[Congressional Record Volume 147, Number 115 (Thursday, September 6, 2001)]
[Extensions of Remarks]
[Page E1597]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




    DETERMINATION OF SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY IN 
                       REEXAMINATION PROCEEDINGS

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                               speech of

                         HON. JOHN CONYERS, JR.

                              of michigan

                    in the house of representatives

                      Wednesday, September 5, 2001

  Mr. CONYERS. Mr. Speaker, I support passage of this bill and would 
like to commend Chairman Coble and Ranking Member Berman for acting on 
this issue because our patent system is in need of repair. 
Specifically, the reexamination process--which lets parties bring 
challenges to patents that have been issued--may not be functioning as 
planned because of the substantive and procedural limits involved. As a 
result, applications that should not receive patents not only receive 
them, but keep them after a review process.
  One reason for this is that the Federal Circuit ruled in a 1997 case 
called In re Portola Packaging that the PTO could not, in 
reexamination, revisit patents and publications it had before it during 
the initial examination process. This ruling basically nullified the 
reexamination process and has prevented examiners from reviewing 
patents carefully. It is understandable why, at a recent hearing on 
this topic, the opinion of our witnesses on the need to reverse this 
ruling was unanimous.
  Fortunately, the Chairman and Ranking Member were able to work with 
numerous patent experts on how to resolve this issue. At the same time, 
I hope we can still resolve other outstanding issues in the 
reexamination process, such as what kinds of materials--or prior art--
PTO examiners can consult.

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