Round 4: Patent Reform Act of 2009 Introduced in Congress

Bills were introduced today by Democratic and Republican leaders in both the House and the Senate calling, yet again, for comprehensive patent law reform.  Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) and House Judiciary Committee Chairman John Conyers (D-Mich.) held a press conference this afternoon at which they announced the introduction of the bills.  They were joined by co-sponsors of the bills, Senator Orrin Hatch (R-Utah) and ranking minority member Lamar Smith (R-Texas).

Although controversial provisions remain in the bill, the Congressional leaders expressed confidence that the legislation will pass this year.  Last year, Congressional leaders were equally optimistic, but the Patent Reform Act of 2007 died in the Senate after being passed by the House.  Some form of patent reform legislation has gone before Congress in three of the past five years.  This year may be the year it passes, but there are some significant differences of opinion yet to be resolved.

One of the most controversial portions of the bill are provisions relating to the assessment of reasonable royalty damages in patent cases.  However, these provisions have been defined as “marker provisions” by Congressional staff indicating that the provisions act merely as a placeholder.  This likely represents the co-spsonsors’ belief that, while the issue of reasonable royalty damages will be addressed in the final bill, the provisions will be different from what has been originally proposed.

The venue provisions also remain in the bill.  As written, the venue rules would eliminate the Eastern District of Texas and other plaintiff-friendly venues as a proper venue in most cases.  While the recent In re TS Tech decision reduced the availability of the Eastern District as a proper venue, the venue provisions proposed in the Patent Reform Act of 2009 are much more restrictive, essentially requiring plaintiffs to sue defendants where they are located or where they have signifcant operations.

Other controversial provisions from last year’s bill are not included.  These include provisions amending rules relating to inequitable conduct before the USPTO and the Applicant Quality Submissions provisions requiring patent applicants submit their own search data. 

Industry groups lobbying Congress remain divided, particularly in regard to the provisions governing reasonable royalty damages.  It is not clear yet whether the groups will find common ground.

Senatory Leahy promises to push the bill quickly, with a hearing within two weeks and a Committee markup to approve the bill within two weeks of that hearing.  This might be a lofty goal considering the controversy that still remains.

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