Legislation that could bring a major overhaul to U.S. patent law — and perhaps prompt inventors to publish new findings earlier to preserve their intellectual-property rights — has been adopted by the Senate Judiciary Committee. Thanks to several amendments, the new measure, unlike bills proposed in 2007, would not undercut the rights of academic institutions that hold patents, college officials said.
The amended Senate bill, the Patent Reform Act of 2009 (S 515), resolved many of the contentious issues that caused a deadlock over patent-reform efforts in Congress last year, and which concerned colleges and universities that are active in patenting and licensing.
Before the amendments were incorporated into the bill, colleges — along with many companies in the biotechnology and pharmaceutical fields — were troubled by aspects that could have limited the damages that patent holders could claim from infringers.
John C. Vaughn, executive vice president of the Association of American Universities, said that without the changes in that section, university patents might have been more vulnerable to infringers, and therefore harder to license, because “the cost of infringement” would not have been so burdensome. Potential licensees would be less likely to pay for rights to a patent that could be more easily infringed.
Now, instead of attempting to define how damages would be apportioned in legislation, the bill calls for continuing to allow courts to make that determination, with some additional guidance.
The Association of American Universities and five other higher-education organizations with an interest in academic research all supported the revised approach to damages. The others groups are the American Council on Education, the Association of Public and Land-Grant Universities, the Association of American Medical Colleges, the Association of University Technology Managers, and the Council on Government Relations.
The six groups also pushed for changes in a provision that would establish a new process for challenging patents after they have been issued. The higher-education groups favor the right to challenge after a patent is issued but said in a joint statement that they feared the language in the original bill was too open-ended and would have “increased patent uncertainty.”
The new language, which still provides for a process for challenging patents, though in a more limited way based on objective evidence, “is very good for universities,” said Mr. Vaughn, in an interview.
Avoiding ‘Rush to Patent’
The 2009 Senate legislation proposes the same major change in patent law that was included in a bill that stalled in 2007. It would change the principles that determine who is entitled to the patent on an invention.
Under current law in the United States, the first to invent is entitled to the patent; in other countries, the patent, if justified, is awarded to the first to file for it. The new legislation would bring the U.S. approach more into harmony with the rest of the world’s first-to-file system.
Many American academics are accustomed to the first-to-invent approach, with its one-year grace period, which has allowed them to publish their findings and then take up to a year to file for a patent.
That approach has helped American inventors avoid some of the “rush to patent” practices that can result in inadequately developed patents.
The new legislation contains a similar but narrower grace period that would apply only to the inventors’ own published findings; the disclosure of an idea before applying for a patent would not be considered “prior art” that could disqualify the inventor from obtaining the patent. But if the inventor didn’t publish, and others happened to, then that inventor might lose the rights to a patent if the publication was found to be relevant “prior art,” which would render the invention non-novel.
Mr. Vaughn said the new grace period isn’t perfect but should help encourage researchers to continue to publish their findings and not become secretive about work they hoped to patent. He acknowledged that the new regime could create a “rush to publish” environment,
The House of Representatives has its own version of a patent-reform bill but is more likely to act on the Senate bill.
http://chronicle.com Section: Money & Management Volume 55, Issue 32, Page A23
