Patent Reform Act of 2009 – Highlights

March 5, 2009

On Tuesday, March 3, 2009, Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) and Senator Orrin Hatch (R-Utah), a senior member and former Chairman of the Committee, along with House Judiciary Committee Chairman John Conyers (D-Mich.) and Ranking Member Lamar Smith (R-Texas), introduced bipartisan, bicameral patent reform legislation.

The Senate and House bills are similar to bipartisan legislation introduced in the 110th Congress. The House passed patent reform legislation (H.R. 1908) in the last Congress, and the Senate Judiciary Committee reported companion legislation in the Senate (S. 1145).

The Senate and House bills essentially pick up where the 110th Congress left off. However, some changes have been made to the Committee-approved bill S.1145 of the 110th Congress in response to concerns from stakeholders. Some notable changes include: (1) elimination of the requirement that all patent applications publish in 18 months of filing; (2) elimination of the requirement for Applicant Quality Submissions (AQS); and (3) adoption of the House’s (H.R. 1908) approach to implementing current inter partes reexamination processes, instead of creating a new second window post-grant review process.

The legislation contains thirteen sections, including a section on venue and jurisdiction – Section 8, which addresses two litigation issues unique to the patent world: Subsection (a) address venue in patent cases; and Subsection (b) provides the Federal Circuit with jurisdiction over interlocutory rulings in what have become known as Markman orders, in which the district court construes claims and terms of a patent.

Some of the provisions that are expected to be hotly contested in this Congress include: (1) damage awards in patent litigation cases; (2) inequitable conduct; and (3) change to a first-to-file system from the current first-to-invent system.

The Senate Judiciary Committee is scheduled to hold its first hearing on “Patent Reform in the 111th Congress: Legislation and Recent Court Decisions” on Tuesday, March 10. The hearing will be webcast live by the Senate Judiciary Committee.