatives passed the Patent Reform Act of 2007 by a vote of 225-175. Having cleared the hurdle of passage in the House, the Act is now in front of the US Senate. To international onlookers, that would seem to suggest that it is only a matter of time before it comes into force. If only the process were that simple...

Unlike the House, where individual representatives have little power to defy party leaderships, members have more freedom to act individually in the Senate, possessing the power to block the progress on any pending bill. Indeed any constituency that has objections to a proposed bill, if they have enough money or vocal members, can find a senator to put a hold on the pending bill. And that is exactly what has happened to the Patent Reform Act of 2007.

To date, most of this opposition has come from the biotechnology, manufacturing and pharmaceutical industries. Although even they have been split on what should change: biotech companies represented by the Biotechnology Industry Organization (BIO) support some parts of the bill, but oppose others (such as apportionment of damages in lawsuits). And those that do oppose it have organised themselves well. More than 400 organisations sent an open letter to Senate leaders in October, stating: ‘No compelling case has been made for a bill written in this fashion. It is based on claims of a crisis in the current patent system that does not exist, supported by selective assertions which do not hold up under scrutiny.’

It has been well documented that one of the most controversial facets of the Act is the change from a first-to-invent to a first-to-file system, which would bring the US into line with practices in the rest of the world.

The February date cannot be just a coincidence. In fact, many industry experts believe that if the Patent Reform Act is not passed in the Senate before the elections take place, it will not be passed at all.

While supporters argue that the Reform Act will do wonders to restore health to the patent system, opponents as diverse as former US Patent and Trademark Office (USPTO) deputy commissioner Stephen Kunin and a Chinese government report both argue that passage of the Reform Bill will weaken the US patent system.

Opposing change
The Act currently before the Senate holds several significant differences to the Act that has been passed by the House. Some of the controversial issues yet to be resolved, for any bill to pass, include apportionment of damages in lawsuits, post-grant opposition, and granting USPTO management more power to establish new rules. Currently, the Senate version of the Act has been voted out of committee, and is awaiting Senate floor time, tentatively scheduled in February of 2008, for full Senate consideration.

In the meantime, the Senate manager of the Act, Senator Leahy, might be proposing a ‘Manager’s Amendment’ to the Senate version that would consolidate both versions of the Act and eliminate the need for a joint committee.

A new approach
With the US presidential elections planned for November 2008, the February date cannot be just a coincidence. In fact, many industry experts believe that if the Patent Reform Act is not passed in the Senate before the elections take place, it will not be passed at all. Pass it by the summer and the Act is safe, they say; leave it in limbo and it will need to go to a joint House-Senate committee, where it is likely to die a slow, silent death.

Critics of the Bush administration argue that it has allowed USPTO management to push through unnecessary patent rules to the detriment of inventors and patent lawyers (one set of rule changes was so bad a court blocked their implementation). As a result of this, many experienced patent examiners have been leaving the system and, as a consequence, patent quality has continued its gradual decline, and the Patent Reform Bill will do nothing to stop it.

President Bush’s opponents suggest that neither Congress nor the White House has earned the right to reform the patent system. But what is clear is that Congress is just as guilty as the administration in ignoring these problems. They need to act immediately, if the Patent Reform Bill, and the entire US patent system, is to have any workable future.

To keep up-to-date on the progress of the controversial Patent Reform Act of 2007 and the latest debates on the subject, visit www.ipreview.com.


This article first appeared in IP Review, issue 21

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