Letter: S.1145, Preserving Third Party Participation in Patent Review

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February 21, 2008

The Honorable Patrick Leahy
Chairman
Committee on the Judiciary
433 Russell Senate Office Building
Washington, DC 20510

The Honorable Arlen Specter
Ranking Member
Committee on the Judiciary
711 Hart Senate Office Building
Washington, DC 20510

Re: S. 1145, Preserving Third Party Participation in Patent Review

Dear Chairman Leahy and Ranking Member Specter:

The undersigned organizations write to express our concern with the limitations S. 1145 places upon the parties requesting post-grant review of patent validity. Although we support many of the reforms included in S. 1145, the proposed language for 35 U.S.C. § 322, alongside the elimination of the reexamination process, undermines some of the laudable goals of the bill.

Public interest advocates such as the Public Patent Foundation and the Electronic Frontier Foundation frequently use the current reexamination process to challenge invalid or broadly-asserted patents that threaten the public’s use of established technologies. Eliminating ex parte and inter partes reexamination leaves such valuable work impossible to continue.

S. 1145 proposes to replace reexamination with what should be a more robust post-grant review process. However, the proposed Section 322 only allows those who can show a likelihood of “significant economic harm” as well as a notice of infringement to initiate a post-grant review after the initial 12-month period. These limitations would prevent public interest advocates from challenging patents via post-grant review.

S. 1145’s goal of enhancing patent quality through third-party review should not be undermined by unnecessarily excluding the few existing parties whose explicit mission is to improve patent quality for the public. We urge you to amend the bill to ensure that valuable public interest contributions to patent quality may continue.

Like other forms of intellectual property, patents reflect a bargain struck between the inventor and the public. In granting a limited monopoly to the inventor, the public sacrifices some value in order to reward the inventor. When a poor quality patent is granted, then, the public as a whole becomes poorer. Those members of the public should therefore be able to initiate a post-grant review without showing a notice of infringement or a commercial connection to the patent.

As we noted in our letter of September 6, 2007, we support your efforts to improve the patent system and patent quality. We respectfully urge you to preserve the ability of public interest organizations to assist in these efforts.

Respectfully submitted,