[Congressional Record Volume 147, Number 114 (Wednesday, September 5, 2001)]
[House]
[Pages H5358-H5359]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
DETERMINATION OF SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY IN
REEXAMINATION PROCEEDINGS
Mr. SENSENBRENNER. Madam Speaker, I move to suspend the rules and
pass the bill (H.R. 1866) to amend title 35, United States Code, to
clarify the basis for granting requests for reexamination of patents,
as amended.
The Clerk read as follows:
H.R. 1866
Be it enacted by the Senate and House of Representatives of
the United States of America in Congress assembled,
SECTION 1. DETERMINATION OF SUBSTANTIAL NEW QUESTION OF
PATENTABILITY IN REEXAMINATION PROCEEDINGS.
Sections 303(a) and 312(a) of title 35, United States Code,
are each amended by adding at the end the following: ``The
existence of a substantial new question of patentability is
not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or
considered by the Office.''.
SEC. 2. EFFECTIVE DATE.
The amendments made by this Act shall apply with respect to
any determination of the Director of the United States Patent
and Trademark Office that is made under section 303(a) or
312(a) of title 35, United States Code, on or after the date
of the enactment of this Act.
The SPEAKER pro tempore. Pursuant to the rule, the gentleman from
Wisconsin (Mr. Sensenbrenner) and
[[Page H5359]]
the gentleman from California (Mr. Berman) each will control 20
minutes.
The Chair recognizes the gentleman from Wisconsin (Mr.
Sensenbrenner).
General Leave
Mr. SENSENBRENNER. Madam Speaker, I ask unanimous consent that all
Members may have 5 legislative days within which to revise and extend
their remarks and to include extraneous material on H.R. 1866, as
amended, the bill under consideration.
The SPEAKER pro tempore. Is there objection to the request of the
gentleman from Wisconsin?
There was no objection.
Mr. SENSENBRENNER. Madam Speaker, I yield myself such time as I may
consume.
Madam Speaker, Congress established the patent reexamination system
in 1980. The 1980 reexamination statute was enacted with the intent
reexamination of patents by the Patent and Trademark Office would
achieve three principal benefits, first, to settle validity disputes
more quickly and less expensively than litigation; second, to allow
courts to refer patent validity questions to an agency with expertise
in both the patent law and technology; and third, to reinforce investor
confidence in the certainty of patent rights by affording an
opportunity to review patents of doubtful validity.
More than 20 years after the original enactment of the reexamination
statute, the Committee on the Judiciary still endorses these goals and
encourages third parties to pursue reexamination as an efficient way of
settling patent disputes.
Reexamination worked well until recently when it was severely limited
by a Federal Court of Appeals decision. H.R. 1866 is intended to
overturn the 1997 In re Portola Packaging case by the United States
Court of Appeals for the Federal circuit. That decision severely
impairs the patent reexamination process. Reexamination was intended to
be an important quality check on defective patents. Unfortunately, this
decision severely limits its use.
The Portola case is criticized for establishing an illogical and
overly strict bar concerning the scope of reexamination requests. The
bill permits a broader range of cases to be the subject of a request,
as was the case for the first 16 years since the law was enacted. The
bill that we consider today preserves the ``substantial new question
standard'' that is an important safeguard to protect all inventors
against frivolous action and against harassment, while allowing the
process to continue as originally intended. It also preserves the
discretion of the Patent and Trademark Office in evaluating these
cases.
The bill has been amended since its introduction by the full
committee. I wish to take a moment to explain this to my colleagues.
Since its introduction, we heard from the public members of the bar
and critics of the Portola decision who have recommended that we make
an additional change to ensure the result that we seek. The text is
clarified to permit the use of relevant evidence that was
``considered'' by the PTO, but not necessarily ``cited.'' Some would
say this is redundant, but I prefer to clarify precisely when
reexamination is an available procedure. This will ensure that the
system is flexible and efficient. While many believe the base text is
satisfactory to meet that goal, I hope that the amendment removes any
doubt.
I believe that adding this one sentence to the Patent Act will help
prevent the misuse of defective patents in all fields, especially those
concerning business methods. An efficient patent system is important
for inventors, investors and consumers. I urge Members to support H.R.
1866.
Madam Speaker, I reserve the balance of my time.
Mr. BERMAN. Madam Speaker, I yield myself such time as I may consume.
Madam Speaker, I rise in support of H.R. 1866, and I urge my
colleagues to vote for it.
The Committee on the Judiciary favorably reported this legislation by
voice vote on June 20. Prior to that, the Subcommittee on Courts, the
Internet and Intellectual Property passed the bill by a voice vote on
May 22. It is a good step forward on the road of making reexamination a
more attractive and effective option for challenging a patent's
validity.
The bill overturns, as the gentleman from Wisconsin mentioned, the
1997 Federal circuit decision In Re Portola Packaging. In that case,
the Federal circuit narrowly construed the term ``substantial new
question of patentability'' to mean prior art that was not before the
examiner during an earlier examination. Because the PTO director can
only order a reexamination if a ``substantial new question of
patentability'' exists, the Federal court's decision in Portola
effectively bars the PTO from conducting a reexamination based on prior
art that was cited in the patent application.
The Portola decision is troublesome because it prevents
reexaminations from correcting mistakes made by examiners. Ideally, a
reexamination could be requested based on prior art cited by an
applicant that the examiner failed to adequately consider. However,
after Portola, such prior art could not be the basis of the
reexamination.
By overturning the Portola decision, H.R. 1866 will allow
reexamination to correct some examiner errors. Thus, this bill will
accomplish an important, if narrow, objective.
Madam Speaker, as far as I know, H.R. 1866 has not engendered any
controversy, and I urge my colleagues to support it.
Madam Speaker, I yield back the balance of my time.
Mr. SENSENBRENNER. Madam Speaker, I yield 3 minutes to the gentleman
from North Carolina (Mr. Coble), the chairman of the Subcommittee on
Courts, the Internet and Intellectual Property.
Mr. COBLE. Madam Speaker, I thank the gentleman for yielding me this
time. I will be very brief, because the gentleman from Wisconsin has
thoroughly stated the matter, as has the gentleman from California.
As the gentleman from Wisconsin has indicated, H.R. 1866, Madam
Speaker, consists of adding a single sentence to the law in order to
improve the patent reexamination system. It is based upon testimony
that was offered before our subcommittee earlier this year. With this
single sentence, we stab at the heart of defective business method and
other inappropriately issued patents. At the same time, we protect
small businesses and small inventors from harassing conduct in these
proceedings.
I want to thank the distinguished gentleman from California (Mr.
Berman), my friend and the ranking member of the subcommittee, for his
work, as well, on this bill, and for that matter, all of the members of
the subcommittee.
In closing, I want to thank the distinguished gentleman from
Wisconsin (Mr. Sensenbrenner), the chairman of the full committee, for
having expeditiously moved this legislation along, because it is
important legislation. I urge my colleagues to support H.R. 1866.
Mr. SENSENBRENNER. Madam Speaker, I have no further requests for
time, and I yield back the balance of my time.
The SPEAKER pro tempore. The question is on the motion offered by the
gentleman from Wisconsin (Mr. Sensenbrenner) that the House suspend the
rules and pass the bill, H.R. 1866, as amended.
The question was taken; and (two-thirds having voted in favor
thereof) the rules were suspended and the bill, as amended, was passed.
A motion to reconsider was laid on the table.
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