By Lisa Seachrist
WASHINGTON — In an attempt to get patent reform on the Senate floor before the end of the legislative session, Sen. Orrin Hatch (R-Utah) announced that five of the last six commissioners of the U.S. Patent and Trademark Office (PTO) supported the Omnibus Patent Act of 1997.
Hatch maintained that the most important provision of the legislation, S. 507, which restores patent term lost during delays at PTO, was becoming mired in misunderstandings of the bill's publication and patent reexamination provisions. As a result, the legislation has yet to be taken up by the full Senate since passing the Senate Judiciary Committee on May 22.
"There has been a lot of misunderstanding of the provisions of the bill from conservatives who don't understand patent law as well as they could," Hatch said. "I think S. 507 would pass overwhelmingly if we brought it up to the entire Senate."
Hatch is eager to have S. 507 taken up before the Senate adjourns in November in order to avoid any election-year politics that may stymie the bill next year.
The most important issue for the biotechnology industry is the least contentious: restoring patent term. Since the enactment of the General Agreements on Tariffs and Trade (GATT) in 1994, U.S. patents no longer provide 17 years of exclusivity from the time of issuance. Now companies and inventors have 20 years' exclusivity from the date they file their patent with PTO.
The typical patent is issued 18 months from the date it is filed. However, biotechnology patents tend to be highly technical and often contested and, as a result, may languish in the patent office for as long as a decade while the time for patent protection is ticking away.
S. 507 restores time lost at PTO to guarantee that a patent has at least a 17-year life span.
More contentious is the provision to publish a patent application 18 months after it is filed. Currently, in the United States, patent applications aren't published until the patent is granted. Patent applications in other countries are published 18 months after submission in the native language of the country in which it is filed.
Because 50 percent of all patents filed in the U.S. are also filed oversees, Hatch maintains that it gives competitors in other countries an unfair advantage. S. 507 calls for publication of patents 18 months after filing; only inventors who choose to file in the U.S. alone may opt out of the 18- month filing provision.
Former PTO Heads Back Legislation
"I look on this bill as the promising result of 25 years of effort," said William Schuyler, PTO commissioner from 1969 to 1971. "The publication provision simply brings the U.S. in line with the rest of the world."
Retooling the patent reexamination procedure at PTO also is causing concern for some members of the Senate. The attempt to encourage parties contesting a patent to use the less-costly reexamination procedure left some members concerned it would become a tool for harassment. Hatch has since limited the scope of the review and put in safeguards to prevent abuse.
"There is some misunderstanding about what is in the bill," Hatch said. "Where reasonable concerns have been raised, they have been addressed."
Gerald Mossinghoff, PTO commissioner from 1981 to 1985, noted the bill also freed PTO from unnecessary bureaucratic and salary constraints that make it very difficult to retain patent examiners. It typically takes the office three years to adequately train a patent examiner, and then it is impossible to pay a salary commensurate to what they could make in the private sector.
"This bill cuts out layers and layers of red tape," Mossinghoff said. "And it also provides a way for PTO to retain the talented patent examiners it trains."
The House version of patent reform, H.R. 400, passed in April, but the Senate bill has yet to be scheduled for debate.
"This is a good bill," Hatch said. "This is a bill that American inventors need. And this is a bill that should be passed this year." *