The U.S. Congress will take up patent reform soon despite failing to pass an ambitious package in the Senate last year. Exactly how legislators will attack the issue this time, and what--if anything--it should do is a matter of debate.
Many intellectual property experts note that U.S. courts have addressed some of the most controversial patent issues recently. The courts could be the best forum for handling a handful of hot topics that remain, they say.
A spokesman for Senator Patrick Leahy (D-Vt.) confirmed his plans to bring up patent reform in the current session, something a wide range of observers have been expecting. "I believe we'll see something out of Leahy's office shortly after the inauguration because he wants to move things along," said Taraneh Maghame, chief patent counsel for Tessera Inc. (San Jose, Calif.).
Many large technology companies, including Cisco Systems, Hewlett-Packard and Intel, are pushing for reform, seeking relief for the rise of companies asserting sometimes questionable patents against them. Biotech firms and smaller tech companies that make their living licensing technology have opposed changes, claiming they would weaken the patent system.
In the last two years, U.S. courts have handed down patent decisions on how injunctions are used, what obviousness means for patents and the extent to which business methods can be patented. Still to be addressed are a handful of issues brought up in the failed 2007 legislation, such as ways to limit damages in infringement suits and ways to challenge already granted patents.
"We need to let the dust settle on the effectiveness of the recent cases because they went a long way to address the needs people had raised," said Maghame. "Putting a whole layer of patent reform on top of that could have ramifications for the economy."
Kevin Rivette, chair of the patent office's advisory board and an author on IP issues, agreed. Congress should wait up to three years before tackling patent reform again, he said.
Many, but not all, experts agree. Some, such as Q. Todd Dickinson, executive director of the American Intellectual Property Law Association, sees an opportunity for Congress to take positive action on some issues, leaving the most controversial ones for courts.