110TH CONGRESS
`2d Session
`
`"
`
`Calendar No. 563
`!
`REPORT
`110–259
`
`SENATE
`
`THE PATENT REFORM ACT OF 2007
`
`JANUARY 24, 2008.—Ordered to be printed
`
`Mr. LEAHY, from the Committee on the Judiciary,
`submitted the following
`
`R E P O R T
`
`together with
`
`ADDITIONAL AND MINORITY VIEWS
`
`[To accompany S. 1145]
`The Committee on the Judiciary, to which was referred the bill
`(S. 1145), to amend title 35, United States Code, to provide for pat-
`ent reform, having considered the same, reports favorably thereon
`with an amendment and recommends that the bill (as amended) do
`pass.
`
`CONTENTS
`
`I. Background and Purpose of S. 1145, the Patent Reform Act of 2007
`II. History of the Bill and Committee Consideration .......................................
`III. Section-by-Section Summary of the Bill ......................................................
`IV. Congressional Budget Office Cost Estimate ................................................
`V. Regulatory Impact Evaluation ......................................................................
`VI. Conclusion ......................................................................................................
`VII. Additional and Minority Views .....................................................................
`VIII. Changes to Existing Law Made by the Bill, as Reported ...........................
`
`Page
`1
`35
`41
`52
`52
`52
`53
`78
`
`I. BACKGROUND AND PURPOSE OF THE PATENT REFORM ACT OF 2007
`
`PURPOSE AND SUMMARY OF LEGISLATION
`
`Purpose
`The Constitution explicitly grants Congress the power to ‘‘pro-
`mote the progress of science and useful arts, by securing for limited
`times to . . . inventors the exclusive right to their respective .
`.
`.
`69–010
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00001 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`

`

`2
`
`discoveries.’’ 1 Congress has responded by authorizing patents to
`issue to inventors of new and useful inventions or improvements on
`inventions.2 The patent law thus accomplishes two objectives, con-
`sistent with the authorization granted by the Constitution: first, it
`encourages inventors by granting them limited, but exclusive rights
`to their inventions; second, in exchange for the grant of those ex-
`clusive rights, the patent law requires disclosure of the invention
`and terminates the monopoly after a period of years.3 This disclo-
`sure and limited time benefits both society and future inventors by
`making the details of the invention available to the public imme-
`diately, and the right to work that invention available to the public
`after the expiration of 20 years from the date the patent applica-
`tion was filed.
`Congress has not enacted comprehensive patent law reform in
`more than 50 years.4 The object of the patent law today must re-
`main true to the constitutional command, but its form needs to
`change, both to correct flaws in the system that have become un-
`bearable, and to accommodate changes in the economy and the liti-
`gation practices in the patent realm. The need to update our patent
`laws has been meticulously documented in six hearings before the
`Senate Judiciary Committee, in addition to reports written by the
`Federal Trade Commission and the National Academy of Sciences,5
`hearings before the House of Representatives Judiciary Commit-
`tee’s Subcommittee on the Internet, Intellectual Property, and the
`Courts, and a plethora of academic commentary.6
`The growing impetus towards modernizing and improving the
`patent system has found expression not only in Congress, but in
`the other branches of government as well, with the Supreme Court
`taking up an ever-increasing number of patent cases,7 and the
`
`1 U.S. CONST. art. 1, § 8.
`2 See 35 U.S.C. § 101.
`3 See Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Reforms:
`Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th
`Cong. 68–97 (2006) (statement of Nathan P. Myhrvold, Chief Executive Officer, Intellectual Ven-
`tures); Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate
`Comm. on the Judiciary, 109th Cong. 112–114 (2005) (statement of Dean Kamen, President,
`DEKA Research and Development Corp.).
`4 The last major revision of the patent laws was the Patent Act of 1952, P.L. 82–593.
`5 The National Academy of Science (NAS) and the Federal Trade Commission (FTC) conducted
`multi-year studies on the patent system and its need for reform. See Committee on Intellectual
`Prop. Rights, National Research Council, A Patent System for the 21st Century (2004) (herein-
`after ‘‘NAS Report’’); and Federal Trade Comm’n, To Promote Innovation: The Proper Balance
`of Competition and Patent Law and Policy (2003) (hereinafter ‘‘FTC Report’’).
`6 See, e.g., Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 Tex. L.
`Rev. 1991 (2007); Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell.
`Prop. L. 336 (2005); Gerald J. Mossinghoff, The First-to-Invent Rule in the U.S. Patent System
`Has Provided No Advantage to Small Entities, 87 JPTOS 514 (2005); Joseph Farrell & Robert
`P. Merges, Incentives to Challenge and Defend Patents: Why Litigation Won’t Reliably Fix Patent
`Office Errors and Why Administrative Patent Review Might Help, 19 Berkeley Tech. L.J. 943,
`958 (2004); see also Adam B. Jaffe & Josh Lerner, Innovation and Its Discontents: How Our Bro-
`ken Patent System is Endangering Innovation and Progress, and What to Do About It (2004);
`Kevin G. Rivette & David Kline, Rembrandts in the Attic, Unlocking the Hidden Value of Pat-
`ents (2000).
`7 See Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746 (2007) (holding copying computer soft-
`ware overseas does not constitute infringement under 35 U.S.C. § 271(f)); KSR Int’l Co. v.
`Teleflex, Inc., 127 S. Ct. 1727 (2007) (rejecting the United States Court of Appeals for the Fed-
`eral Circuit’s ‘‘teaching-suggestion-motivation’’ test for obviousness, and reaffirming that the
`four factor inquiry set forth in Graham v. John Deere applied); eBay, Inc. v. MercExchange,
`L.L.C., 126 S. Ct. 1837 (2006) (rejecting the Federal Circuit’s test for determining permanent
`injunctions in patent cases, and explaining the traditional four part equitable test applied). In
`each of these cases, the Supreme Court reversed the Federal Circuit and changed the legal
`standard that the Federal Circuit had been applying. In addition, while the Committee Report
`was being prepared, the Federal Circuit decided two cases rejecting claims as unpatentable
`under § 101 of title 35. See In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) and In re Nuijten,
`500 F.3d 1346 (Fed. Cir. 2007). In Comiskey, the Federal Circuit significantly restricted the pat-
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00002 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`

