2005, 2006, 2007

2007 Patent Law Reform

HR 1908 as passed by the House of Representatives on September 7, 2007

The Patent Reform Act of 2007 (S.1145) (H.R. 1908) was introduced on April 18, 2007 in both the House of Representatives and the Senate.

Representatives Berman (CA), Smith (TX), Conyers (MI), Coble (NC), Boucher (VA), Goodlatte (VA), Lofgren (CA), Issa (CA), Schiff (CA), Cannon (UT), and Jackson-Lee (TX) introduced H.R. 1908.

Senators Leahy(VT), Hatch (UT), Schumer (NY), and Cornyn (TX) introduced S. 1145.

Patent format includes the following sections:

• First-to-File (sec. 3)
• Assignee Filing (sec. 4)
• Prior User Rights (sec. 5)
• Patent Damages (sec. 5)
• Enhanced Patent Reexamination (sec. 6)
• Post-grant Review Proceeding (sec. 6)
• Publication of Applications After 18 months (sec. 9)
• Submission of Prior Art by Third Parties (sec. 9)
• Venue for Patent Suits (sec. 10)
• Interlocutory Appeals of Claim Construction (sec.10)
• Expanded USPTO Rulemaking Authority (sec. 11)

Breaking News:

March 13, 2008 - S. 1145 Amendments proposed by Sens. Leahy, Hatch and Specter
Severability
Best Mode Requirement
Appointments Clause
Administrative Support for Federal Circuit Judges
Codify Objective Recklessness Standard from In re Seagate
Delete Marking Provision
Duties of Patent Trial and Appeal Board
Derivation Proceedings
Interlocutory Appeals
Deletion of Redundant Language Concerning the Effect of Final Post Grant Review Proceedings
Conforming Changes
Finality of Decisions
Technical Correction
Strike Language Relating to the Request for Reexamination by an Owner of a Patent

February 19, 2008 - National Journal's CongressDailyPM
Congressional Budget Office Cost Estimate, S. 1145 Patent Reform Act of 2007

February 15, 2008 - Intellectual Property Owners Association (IPO)
IPO Publishes Speech by Chief Judge Michel with Detailed Comments on Patent Reform Legislation

February 4, 2008 - U.S. Commerce Letter
Administration views on S. 1145, the "Patent Reform Act of 2007."

February 1, 2008 - The Bureau of National Affairs, Inc.
The Need for Consensus on Patent Reform by Gerald J. Mossinghoff & Stephen G. Kunin.

January 24, 2008 - Report on S.1145

January 10, 2008 - CRS Report for Congress
Patent Reform in the 110th Congress: Innovation Issues

January 2008 - Congressional letter of interest:
Chinese Spell Out Weakness of Patent Reform Act

Legislative Activity on Patent Law Reform:

        Check back often as new actions and upcoming hearings will be posted as announced.

September 11, 2007 - HR 1908: Text Passed by House and Received in the Senate

September 6, 2007 - House Committee Report
The House passed the Patent Reform Act by a vote of 225-176, after accepting the Conyers amendment by a vote of 263-136. The House also accepted Issa amendments No.. 2 and 3, the Jackson-Lee amendment No. 4 and the Pence amendment No. 5 (all listed in H.R.Rep.No. 319 accompanying the rule for consideration).

Statement of administrative policy on HR 1908 is available here.

Rules Committee draft report relating to HR 1908 is available here.

September 5, 2007 - HR 1908
The deadline for representative amendments to HR 1908 was 5:00 p.m., September 5, 2007. House Leadership met at 3:00 p.m., September 6, 2007 to set the rules for debate on the House Floor. The voting on HR 1908 began at 9:00 a.m. Friday, September 7, 2007.

The Report of the House on HR 1908 is available here.

Daily Digest report of HR 1908 debate is available here.

All filed amendments are available here.

July 20, 2007 - Hearing
IPO Daily News, Daily Comment on Patent Reform Legislation - Senate Judiciary Committee Favorably Reports a Bill 

July 18, 2007 - Hearing
The Senate proceedings will begin at 10 am in Room 226, Dirksen Senate Office Building, and will not be available by webcast.
The House markup will begin at 1015 am in Room 2141, Rayburn House Office Building, and will be available by webcast on the House Judiciary Committee website at
http://judiciary.house.gov/markup.aspx?ID=175

July 12, 2007 - Hearing
Senate Committee on the Judiciary. Date of scheduled consideration for S. 1145. SD-226. 10:00 a.m.June 28, 2007 - Hearing
Senate Judiciary Committee, Markup of S.1145    

June 21, 2007 - Hearing
Senate Judiciary Committee, Markup of S. 1145. Senator Leahy introduced a substitute bill. The Judiciary Committee adopted the manager's amendment, however the bill has not been reported out of the committee.

