Administration's Response to S.1145

February 7, 2008

On January 24th, the Committee released its final S.Rep. 110-259 in support of the Patent Reform bill, S. 1145, as amended and approved last summer. The Report adds the minority views of several Committee members to the draft report that was informally circulated earlier. Now, with the help of PTO Solicitor John Whealan, who is on loan to the Committee, its staff is polishing up revisions that are expected to be introduced as a Manager’s amendment, to be submitted with last summer’s bill. Details of that amendment are not likely to be revealed until it is sent to the Senate floor.

As the Senate Judiciary Committee completes consultations and preparation of the bill to be brought to the Senate floor around mid-February, various interest groups have weighed in with objections.

On January 30th, two economic consultants to BIO released their paper, “Proposed Patent Reform Legislation: Limitations of Empirical Data Used To Inform The Public Policy Debate.” They looked back to the FTC, National Academies of Sciences and National Research Council studies that have been used to justify the legislation, and criticized them for lack of empirical data. Although this report did not address specific features of pending legislation, it and the other recent criticisms may increase hesitancy over adopting extensive changes in the patent law.

On the same day, ex-PTO officials, Gerald J. Mossinghoff and Stephen G. Kunin, issued a white paper, “The Need For Consensus On Patent Reform.” While funded by the mainstream Coalition for 21st Century Patent Reform, this white paper expressed the authors’ personal views. They criticized as “problematic” the proposed “mandatory” apportionment of patent infringement damages, changes in venue rules, immediate interlocutory appeal of patent claim construction rulings, a revised standards of proof for willful infringement; and delayed publication of some U.S. patent applications. Endorsing the proposals of the National Academies of Science study in 2004, this white paper recommended focusing on establishing a first-inventor-to-file system, a single window post-grant review of patents, outlawing the diversion of PTO fees to other government programs, eliminating the inequitable conduct defense or at least a modified standard, and requiring publication of all patent applications at 18 months.

Then, on February 4th, Nathaniel F. Wienecke, Asst. Secretary of Commerce for Legislative and Intergovernmental Affairs sent a six page letter to Judiciary Committee Chair Leahy, apparently directed to the provisions of last summer’s version of the bill. Secretary and PTO Director John Dudas followed up the next day with a media teleconference to reinforce the Administration’s views. The letter stated that the Administration continues to oppose S. 1145-in its entirety-unless the damages provisions are significantly revised, saying that section would cause more problems than it would solve. The letter supported a few provisions of the bill, with some qualifications, including the proposals to require applicant quality submissions, give fee-setting authority to the PTO, establish a two window post-grant patent review process, and end inter partes reexamination. It concluded by opposing the creation of a revolving fund for PTO funding (which probably already is dead, because of opposition from the Senate Appropriations Committee chair), and offered comments on other parts of the bill.