By Kevin E. Noonan —

Breda Lund, writing in the November 28th edition of The Generic Line, reports that the Senate may consider its version of the patent "reform" bill, S. 1145, during the next session of the 110th Congress when it convenes next January.  According to Ms. Lund, Matthew Sandgren, counsel to Senator Orrin Hatch (R-Utah), spoke on the likelihood of Senate consideration at the Center for Business Intelligence (CBI) "Forum on Effective Patent, Intellectual Property and Trademark Strategies" earlier this month.

Ranking members of both parties, including Senator Hatch and Senator Patrick Leahy (D-Vt.) are "intent" on bringing the bill to a vote, Mr. Sandgren (at left) said.  Although the bill has been successfully voted out of the Judiciary Committee, it will not come to the floor for a vote until several "outstanding issues" have been addressed.  These include post-grant review, inequitable conduct, changes in how damages are calculated, elimination of the "best mode" requirement, and granting the U.S. Patent and Trademark Office substantive rulemaking authority (lack of the power to be granted by the latter provision is one basis for Judge Cacheris’ injunction imposed on October 31st blocking implementation of the "new rules" concerning continuations and claim limits promulgated by the Office on August 21st; see Patent Docs report).  Each of these provisions is also a part of the corresponding bill already passed by the House (H.R. 1908) (see "Patent ‘Reform’ Bill Passes House of Representatives").

There are several differences between the House and Senate bills.  For example, the Senate bill grants a "second window" of post-grant review, while the House version does not.  The House bill eliminates "best mode" while the Senate version does not, and there are differences, and disagreements, between how the House and Senate bills change apportionment of damages.  Mr. Sandgren asserts that Senator Hatch is "the champion on inequitable conduct reform," and that differences between the House and Senate versions of the bill with regard to inequitable conduct must be resolved.

Most heartening to patent applicants is the prediction by Mr. Sandgren that the provisions expanding the Office’s substantive rulemaking powers will likely be removed from the final version of the bill.  If true, Office management will have one less avenue for imposing its misguided "new rules" in whatever form they may take after Judge Cacheris makes his final determination.  And removal of these provisions will make it more difficult (if not impossible) for the Office to prevail, either before Judge Cacheris or the Federal Circuit, with its argument that it has such substantive rulemaking authority already.

A useful comparison between the House and Senate bills can be found at the Intellectual Property Owners Association (IPO) website.

For additional information on this topic, please see:

• "The Wall Street Journal Gets It Half Right," November 5, 2007
• "BIO CEO Provides Briefing on Follow-On Biologics and Patent Reform," September 18, 2007
• "Patent ‘Reform’ Bill Passes House of Representatives," September 9, 2007
• "San Francisco Chronicle Opines on Patent Reform," August 6, 2007
• "Patent Reform Bill to Be Delayed?" June 12, 2007
• "Senate Judiciary Committee Holds Hearing on Patent Reform," June 10, 2007