The bill features several major departures from S1145, including removing the provision requiring mandatory search reports to be submitted with patent applications to the USPTO (so-called applicant quality submissions (AQS)).
A spokesperson for the PTO told Managing IP that the Administration strongly supports the mandatory AQS provision of S1145, but that the Office “share[s] Senator Kyl’s commitment to develop a bill that fairly balances the interests of innovators in all industries and areas of technology, promotes patent quality and certainty and reduces excessive litigation costs”.
The bill also differs slightly in its proposals for a post-grant review system by limiting the period for filing a petition to nine months from the date the patent was granted, rather than 12 months, and instituting a second window for oppositions on the limited grounds of novelty or obviousness.
The Biotechnology Industry Organization supports the new bill, and in a statement released last week, BIO president and CEO Jim Greenwood commended Kyl’s efforts.
“This legislation is a vast improvement over previous bills in the House and Senate with respect to many of the discrete issues and concerns raised by BIO, patient groups, universities, labour unions and many other stakeholders over the past two years,” said Greenwood.
In particular, he said, the bill “advances the debate on damages in a positive direction by enhancing consistent enforcement of the current law on damages and providing greater predictability for companies across all industries – but without manipulating the rules to favour infringers”.
The new bill’s provision on damages is less favoured by the high-tech sector, however, and a statement by the Coalition for Patent Fairness, which represents companies including Apple, Hewlett-Packard and Microsoft, said: “The legislation offered by Senator Kyl today will not fix the nation’s patent system, which is broken and draining critical resources from healthy sectors of our economy.”
The Coalition added: “We appreciate Senator Kyl’s efforts to address two critical issues: the flawed system for valuing patents and the approval of poor quality patents. Unfortunately, Senator Kyl’s legislation stops short of the necessary changes to address these issues which were included in the bi-partisan Patent Reform Act of 2007.”
Other key issues on which the two bills differ include rules governing inequitable conduct proceedings and permanent funding for the USPTO.
The legislation is unlikely to make it to the Senate floor this session, but its revival is anticipated in 2009.
