House Patent Reform Bill in the Works
By Andrew Ramonas | February 11, 2022 2:28 pm

Chairman Lamar Smith (R-Texas) of the House Judiciary Committee on Friday said he is drafting a bill for his panel that will modify patent reform legislation in the Senate.

Smith did not release specific details on his plans for the bill at the first House Judiciary intellectual property, competition and the Internet subcommittee hearing on patent reform. But the chairman noted he previously has backed stronger provisions on willful infringement, the venue for patent cases and the allotment of damages.

The Senate’s Patent Reform Act of 2011 includes provisions that would make it more difficult for a plaintiff to show that a defendant willfully infringed a patent and rein in improper venue shopping for patent cases. The legislation also has changes 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 last week approved the bill without opposition. The bill is based on legislation introduced by Smith and Rep. Howard Berman (D-Calif.) in the 109th Congress. Members of Congress have introduced patent reform legislation in every Congress since then.

“While the Senate vehicle is a good start, I’m hoping we can work together with the other body to make additional improvements,” Smith said. “We need a few more tweaks to inhibit the abuses that gave rise to the project back in 2005.”

Smith has made patent reform a priority of the panel since taking over the gavel last month from Rep. John Conyers (D-Mich.) He said he created the intellectual property, competition and the Internet subcommittee in an effort to ensure that his committee attends to patent reform.

At the hearing on Friday, members of the intellectual property law community offered their views on the patent reform proposals.

Carl Horton, chief intellectual property counsel of General Electric Corp., said issues with willfulness, patent damages and venue don’t really need to be addressed because the U.S. Courts of Appeals for the Federal Circuit already has tackled those matters. But he applauded a transition to a “first-to-file” system and the Senate bill’s provisions that would make challenges to granted patents simpler.

“The post-grant review procedures in [the Senate bill] … represent a workable compromise that I, as a practitioner, would love to have as an alternative to litigation to challenge the arguably invalid patents that occasionally issue,” said Horton, who was testifying 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 appropriate 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 opposes the Senate bill.

“Looking at the current state of the patent system, the need to address this set of issues as part of a larger comprehensive, substantive patent reform has passed,” Simon said in his written remarks. “Thanks to the leadership and action of the members of this committee, the courts and Patent and Trademark Office, to the extent possible, have reacted and addressed, in the short term, some of our most fundamental concerns.”

Republicans and Democrats on Friday urged the different factions on patent reform to reach a compromise.

“I’m urgently suggesting to the industries that they come back to the table and try to roll up their sleeves and find common ground on the patent reform bill so we can move this process forward,” said Rep. Melvin Watt of North Carolina, the top Democrat on the House Judiciary intellectual property, competition and the Internet subcommittee.

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