111th Congress

Bill: U.S. House of Representatives, "Patent Reform Act of 2009,” H. R. 1260. 

Bill: U.S. Senate, “Patent Reform Act of 2009,” S. 515.

Letter: From Judiciary Committee Republicans, March 11, 2009.  

Letter: From 7 Senators to Senators Leahy and Hatch on Patent Reform Legislation, March 9, 2009

Press Release: Statement by U.S. Reps. Don Manzullo (R-IL) and Mike Michaud (D-ME) on the New Patent Bill, March 3, 2009.

110th Congress

Lawmakers Call for New Hearing on Patent Bill, March 5, 2008.

Administration's Letter on S. 1145, "The Patent Reform Act," February 4, 2008.

Congressional Budget Office Cost Estimate, H.R. 1908 Patent Reform Act of 2007: As Ordered Reported by the House Committee on the Judiciary on July 18, 2007.

Boehner & Blunt Letter to Pelosi on Patent Reform, August 30, 2007.

"Led by Representatives Manzullo and Michaud, 65 House Members urge House Democratic and Republican leaders to give the House ample opportunity to cautiously consider the full implications of H.R. 1908. August 3, 2007"

Senate Judiciary Committee Members Register Concerns with Patent Reform Bill of 2007, June 11, 2007

U.S. Court of Appeals for the Federal Circuit Chief Judge Expresses Further Concerns with Provisions of Patent Reform Proposal, June 7, 2007

U.S. Court of Appeals for the Federal Circuit Chief Judge Warns House on Provisions of Patent Reform Proposal, May 21, 2007

Testimony of InterDigital Communications Corporation Before the Judiciary Committee, U.S. Senate, June 6, 2007

U.S. Department of Commerce Review of the Patent Reform Act of 2007, May 16, 2007

US Court of Appeals for the Federal Circuit Chief Judge Warns Senate on Provisions of Patent Reform Proposal, May 3, 2007

On April 18, 2007, Senators Patrick Leahy (D-VT) and Orrin Hatch (R-UT) and Representatives Howard Berman (D-CA) and Lamar Smith (R-TX) introduced The Patent Reform Act of 2007 (S. 1145/H.R. 1908). The bill is very similar to legislation introduced in the 109th Congress and addresses, among other issues:

• First-to-file
• Assignee filings
• Willfulness standard
• Mandatory apportionment of damages
• Prior user rights
• Post-grant opposition (first and second window)
• Universal publication of application after 18 months
• Inter partes reexamination
• Third-party submissions of prior art
• Venue
• Interlocutory appeals for construction of claims
• Enhanced USPTO rulemaking authority

For a copy of H.R. 1908, click here. While the Innovation Alliance supports provisions that would improve patent quality, it is concerned that certain provisions in the legislation would stifle U.S. innovation.

On April 26, 2007, the House Judiciary Committee’s Subcommittee on Courts, the Internet and Intellectual Property held a hearing on the legislation.

Earlier this year on March 29, 2007, the House Small Business Committee held a hearing on the impact of patent reform on small businesses. Innovation Alliance founding member, Amberwave Systems, testified at the hearing. Click here for a copy of the testimony.

109th Congress

Legislation to dramatically change the patent system was introduced in the House and Senate in 2005 and 2006. Representative Lamar Smith (R-TX) introduced H.R. 2795 on April 4, 2005. Among other issues, the bill addressed:

• First-to-file
• Assignee filings
• Duty of candor
• Inequitable conduct
• Injunctions
• Willful infringement
• Mandatory apportionment of damages
• Prior user rights
• Post-grant opposition
• Restrictions on continuation applications
• Repeal of the best mode requirement
• Universal publication of application after 18 months
• Inter partes reexamination
• Third-party submissions of prior art

Although the House Judiciary Committee held hearings on the bill and the broader issue of patents, the bill was never marked up or moved out of the Intellectual Property Subcommittee. An Amendment in the Nature of a Substitute was introduced in July 2005 (the "July Substitute"), which removed certain controversial provisions of the bill (i.e., injunctions, continuation practice, and post-grant opposition "second window") and added a provision restricting venue of patent infringement suits.

Representatives Howard Berman (D-CA) and Rick Boucher (D-VA) introduced H.R. 5096 on April 5, 2006. Their bill, which did not move or have hearings associated with it, reintroduced injunctions and a "second window" of post-grant opposition and also addressed willful infringement, publication after 18 months, inter partes re-examination, third-party submission of prior art, and the transfer of venue. High tech innovators viewed this new legislation as more harmful than Representative Smith’s July Substitute due to its likely impact on patent rights. Senator Orrin Hatch (R-UT) introduced his version of patent legislation, S. 3818, on August 3, 2006, with then Senate Judiciary Committee Ranking Member Patrick Leahy (D-VT) as an original co-sponsor. The bill was not marked up before the 109th Congress expired at the end of 2006. Among other issues, this legislation addressed:

• First-to-file
• Willful infringement
• Mandatory apportionment of damages
• Post-grant opposition
• Attorney fees to prevailing parties in patent infringement litigation
• Third-party submissions of prior art, among other issues

While the bill’s sponsors sought to be sensitive to protecting innovation in some key respects, innovators viewed the legislation as harmful in many areas, including the mandatory apportionment of damages and post-grant opposition with a more expansive "second window" of challenge