WASHINGTON _ The House Judiciary subcommittee on Courtsand Intellectual Property has reported on to full committee a bill (HR587) that would make it easier for biotechnology firms to obtainpatents for novel processes.
The subcommittee on May 16 _ without debate and by unanimousvote _ reported to the full committee the bill as introduced bySubcommittee Chairman Carlos Moorhead (R-Calif.). The samelegislation is expected to be introduced in the Senate by SenateJudiciary Committee Chairman Orrin Hatch (R-Utah).
When a Senate bill emerges it will mark the "first time that we haveidentical bills on both sides of Capitol Hill," Chuck Ludlum,Biotechnology Industry Organization lobbyist, told BioWorld. Inprevious Congresses, "we were whipsawed because significantlydifferent versions passed the House and Senate. Never before havewe had the same version in both houses," he said.
The subcommittee bill overturns a 1985 U.S. Circuit Court ofAppeals decision that rejected a U.S. Patent and Trademark Office(PTO) procedure for patenting chemical processes. The applicantsfor the patent had argued on appeal that while the patentable processwas "obvious" and thus could not be patented, the material involvedwas novel and that the end product was novel and should be eligiblefor a patent.
The court ruled that the development of a patented product did notautomatically ensure the novel nature of the process or the awardingof a process patent.
Moorhead argued that the legislation is necessary because the courtruling on process as differentiated from product has resulted in theapplication of inconsistent criteria by the PTO. This weakness in thepatent process also leaves U.S. biotech firms vulnerable to overseascompetitors who have stronger patent protections, according toMoorhead. n
-- Michele L. Robinson Washington Editor
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