By Lisa Seachrist

Washington Editor

WASHINGTON * Having sailed through the Judiciary Committee mark-up last week, patent reform legislation is ready to hit the Senate floor, where it is expected to face little opposition.

The legislation, S. 507, introduced by Committee Chair Sen. Orrin Hatch (R-Utah), provides for a day-for-day extension of patent term due to delays within the Patent and Trademark Office (PTO). However, unlike its House counterpart, H.R. 400, sponsored by Chair of the House Subcommittee on Courts and Intellectual Property Howard Coble (R-NC), it contains no special provisions for small companies and inventors.

That difference between the bills means that patent reform may invoke some high drama in the House should the Senate simply approve its version and send it to the House for approval.

"We want this bill to become law. It could add thousands or tens of thousands of years to biotech patents," said Chuck Ludlam, vice president of government relations for the Biotechnology Industry Organization (BIO). "Even if it passes easily through the Senate, it faces at least one more vote in the House."

H.R. 400 and S. 507 address inequities in the patent law that arose when the General Agreements on Tariffs and Trade (GATT) became law. Whereas previous patent law provided 17 years of patent protection from the day that PTO issued the patent, the GATT treaty grants 20 years of patent term from the date the patent was filed with the office. Most patent applicants gained a little patent term as the average patent takes 18 months to wend its way through the patent office.

Biotechnology patents, on the other hand, are complicated and often contested, meaning they can languish for up to a decade at the PTO before being granted. Both H.R. 400 and S. 507 return patent term to the applicant for every day of delay at the office, whether that delay is the result of a lost file or a competitor filing an interference.

H.R. 400 ran into opposition in the House from Rep. Dana Rohrabacher (R-Calif.), who favored the former 17-year patent structure and opposed a provision in H.R. 400 that would publish the patent application 18 months after it was filed. Rohrabacher maintained that H.R. 400 would expose small inventors to poaching by large companies and foreign interests.

However, Rohrabacher's bill, H.R. 811, failed to prevent the practice of submarine patents, where inventors file a patent and keep delaying its issuance until it becomes an industry standard. At that point, they allow the patent to be issued and reap the royalties. While relatively few in number, PTO Commissioner Bruce Lehman estimated that each submarine patent costs industry $1 billion.

"Patent reform has become a remarkably emotional issue in the House," Ludlam said.

In fact, H.R. 400 only passed the House after Rep. Marcy Kaptur (D-Ohio) offered an amendment exempting small inventors from the publication provisions.

Ludlam pointed out that no such amendment has been offered by Senate Judiciary Committee members; and polling of Senate membership indicates that no one is likely to add such provisions and he expects "much smoother sailing in the Senate." However, Ludlam said that "members really begin to focus on the bill when it hits the floor."

Regardless of whether the debate is contentious, Ludlam noted that the Senate bill will have to be sensitive to the emotion patent reform engendered in the House. "We are fighting for the longest patent term we can get," Ludlam told BioWorld Today. "It is important that we listen to the vote on the Kaptur amendment and are sensitive to those concerns. We would like to see this bill passed before the August recess."

Senate majority leadership expects to schedule S. 507 for debate shortly after the Senate returns from its Memorial Day recess. *