Senate to Consider Patent-Reform Bill

Last Thursday, the US Senate scheduled the Patent Reform Act of 2011 for debate after the Senate Judiciary Committee passed the bill. The Biotechnology Industry Organization (BIO) praised the Judiciary Committee for its action and urged the full Senate to pass the bill. “The Patent Reform Act of 2011 would improve the patent system in ways that would benefit all sectors of the US economy by enhancing patent quality and the efficiency, objectivity, predictability, and transparency of the patent system,” said Jim Greenwood, president and CEO of BIO, in a statement.

Senator Patrick Leahy (D-VT) introduced the bill on Jan. 25, 2011 to promote American innovation. The bill would establish a first-to-file system by defining an invention’s effective filing date as the actual filing date of the patent or patent application. This change would improve the patent-application process, according to a statement by Sen. Leahy.

The Patent Reform Act of 2011 also would modify the conditions for patentability by barring descriptions of an invention from being considered prior art, provided that they emerged one year or less before the effective filing date. In addition, the bill would restrict the ability to sue for a penalty for false marking (i.e., using a patentee’s name or number on a product without consent) to the United States. The bill, however, would allow parties who suffered a “competitive injury” as a result of false marking to file a civil suit for recovery of damages.

The bill’s damages provisions would prevent “runaway damage awards” and “ensure an award of a reasonable royalty is not artificially inflated or based on irrelevant factors,” according to Sen. Leahy’s statement. The bill would require courts to identify the methods and factors relevant to determining damages, provide standards for identifying willful infringement, and revise certain defenses and evidentiary requirements.

“Senator Leahy’s patent-reform bill would strengthen the patent system while protecting patent owners and maintaining incentives for innovation,” said Wes Metheny, senior vice-president of the Pharmaceutical Research and Manufacturers of America, in a press statement. “Senator Leahy’s bill—and the support of its cosponsors—demonstrates their appreciation for the importance of intellectual-property protection to the US economy and to the jobs—and life-saving innovation—that it provides,” he added.

Representative Robert E. Latta (R-OH) introduced the Patent Lawsuit Reform Act of 2011, a companion bill, in the US House of Representatives on Jan. 7, 2011. The House Subcommittee on Intellectual Property, Competition, and the Internet currently is considering the bill.