The latest development in the debate is the introduction of a competing Senate bill (S. 610) by Sen. Jon Kyl (R-AZ). BNA (subscription service) is reporting that Sen. Kyl’s bill is identical to the bill he proposed last September in the wake of the failure of the other patent reform bill then pending in the Senate.
S. 610 differs from the earlier introduced bills (S. 515 and H.R. 1260) in several respects. First, S. 610 does not seek to codify the Federal Circuit’s In re Seagate decision regarding inequitable conduct. It does, however, seek to toughen the standard for proving inequitable conduct. Second, S. 610 does not contain the controversial provision of providing for interlocutory appeals on claim construction, a provision the Federal Circuit seems opposed to.
S. 610 retains the “applicant quality submission” language that has been removed from S. 515 and H.R. 1260. Instead of requiring applicants to perform searches and submit the closest prior art with analysis with respect to the claims, S. 610 provides that the PTO may “offer incentives to applicants” to submit such search reports. In light of recent PTO activities, this is an extremely dangerous provision.
S. 610 also shares several provisions in common with S. 515 and H.R. 1260. These include the limitation on venue selection for infringement suits, a change to a first to file system (which will likely never happen under the current wording in the bills), and a new post-grant review procedure. In addition, S. 610 retains the controversial “second window” for such reviews that has been deleted from S. 515 and H.R. 1260. The “second window” provides for post-grant review proceedings to be brought by any entity that has been charged with infringement of the patent. Unlike the post-grant proceeding that immediately follows a patent’s issuance, the “second window” proceeding could be brought any time during the life of the patent.
Like H.R. 1260, it does not seek to repeal the Baldwin Rule that
requires Federal Circuit judges to live within 50 miles of Washington,
Sen. Kyl’s bill, not coincidentally, was introduced on the eve of the mark-up session for S. 515. Although it’s good to see that there will be alternative proposals and debate on the issues, simply repeating the steps of the previous Congresses doesn’t seem like the most efficient way to achieve any type of agreement.