SAN JOSE, Calif. – The latest push for patent reform could be closer to success than some observers expect, according to testimony in the U.S. House of Representatives Friday (Feb. 11).
Chief patent counsels at Intel and General Electric and a former U.S. federal judge suggested differences have narrowed over current draft legislation, speaking at a hearing of the House Judiciary Committee.
Patent reform "is [about] finding the balance and I think we are getting closer and closer," said Paul Michel, former chief judge of the U.S. Court of Appeals for the Federal Circuit.
Judiciary chairman Lamar Smith (R., Tx.) said he recently met with Senator Patrick Leahy (D., Vt.) and "I am absolutely convinced [the House and Senate] can find common ground," Smith said.
The Senate's Judiciary committee released a draft patent reform bill earlier this month.
One key sticking point is whether or not to set limits on challenging existing patents at the patent office. As a member of the Coalition for Patent Fairness, Intel's chief patent counsel, David Simon, said there is no need for limits given 90 percent of re-exams end with striking at least some of their claims.
Former Judge Michel called for a "reasonable threshold of likelihood at least one claim is invalid" to start a re-exam. Carl Horton, chief IP counsel for GE and member of the Coalition for 21st Century Patent Reform, said the even higher threshold and narrow time frame now in the draft Senate S.23 bill was even better.
The draft bill also calls for changing from a first-to-invent to a first-to-file system to harmonize with other global agencies. Michel and at least one House committee member suggested more study is needed to determine what impact that change might have on small inventors and startups.
All sides agreed the bill needs to end the process of deferring patent office fees to other government uses. A huge backlog has most applications waiting for years for a first action.
As much as $800 million in fees have been diverted from the patent office to date, Michel said. The current draft Senate bill does not end fee diversion.