`

`3
`
`United States Patent and Trademark Office (USPTO) addressing
`itself to regulatory changes through rulemaking.8 The voices heard
`in this debate are too numerous to list, but include representatives
`from all those who use, administer, study, teach, benefit from, re-
`port on, or are affected by the patent system: small inventors, aca-
`demics, universities, government agencies, corporations, non-profit
`organizations, industry organizations, bar associations, and mem-
`bers of the general public. The proposed changes have been far-
`reaching and hardly uniform, but they have focused Congressional
`attention on three major areas of concern: (i) appropriate proce-
`dures for prosecuting, and standards for allowing, patents; (ii) in-
`creasing rates, costs, and uncertainty in patent litigation,9 and (iii)
`inconsistencies between the U.S. patent system and the other
`major patent systems throughout the industrialized world which
`disadvantage U.S. patent holders.
`First, questions have been raised regarding whether the current
`scope of what is patentable is too broad, and whether the current
`standard for obtaining a patent is too low in practice. Many have
`questioned whether the current USPTO patent examination system
`is capable of handling the growing number,10 and increased com-
`plexity, of patent applications. In particular, questions have been
`repeatedly raised about how—and how much—the USPTO is fund-
`ed, and about whether patent fees reflect the work necessary to en-
`sure the issuance of high quality patents. A related concern focuses
`on whether patent applicants are bearing their burden of responsi-
`bility in searching the current state of the art and preparing and
`filing high quality applications.
`Second, in recent years the cost and uncertainty of patent litiga-
`tion has escalated, leading many to believe that it is an unbearable
`drag on the innovation that the patent system is supposed to fos-
`ter. Patent holders can often sue an alleged infringer anywhere
`they wish in the United States. They may allege damages that are
`not always commensurate with the value of their inventions, and
`then often argue that these sums should be tripled based on al-
`leged acts of willful infringement by the accused infringer. There
`are also troubling, plaintiff-focused litigation concerns, including
`that the doctrine of inequitable conduct needs improvements and
`codification.11 Patent litigations typically take several years to com-
`
`entability of business methods, severely narrowing the Federal Circuit’s controversial 1998 deci-
`sion in State Street Bank. See State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149
`F.3d 1368 (Fed. Cir. 1998), cert denied, 525 U.S. 1093 (1999).
`8 Changes to Practice for Continuing Applications, Patent Applications Containing Patentably
`Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule, 72 Fed. Reg.
`46716 (Aug. 21, 2007).
`9 The NAS reported that the number of patent litigations doubled between 1988 and 2001,
`from 1200 to nearly 2400. See NAS Report at 32. See also PricewaterhouseCoopers, 2006 Patent
`and Trademark Damages Study (2006) at 3 (‘‘[I]n the past 15 years, the number of patent in-
`fringement cases filed increased every year, from 1,171 in 1991 to 3,075 in 2004.’’)
`10 USPTO annual reports indicate that in fiscal year 1952 (when the current patent statute
`was enacted), the USPTO received approximately 60,000 patent applications. In stark contrast,
`last year (FY 2006) the USPTO received over 440,000 applications, more than seven times the
`number in 1952. In addition, the 2006 filings increased 8% from the prior year. Although these
`numbers are a testament to the tremendous innovation in our country, they also raise the ques-
`tion of whether the USPTO is equipped to handle such large numbers of applications.
`11 See, e.g., Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Re-
`forms: Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary,
`109th Cong. 63 (2006) (statement of Philip S. Johnson, Chief Patent Counsel, Johnson & John-
`son); Perspectives on Patents: Harmonization and Other Matters: Hearing Before the Subcomm.
`on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 30 (2005) (statement