June 19, 2007
Letter regarding Patent Reform Legislation with 200 signatories.

June 6, 2007 - Hearing    Agenda    Witness Testimony
Oversight Hearing on: "Patent Reform: The Future of American Innovation"

May 16, 2007:
Markup of H.R. 1908

May16, 2007:
Letter from General Counsel of the U.S. Department of Commerce regarding H.R. 1908

May 3, 2007 - Letter
Judge Michel to the Senate Judiciary Committee regarding patent reform bill.

April 26, 2007 - Hearing    Agenda        Witness Testimony
Oversight Hearing on: "The Patent Reform Act of 2007." (H.R. 1908)

February 15, 2007 - Hearing        Agenda        Witness Testimony
Oversight Hearing on: American Innovation at Risk: "The Case for Patent Reform."

September 14, 2006 - Hearing     Agenda        Witness Testimony
Legislative Hearing on H.R. 5120, "To amend title 35, United States Code, to conform certain filing provisions within the Patent and Trademark Office."

June 15, 2006 - Hearing     Agenda        Witness Testimony
Oversight Hearing on "Patent Trolls: Fact or Fiction?"

May 23, 2006 - Hearing      Agenda       Witness Testimony
Legislative Hearing on H.R. 435, the "Equal Access to Justice Reform Act of 2005."

May 23, 2006 - Hearing      Agenda      Witness Testimony
Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Reforms

April 27, 2006 - Hearing      Agenda      Witness Testimony
Patent Harmonization April 4, 2006 - Hearing      Agenda      Witness Testimony
Patent Quality Enhancement in the Information Based Economy

October 6, 2005 - Hearing      Agenda      Witness Testimony
Improving Federal Court Adjudication of Patent Cases

September 15, 2005 - Hearing      Agenda      Witness Testimony
The Amendment in the Nature of a Substitute to H.R. 2795, the 'Patent Act of 2005'
Subcommittee on Courts, the Internet, and Intellectual Property

July 26, 2005 - Hearing     Agenda      Witness Testimony
Perspectives on Patents: Harmonization and Other Matters
Senate Committee on the Judiciary, Subcommittee on Intellectual Property

June 28, 2005 - Mark-up Scheduled (postponed)
House Committee on the Judiciary: Subcommittee on Courts, the Internet, and Intellectual Property

June 14, 2005 - Hearing     Agenda     Witness Testimony
Patent Law Reform: Injunctions and Damages
Senate Committee on the Judiciary: Subcommittee on Intellectual Property

June 9, 2005 - Hearing     Agenda     Witness Testimony     Hearing Transcript
House Committee on the Judiciary: Subcommittee on Courts, the Internet, and Intellectual Property

April 28, 2005 - Hearing     Agenda     Witness Testimony
Committee Print Regarding Patent Quality Improvement (Part II)
House Committee on the Judiciary: Subcommittee on Courts, the Internet, and Intellectual Property

April 25, 2005 - Hearing     Agenda     Witness Testimony
The Patent System Today and Tomorrow
Senate Committee on the Judiciary: Subcommittee on Intellectual Property

April 20, 2005 - Hearing   Agenda    Witness Testimony
Committee Print Regarding Patent Quality Improvement (Part I)

Key Government/Industry Reports and Publications:

April 18, 2007 - Draft of the 2007 patent reform legislation
A bill to amend title 35, United States Code, to provide for patent reform.

February 13, 2007 - Bill     
Pilot program to encourage enhancement of expertise in patent cases among district judges (H.R. 34)

August 3, 2006 - Bill             
Patent Reform Act of 2006 (S.3818)

May 18, 2006 -   Bill
Pilot program for patent enhancement (H.R. 5418)

April 4, 2006 - Bill
Patent Depends on Quality Act of 2006

August 1, 2005 - IP Law Bulletin
Vote On Patent Reform Bill Delayed In Congress

July 26, 2005- Amendment in the Nature of a Substitute to H.R. 2795 Offered by Mr. Smith of Texas (July 26, 2005)

July 22, 2005 - Robert O. Lindefjeld, Jones Day
House Bill 2759: The Patent Reform Act of 2005 (PDF version; please click the link at the bottom of this page for PowerPoint version)

July 18, 2005  - The ABA Section of Intellectual Property Law
Letter to David Jones, Chief Counsel, Subcommittee on Intellectual Property, Committee on the Judiciary, United States Senate

July 15, 2005 -CRS Report for Congress
Patent Reform: Innovation Issues

June 23, 2005 - Redlined Patent Act (incorporating H.R. 2795) 
This redlined version of the current statute takes you line-by-line through the changes proposed by the Patent Reform Act of 2005. The deletions are noted in red, and the additions are identified in blue. Effective dates are highlighted as well.

