Printable Version

Rights/Reprints

COMPANIES

• 3M Co.
• Motorola Inc.
• Pfizer Inc.

The full Senate is scheduled to consider sweeping patent reform legislation when it returns on Feb. 28.

The Patent Reform Act of 2011, introduced by Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) on Jan. 25, includes provisions that would make it more difficult for a plaintiff to prove that a defendant willfully infringed a patent and rein in improper venue shopping for patent cases. The legislation also has provisions that would make challenges to granted patents simpler and give an inventor who files an application with the Patent and Trademark Office the patent first, switching from a “first-to-invent� system to a “first-to-file� system.

The Senate Judiciary Committee earlier this month backed the legislation without opposition. The bill is based on legislation introduced by Rep. Lamar Smith (R-Tex.), now the Chairman of the House Judiciary Committee, and Rep. Howard Berman (D-Calif.) in the 109th Congress. Members of Congress have introduced patent reform legislation in the three Congresses since then.

“Reforming the nation’s antiquated patent system will promote American innovation, create American jobs, and grow America’s economy,” Leahy said in a statement. “I am pleased that the Senate will consider the Patent Reform Act after the recess.

The House currently doesn’t have a companion bill. But Smith said last week that he is drafting a bill for his panel that will modify patent reform legislation in the Senate.

The House Judiciary intellectual property, competition and the Internet subcommittee last week heard from members of the intellectual property law community about congressional patent reform proposals.

Carl Horton, chief intellectual property counsel of General Electric Corp., said issues with patent damages, willfulness and venue don’t really need to be addressed in legislation because the U.S. Courts of Appeals for the Federal Circuit already has dealt with those matters. But Horton said he supports moving to a “first-to-file� system and the Senate bill’s provisions that would make challenges to granted patents simpler. He testified on behalf of The Coalition for 21st Century Patent Reform, which represents companies including 3M Co., Pfizer Inc. and Motorola Inc.

David Simon, associate general counsel of intellectual property policy for Intel Corp., said the Patent and Trademark Office is the proper vehicle for improvements to the patent system, not major patent reform legislation. He testified on behalf of the Coalition for Patent Fairness, which counts Oracle Corp. and Google Inc. among its members. The organization is against the Senate bill.