`of David Beier, Senior Vice President of Global Government Affairs, Amgen); Perspectives on
`Continued
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00003 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`

`

`4
`
`plete, if appealed may be remanded more than once, and can cost
`several million dollars.12 In addition, litigation concerns can en-
`courage unreasonable posturing during licensing negotiations, as
`well as premature settlements simply to avoid the high cost and
`uncertainty of patent litigation. Moreover, currently, there is no
`viable, inexpensive, quick administrative alternative for resolving
`patent validity issues.
`Third, because business and competition are increasingly global,
`many patent applicants filing in the United States often seek pat-
`ents in other countries for their inventions as well. Yet the United
`States’ patent system differs from every other patent system in the
`world in one major respect—it awards patents to the ‘‘first to in-
`vent,’’ while every other patent system uses a ‘‘first to file’’ rule.13
`As a result, U.S. patent applicants who also file abroad are forced
`to navigate through two different patent filing systems, adding cost
`and uncertainty to their package of patent rights.
`The purpose of the Patent Reform Act of 2007, as reported by the
`Senate Judiciary Committee, is to ensure that the patent system
`in the 21st century accurately reflects the 18th century Constitu-
`tional imperative while ensuring that it does not unduly hinder in-
`novation. Congress must promote innovation through the entice-
`ment to inventors of temporally limited monopolies on their inven-
`tions, and it must do so for the ultimate benefit of the public. The
`legislation is designed to establish a more efficient and streamlined
`patent system that will improve patent quality and limit unneces-
`sary and counterproductive litigation costs. If the United States is
`to maintain its competitive edge in the global economy, it needs a
`system that will support and reward all innovators with high qual-
`ity patents. The time has come for Congress to reconsider the 50
`year old patent statute and how it is currently being applied. The
`Committee has heard from numerous interested parties and, given
`the complex nature of patent law as well as the often conflicting
`interests involved, has tried to consider all of those concerns and
`produce a balanced set of changes that will move the patent system
`into the 21st century. Moreover, and in response to various con-
`cerns raised before the Committee, the bill as originally introduced
`has been significantly modified to reflect a more balanced, modest
`approach.
`
`Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judici-
`ary, 109th Cong. 45–71 (2005) (statement of Robert A. Armitage, Senior Vice President and Gen-
`eral Patent Counsel, Eli Lilly and Company); Perspectives on Patents: Hearing Before the
`Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 137–145
`(2005) (statement of Richard C. Levin, President, Yale University). However, the testimony was
`not uniform as to whether inequitable conduct needed to be reformed, and if so how to do so.
`See, e.g., Perspectives on Patents: Harmonization and Other Matters: Hearing Before the
`Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 86–102
`(2005) (statement of Christine Siwik, Partner, Rakoczy Molino Mazzochi Siwik LLP, on behalf
`of Barr Laboratories, Inc.); Patent Law Reform: Injunctions and Damages: Hearing Before the
`Subcomm. on Intellectual Property of the Senate Comm. on the Judiciary, 109th Cong. 157–170
`(2005) (statement of Mark Lemley, Professor, Stanford Law School).
`12 Where more than $25 million is at stake, the median litigation cost is $4 million for each
`party. See NAS Report at 38 (citing American Intellectual Property Law Association survey re-
`sults). See also AIPLA Report of the Economic Survey 2007 at 25–26 (noting that the figure is
`now $5 million for such cases).
`13 See R. Carl Moy, 2 Moy’s Walker on Patents § 8:36 (4th ed. 2007); Gerald J. Mossinghoff,
`The U.S. First-to-Invent System Has Provided No Advantages to Small Entities, 84 JPTOS 425
`(2002).
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00004 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`

