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Insight & Intelligence : Apr 10, 2011
House Takes Different Stance from Senate on Two Key Factors in Patent Reform
While in number the amendments are small, their influence could be significant.!--h2>
The House of Representatives’ version of the patent reform bill contained only a few changes to the measure overwhelmingly approved by the Senate last month. Those few changes, however, jeopardize the bill’s chances of being enacted this year and pose significant challenges for life science companies. The America Invents Act was introduced in the House by House Judiciary Committee Chairman Rep. Lamar Smith (R-TX) on March 30.
Differences in Inter Partes Review
Like the Senate bill, the House would allow third parties to challenge patents after they have been granted through a new inter partes review. But the House would retain the current “substantial new question of patentability” threshold standard for initiating current inter parte exams and apply it to the new inter parte reviews.
Impact of Lower Standard
The USPTO grants 96% of inter partes re-examination requests, according to a 2008 study by BIO. The report also noted that up until December 2000, which was when the process was implemented, the USPTO had received just 308 inter partes requests but granted more than 1.4 million patents.
Changes to Prior User Rights
Another key difference between the House and Senate is the definition of prior user rights. The Senate version maintains current law, which keeps prior user rights limited only to “business methods.”
Consequences to Broader Scope
“Any change that is going to drive them to even more trade secrecy, I think, is a bad thing for them. And I think this House provision will succeed in doing just that,” he continued. Moga agreed with BIO’s Greenwood that expansion of prior user rights was one of two changes made by the House that, in addition to the inter partes review language, “could set back efforts to pass meaningful patent reform this year.”
The Politics Behind America Inventing
Whether that happens will play out over the next few months. But at the very least, the House changes contrast with the consensus-building achieved in crafting S.23, which passed the Senate 95-5. It was a rare recent example of a bill concerning a long-contentious issue winning cross-partisan support.
Alex Philippidis is senior news editor at Mary Ann Liebert, Inc., and Genetic Engineering & Biotechnology News.
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