By Lisa Seachrist
WASHINGTON - A bipartisan effort to reform the patent system has gained unanimous support from the House Judiciary Committee.
The full committee unanimously approved H.R. 1907, a bill to protect patent terms and reduce patent litigation. It will rectify problems with the patent system that developed with the passage of the General Agreements on Tariffs and Trade (GATT) in 1994. The next step is consideration by the full House.
"We've been working on this for five years," said Chuck Ludlam, vice president of government relations at the Biotechnology Industry Organization (BIO). "It's a very, very important bill, and there has been an incredible amount of work behind the scenes to get this support for the bill."
H.R. 1907 restores patent term periods lost due to delays at the U.S. Patent and Trademark Office (PTO), provides for re-examination to reduce costly patent litigation, and calls for some publication of patents once an inventor files for the patent.
The most important provision for the biotechnology industry is the restoration of patent term. Since the enactment of GATT, U.S. patents no longer provide for 17 years of exclusivity from the time of issuance. Instead, inventors have 20 years of exclusivity from the date that they file their patent at PTO.
Most patents are issued 18 months from the filing date; however, complex and often contested biotechnology patents can take as long as a decade to be issued. While the patent application is being reviewed and contested, the patent term is ticking away. H.R. 1907 provides day-for-day restoration of patent term for all delays at the patent office not caused by the applicant.
"We support this provision enthusiastically," Ludlam said. "It takes care of the problem with total 100 percent restoration of patent term."
The re-examination provision is designed to prevent litigation by allowing parties who would normally file patent lawsuits to invalidate a patent with the claim that the patent is based on prior art to petition the PTO to re-examine its decision to grant a patent.
Ludlam said the publication provision isn't as comprehensive as BIO would like. The provision would require that patents be published as soon as the patent is filed, only if the applicant is applying for protection in both the U.S. and other countries. If an applicant only is applying for patent protection in the U.S., they don't have to publish their invention until after the patent is granted. BIO prefers that all patents be published once they are filed.
The bipartisan, unanimous support for the H.R. 1907 stands in stark contrast to the effort to reform the patent system in the 105th Congress. Rep. Dana Rohrabacher (D-Calif.) vehemently opposed the legislation, favoring a return to the 17-year patents that existed prior to GATT. During a heated floor debate, it took an amendment by Rep. Marcy Kaptur (D-Ohio), which exempted small inventors from publication requirements, to solidify support for the measure.
This time around, Rohrabacher is a co-sponsor of the legislation that Coble introduced May 24. Ludlam said BIO is hoping H.R. 1907 will be brought up on the suspension calendar which would preclude debate on the issue and require a two-thirds majority vote to pass.
"We are hoping to send this bill to the Senate with as much momentum as possible," Ludlam said.
In the 105th Congress, Sen. Orrin Hatch (R-Utah), chairman of the Senate Judiciary Committee, championed the patent reform effort in the Senate. The Senate, however, ran out of time to consider the legislation in the waning days of the last Congress. A Hatch spokesperson said the senator remains committed to the issue, and will be introducing patent reform legislation during this Congress.