`

`20
`
`must often be challenged in district court after the challenger has
`taken the risk of infringement, defeating the efficiency purpose of
`reexamination.
`Given the numerous problems and limitations with the reexam-
`ination system, and the chorus of concerns heard by the Committee
`about that process,88 the Committee determined not to try to adopt
`another, and necessarily massive, set of amendments to the current
`system.89 Rather, the Committee determined that it would be sim-
`pler, and ultimately better, to make a clean start. The time has
`come to eliminate the inter partes reexamination system and re-
`place it with a new post-grant review system at the USPTO that
`will give third parties a quick, inexpensive, and reliable alternative
`to district court litigation to resolve questions of patent validity.
`Discussion of changes
`Section 5 of the Act creates a new post-grant review (PGR) sys-
`tem for United States patents, replacing and eliminating inter
`partes reexamination, in a new chapter 32 in title 35.90
`There are three ways to initiate a PGR proceeding.91 They are
`often referred to as ‘‘windows’’ (first window and second window)
`in which a third party petitions the Director of the USPTO to ini-
`tiate a PGR proceeding.92 These windows differ procedurally and
`substantively, as described below. The third means of initiating a
`PGR proceeding is based on the patentee’s consent.93
`In a first window PGR, the petition must be filed within 12
`months of the patent’s issuing. The presumption of validity for the
`patent does not apply, but the petitioner has the burden of proving
`invalidity by a preponderance of the evidence. This window is de-
`signed as an extension of the examination process. The expectation
`is that those who are interested in certain technology fields—or in
`certain patent holders—will assiduously follow the issuance of the
`patents that interest them, and be ready to bring to the USPTO’s
`attention any immediate concerns.
`
`88 See, e.g., Perspectives on Patents: Post-Grant Review Procedures and Other Litigation Re-
`forms: Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary,
`109th Cong. 44 (2006) (statement of Mark Chandler, Senior Vice President and General Coun-
`sel, Cisco Systems, Inc.); Patent Law Reform: Injunctions and Damages: Hearing Before the
`Subcomm. on Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 132–153
`(2005) (statement of Jeffrey P. Kushan, Partner, Sidley Austin Brown & Wood, LLP); Patent
`Law Reform: Injunctions and Damages: Hearing Before the Subcomm. on Intellectual Prop. of
`the Senate Comm. on the Judiciary, 109th Cong. 111–131 (2005) (statement of J. Jeffrey Hawley,
`President, Intellectual Property Owners Association, Legal Division Vice President, Eastman
`Kodak Co.).
`89 The NAS came to a similar conclusion after its thorough study of the issue. See NAS Report
`at 96.
`90 Ex-parte reexamination, based on a request by the patentee, is retained. See new Section
`303(a) of the Act. However, third parties may no longer request an ex-parte reexamination.
`Thus, third parties wishing to challenge the patent will use the new post grant review system;
`patentees wishing to have additional art considered will use the old ex-parte reexamination sys-
`tem.
`91 See new § 322 as added by S. 1145.
`92 See new § 322(1) and (2) as added by S. 1145.
`93 The post grant review system created by this Section adopts several of the recommenda-
`tions, in whole or in part, made by the NAS Report. See NAS Report at 95–103. In addition,
`the post grant review system adopted by the Committee is similar in several respects to the
`post grant review system proposed by the USPTO. See Patent Reform: The Future of American
`Innovation: Hearing on S. 1145 Before the Senate Comm. on the Judiciary, 110th Cong. 273
`(2007) (statement of Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and
`Director of the USPTO). Moreover, changes were made by the Committee in direct response to
`concerns raised by the USPTO, including (i) raising the standing requirement for post grant re-
`view second window, and (ii) reducing the number of existing patents eligible for second window
`post grant review.
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00020 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`

