House CIIP Subcommittee to Take Up Patent Reform

March 3, 2005. Rep. Lamar Smith (R-TX) and Rep. Howard Berman (D-CA), the Chairman and ranking Democrat on the House Judiciary Committee's Subcommittee on Courts, the Internet and Intellectual Property (CIIP), spoke with reporters after the CIIP mark up session on Thursday, March 3, 2005. Rep. Smith stated that the CIIP Subcommittee will hold "several hearings in April on patent reform".

Rep. Smith (at right) also said that he will then introduce a bill on patent reform. He did not discuss its contents. He added, "the next big thing of this Subcommittee will be patent reform."

Said Rep. Berman, "we are very glad to hear that".

Late in the last Congress, on October 8, 2004, Rep. Howard Berman (D-CA) and Rep. Rick Boucher (D-VA) introduced HR 5299 (108th), the "Patent Quality Assistance Act of 2004", a bill to amend the Patent Act to provide for post grant reviews. The bill would add to Title 35 a new Chapter 32, titled "Post-Grant Opposition Procedures". Rep. Boucher is also a senior member of the CIIP Subcommittee.

See, story titled "Berman and Boucher Introduce Bill to Provide for Post Grants Reviews of Patents" in TLJ Daily E-Mail Alert No. 999, October 19, 2004.

There is also considerable discussion of patent reform, on a wide range of issues, outside of the Congress. Some of the issues being discussed are post grant reviews, the research exemption, 11th Amendment immunity of states, funding for the U.S. Patent and Trademark Office (USPTO), accelerated publication of patent applications, use of the preponderance of the evidence test in determining patent validity, standards for determining obviousness, and the scope of patentable subject matter.

For example, National Academies and the American Intellectual Property Law Association (AIPLA), and the Federal Trade Commission (FTC) have written major studies of patent law reform issues, which contain their recommendations.

The National Academies' Board on Science, Technology, and Economic Policy (STEP) issued a report titled "A Patent System for the 21st Century".

The AIPLA then issued its report [49 pages in PDF] titled "AIPLA Response to the National Academies Report entitled ``A Patent System for the 21st Century´´".

On October 28, 2003, the FTC released a report titled "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy". See, Executive Summary [18 pages in PDF] and Report [2.28 MB in PDF]. See also, story titled "FTC Releases Report on Competition and Patent Law" in TLJ Daily E-Mail Alert No. 768, October 29, 2003.

The FTC, National Academies' STEP, and AIPLA are currently holding a series of public meetings around the country regarding patent reform. The meeting San Jose was last month. The meeting in Chicago is on March 4. The meeting in Boston will be on March 18. There will also be a meeting in Washington DC . See, FTC notice and agenda [PDF], and story titled "FTC, AIPLA, and National Academies to Host Series of Public Meetings on Patent Reform" in TLJ Daily E-Mail Alert No. 1,043, December 23, 2004.

Also, on Thursday, March 10, the American Enterprise Institute (AEI) will host a panel discussion titled "The Patent System and the New Economy". The presenter will be Brad Smith, General Counsel of Microsoft. Todd Dickinson (General Electric Company, and former head of the USPTO), John Duffy (George Washington University Law School), James DeLong (Progress and Freedom Foundation), and Andre Carter (Imiri Incorporated). See, notice.

Also, the Supreme Court has granted certiorari in a case involving the patent research exemption, Merck KGaA v. Integra LifeSciences I. This case involves interpretation of 35 U.S.C. § 271, and application of the common law research exemption. On June 6, 2003, the U.S. Court of Appeals (FedCir) issued a divided opinion. Judge Randall Rader wrote the opinion of the Court, strictly construing Section 271(e)(1) of the Patent Act. Judge Pauline Newman dissented in part, emphasizing the underlying purposes of patent law; she would construe the statute more broadly, and recognize a meaningful common law research exemption. See, story titled "Supreme Court Takes Case Involving Research Exemption to Patent Infringement" in TLJ Daily E-Mail Alert No. 1,053, January 11, 2005.