Patent Reform Act of 2007

The Patent Reform Act of 2007 (H.R. 1908, S. 1145) is a proposal introduced in the 110th United States Congress for changes in United States patent law. Democratic Congressman Howard Berman introduced the House of Representatives bill on April 18, 2007. Democratic Party Senator Patrick Leahy introduced the Senate bill on April 18, 2007. The bills broadly resemble the proposed Patent Reform Act of 2005 which would have enacted many of the proposals recommended by a 2003 report by the Federal Trade Commission [1] and a 2004 report by the National Academy of Sciences.[2] Similar acts were introduced as the Patent Reform Act of 2009 in the 111th Congress and as the America Invents Act in the 112th.

Contents

Proposed changes in U.S. patent law

In certain respects, H.R. 1908 and S. 1145 would make American patent law more similar to patent laws of many other countries. H.R. 1908 would effect the following changes in U.S. patent law:

Switch from first to invent to first to file

Further information: First to file and first to invent

The United States is currently the only country in the world that gives priority to the application that claims the earliest invention date, regardless of which application arrives first. The first-to-invent system is thought to benefit small inventors, who may be less experienced with the patent application system.[3] Critics of the first-to-file system also contend it would create a “race to the mailbox,” and would result in sloppier, last-minute patent applications.[3] However, the first-to-invent system requires the United States Patent and Trademark Office (USPTO) to undertake lengthy and complicated “interference” proceedings to try to determine who invented something first when claims conflict. The first-to-file system, supporters contend,[4] would inject much-needed certainty into the patent application process. Finally, because every other country is on a first-to-file system, supporters claim that the majority of patent applicants and attorneys are already operating on a first-to-file basis.[5]

Other proposed provisions

The bill would also make the following changes:

Status

The House version of this bill passed; the Senate version failed to pass in the 110th Congress. On September 4, 2007 the United States House Committee on the Judiciary reported the bill H.R. 1908, as amended, with the recommendation that it be passed by the House. The House passed the bill by a vote of 220-175 on September 7, 2007. It was favored among Democrats (160 ayes, 58 noes) and disfavored among Republicans (60 ayes, 117 noes). The Senate Committee on the Judiciary marked up the bill on June 16, 2007 and ordered the bill reported. The report, S. Rpt. 110-259,[8] was issued on January 24, 2008.

Advocacy for and against

A number of organizations have lobbied Congress either in favor or opposed to various aspects of the bill.

For

Organizations lobbying Congress in favor of various aspects of the bill generally view the bill as needed reform to reduce the abuses of the patent system which are stifling innovation. These organizations include:

Patent quality

The United States Department of Commerce strongly supports the bill's provisions directed to the improvement of patent quality, beginning at the application stage.[13]

Against

Organizations lobbying Congress in opposition to various aspects of the bill generally view the bill as weakening the rights of patent holders and/or favoring larger and foreign corporations, which in turn will stifle American innovation and contribute to the outsourcing of U.S. jobs to other nations. These organizations include:

Damages

The United States Department of Commerce opposes the bill "in its entirety" unless Section 4 of the bill, which proposes changes concerning the "Right of the Inventor to Obtain Damages", is "significantly revised". The Department believes that if Section 4 is not revised, "the resulting harm to a reasonably well-functioning U.S. intellectual property system would outweigh all the bill's useful reforms." [13]

International reaction

Yongshun Cheng, former Deputy Director of the IP Division of the Beijing High People's Court, has criticized the bill as being hypocritical. He asserts that the US should not be weakening the rights of US patent holders at the same time it is pressuring the Chinese government to strengthen the rights of Chinese patent holders.[26]

The Indian Pharmaceutical Alliance has pointed out that the provisions of the bill which allow for the validity of a US patent to be challenged shortly after the patent issues, could favor Indian generic drug manufacturers by lowering the cost and legal risks associated with challenging drug patents of questionable validity.[27]

See also

References

  1. ^ Federal Trade Commission, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, A Report by the Federal Trade Commission, October 2003 (pdf)
  2. ^ National Research Council (U.S.). Committee on Intellectual Property Rights in the Knowledge-Based Economy, A Patent System for the 21st Century, Stephen A. Merrill, Richard C. Levin, and Mark B. Myers, editors, 2004, ISBN 0-309-08910-7
  3. ^ a b Coster, page 10
  4. ^ Gholz, page 1
  5. ^ Coster, page 9
  6. ^ Congressional Budget Office Cost Report, pages 2, 5 and 11
  7. ^ Jeffrey H. Birnbaum, "Lawmakers Move to Grant Banks Immunity Against Patent Lawsuit", Washington Post, February 14, 2008
  8. ^ The Patent Reform Act of 2007: Report Together with Additional and Minority Views, to Accompany S. 1145, Report No. 110-259, January 24, 2008 (text, PDF)
  9. ^ The AICPA supports recent legislation that would make tax planning methods not patentable.
  10. ^ Business Software Alliance position paper on the Patent Reform Act of 2007
  11. ^ Cade Mendez, "Techies oppose US patent reform bill", The Register, October 25, 2007
  12. ^ "Patent Reform Act Stalls in the Senate", Electronic Frontier Foundation, May 2, 2008
  13. ^ a b Letter from N F Wienecke, US Department of Commerce
  14. ^ AFL CIO Legislative Alert, September 6, 2007
  15. ^ a b Letter from unions to Senate opposing patent reform bill
  16. ^ American Family Association et al. Letter to Harry Reid, April 22, 2008
  17. ^ "The Patent Reform Act of 2007 Will Weaken Patents and Jeopardize Continued Biotechnology Innovation " BioTechnology Industry Association press release, June 6, 2007
  18. ^ "Coalition to Continue to Work for Consensus Patent Legislation" Coalition for 21st Century Patent Reform press release, September 7, 2007
  19. ^ February 26, 2008 letter to U.S. Senate
  20. ^ IEEE letter to Senator Harry Reid, August 27, 2007
  21. ^ Eric Thomas, "More Than 430 Organizations From All 50 States Speak Out Against Proposed Patent Reform Act", Innovation Alliance Press Release, October 23, 2007
  22. ^ Letters of Opposition by state
  23. ^ NAPP letter to Senator Harry Reid regarding opposition to the Patent Reform Act of 2007, Dec. 27, 2007
  24. ^ "NSBA Opposes Patent Reform Proposal" NSBA press release Feb 5, 2008
  25. ^ Professional Inventor's Alliance web site
  26. ^ Cheng & Lin, "The Greatest Changes of the US Patent System in the Past 50 Years", China Intellectual Property News,November 11, 2007
  27. ^ Gireesh Chandra Prasad, "Local cos can eye patents in US", The Economic Times, July 23, 2007.

External links