`

`23
`
`court.106 Because the district court action allows the challenger the
`full panoply of discovery (unlike the restricted discovery appro-
`priate to the more limited PGR proceeding), the Committee be-
`lieves that it is only reasonable to apply estoppel to claims the
`challenger was, or should have been, in a position to raise, whether
`or not it did so.
`The USPTO must complete its work on a PGR within one year
`in most cases, and 18 months in only those cases where the addi-
`tional time is justified. The PGR proceedings are conducted in the
`first instance by three Patent Board judges, and not first by an ex-
`aminer, thus reducing the pendency compared to reexamination
`proceedings. Any party dissatisfied with a Board PGR decision,
`may appeal to the Federal Circuit, and all parties to the PGR pro-
`ceeding may participate in such an appeal.
`The Director is instructed to issue regulations that will more
`fully develop the rules and procedures governing PGR pro-
`ceedings.107 The Committee intends that such rules will provide an
`efficient, streamlined, transparent proceeding that is trusted by the
`public. The goal is to encourage PGR challenges when warranted,
`not discourage them in view of complicated, expensive, and arcane
`procedures. The Director is admonished, among other regulatory
`tasks, to ensure that regulations forbidding and penalizing harass-
`ment are enacted and enforced.
`The PGR process shall take effect on the date that is one year
`after the date of the enactment of the Act. After that time, first
`window PGR petitions may be filed against any patent, so long as
`the other provisions of the Act are satisfied. Second window PGR
`petitions (as well as consented petitions), however, may only be
`filed on patents that issue based on applications filed after Novem-
`ber 29, 1999. That date was chosen by the Committee because it
`is the date used to determine whether a patent could be eligible for
`inter partes reexaminations (which are eliminated under the Act).
`Thus, patents that were eligible for inter partes reexamination, are
`now eligible for second window PGRs.108
`SECTION 6: DEFINITIONS; PATENT TRIAL AND APPEAL BOARD
`This Section renames the Patent Board as the ‘‘Patent Trial and
`Appeal Board’’ and sets forth its duties, which are expanded to in-
`clude jurisdiction over the new post grant review and derivation
`proceedings. This section strikes references to proceedings elimi-
`nated by the Act, including interference proceedings and review of
`inter partes decisions.
`SECTION 7: SUBMISSIONS BY THIRD PARTIES AND OTHER QUALITY
`ENHANCEMENTS
`
`18 month publication
`Background
`Most countries publish all patent applications filed in their juris-
`dictions within 18 months after filing. In 1999, Congress mandated
`this publication for most, but not all applications filed with the
`
`106 See new § 337 as added by S. 1145.
`107 See § 329 as added by S. 1145.
`108 The initial legislation contemplated that all patents in existence would be eligible for PGR
`second window. See § 321 as proposed to be added by S. 1145 as introduced.
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00023 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`