June 8, 2005 - The Patent Reform Act of 2005 (H.R. 2795) 
Was introduced June 8, 2005 in the House of Representatives by Congressman Lamar Smith (R-TX). H.R. 2795 is a bill to amend title 35, United States Code, relating to the procurement, enforcement, and validity of patents.

May 12, 2005 - Biotechnology Industry Association
Letter to Reps. Lamar Smith and Howard Berman, Subcommittee on Courts, the Internet, and Intellectual Property, U.S. House of Representatives

May 6, 2005 - National Association of Patent Practitioners
Comments of the National Association of Patent Practitioners on the Proposed Patent Act of 2005 (Committee Print)

May 2005 - The ABA Section of Intellectual Property Law
A Section White Paper: Agenda for 21st Century Patent Reform

May 2005 - Information Technology Industry Council
Fact Sheet on Patent Reform

May 2005 - Information Technology Industry Council
Fact Sheet, Why High Tech Needs Patent Reform

April 14, 2005 - The Committee Print: Working draft prior to formal introduction of H.R. 2795

January 2005 - Business Software Alliance
Intellectual Property in the 21st Century

April 21, 2004 - AIPLA
Response to the October 2003 FTC Report

April 2004 - AIPLA
Response to the National Academies Report entitled "A Patent System for the 21st Century"

April 2004 - NAS Committee on Intellectual Property Rights
A Patent System for the 21st Century

October 2003 - FTC Report
To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy

Other Sources:

• Sara Stefanini, "Experts Praise Patent Reform, Suggest Changes," IP 360, (Apr. 27, 2007) (quoting Jones Day Partner Robert O. Lindefjeld).
• Erik Larson, "Patent Reform Bill Lands in House, Senate," IP 360 (Apr. 18, 2007) (quoting Jones Day Partner Robert O. Lindefjeld).
• Christopher S. Rugaber, "Patent Reform Bill Seeks to Improve Patents, Reduce Litigation, " AP (Apr. 18, 2007) (quoting Jones Day Partner Robert O. Lindefjeld).
• Alan Sipress, "Patently at Odds: Drug and Tech Sectors Battle With Reform High on Agenda," Washington Post at D01 (Apr. 18, 2007).
• Susan Decker, "Patent Law Overhaul." Bloomberg News, Apr. 6, 2006 (quoting Jones Day Partner Robert O. Lindefjeld on likelihood of patent reform).
• Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell. Prop. L. 336 (2005).
• C. Boyden Gray, "Patent Reform Bill: A Troubling Proposal for the U.S. Patent Law System," Patent, Trademark & Copyright Journal, Vol. 70, No. 1723, p. 121 (Jun. 3, 2005).
• Joelle Tessler, "Major Players Square Off on Patent Law Rewrite," CQ Weekly, p. 1696 (Jun. 27, 2005).

Other Intellectual Property-Related Actions:

May 17, 2007 - Hearing
To amend title 35, United States Code, to limit damages and other remedies with respect to patents for tax planning methods. H.R. 2365

September 16, 2005 - Hearing
An amendment in the nature of a substitute
Courts Subcommittee (House Judiciary)

June 15, 2005 - Hearing     Agenda     Witness Testimony
Product Counterfeiting: How Fakes Are Undermining U.S. Jobs, Innovation and Consumer Safety
House Committee on Energy and Commerce: Subcommittee on Commerce, Trade, and Consumer Protection

June 14, 2005 - Hearing     Agenda     Witness Testimony     Video
Finding and Fighting Fakes: Reviewing the Strategy Targeting Organized Piracy
Senate Committee on Homeland Security and Governmental Affairs: Subcommittee on Oversight of Government Management, the Federal Workforce, and the District of Columbia

May 25, 2005 - Hearing     Agenda     Witness Testimony
Piracy of Intellectual Property
Senate Committee on the Judiciary: Subcommittee on Intellectual Property