`

`24
`
`USPTO.109 Applications that contain certifications stating a related
`application has not been and will not be filed in a foreign country
`are exempt from this publication.110
`Discussion of changes
`The publication of patent applications is beneficial to both the
`patent community and the general public, since it promotes the dis-
`closure benefit of the patent system 111 and allows the public (in-
`cluding competitors) to learn for which inventions patents are
`being sought.112 Therefore, Section 7 of the Act eliminates the pre-
`vious exemptions. All applications filed at the USPTO will be pub-
`lished within 18 months of filing.113
`Third party submissions
`Background
`After an application is published, members of the public—most
`likely, a competitor or someone else familiar with the patented in-
`vention’s field—may realize they have information relevant to a
`pending application. The relevant information may include prior
`art that would prohibit the pending application from issuing as a
`patent. Current USPTO rules permit the submission of such prior
`art by third parties only if it is in the form of a patent or publica-
`tion,114 and the submitter is precluded from explaining why the
`prior art was submitted or what its relevancy to the application
`might be.115 Such restrictions decrease the value of the information
`to the examiner and may, as a result, deter such submissions.116
`Discussion of changes
`Section 7 of the Act improves the process by which third parties
`submit relevant information to the USPTO by permitting those
`third parties to make statements concerning the relevance of the
`
`109 See 35 U.S.C. § 122.
`110 See 35 U.S.C. § 122(b)(2)(B).
`111 See Hearing Before the Subcomm. on Intellectual Prop. of the Senate Comm. on the Judici-
`ary, 109th Cong. 30 (2005) (statement of David Beier, Senior Vice President of Global Govern-
`ment Affairs, Amgen).
`112 Prior to requiring the publication of applications, the public would not learn of a patent
`until after it issued, which is often several years after the application was filed. Some patentees
`took advantage of this practice to the extreme (with ‘‘submarine’’ patents), and intentionally de-
`layed their patents issuance, and thus publication, of the patent for several years to allow poten-
`tially infringing industries to develop and expand, having no way to learn of the pending appli-
`cation. See Mark A. Lemley and Kimberly A. Moore, Ending Abuse Of Patent Continuations, 84
`B.U. L. Rev. 63, 79–81 (2004). In contrast, publication of the application allows for the earlier
`dissemination of the information contained therein, as well as allowing competitors to make de-
`cisions based on what is attempting to be patented.
`113 Both the NAS and the FTC advocated for the publication of all applications and the elimi-
`nation of the exception. See NAS Report at 128 (explaining that publication of all applications
`would promote the disclosure purpose of the patent system and minimize the uncertainty associ-
`ated with submarine patents); FTC Report at 15–16 ‘‘Recommendation 7: Enact Legislation to
`Require Publication of All Patent Applications 18 Months After Filing,’’ (explaining that publica-
`tion of domestically filed applications will increase business certainty, promote rational plan-
`ning, and reduce the problem of unanticipated ‘‘submarine patents’’ used to hold up competitors
`for unanticipated royalties); see also Perspectives on Patents: Hearing Before the Subcomm. on
`Intellectual Prop. of the Senate Comm. on the Judiciary, 109th Cong. 137–145 (2005) (statement
`of Richard C. Levin, President, Yale University).
`114 See 35 C.F.R. § 1.99.
`115 See 35 C.F.R. § 1.99(d) (‘‘A submission under this section shall not include any explanation
`of the patents or publications, or any other information.’’).
`116 See Perspectives on Patents: Hearing Before the Subcomm. on Intellectual Prop. of the Sen-
`ate Comm. on the Judiciary, 109th Cong. 167–179 (2005) (statement of David Simon, Chief Pat-
`ent Counsel, Intel Corporation).
`
`VerDate Aug 31 2005 08:57 Jan 31, 2008 Jkt 069010 PO 00000 Frm 00024 Fmt 6659 Sfmt 6602 E:\HR\OC\SR259.XXX SR259
`
`cprice-sewell on PROD1PC72 with HEARING
`
`Purdue 2044
`Collegium v. Purdue, PGR2018-00048
`
`