Patent Reform –Amendments Fail

Senator Sessions’ amendment has failed. 47-51. The Sen. Session’s amendment had proposed an amendment stripping a provision from the Bill that would retroactively lengthen the deadline for applying for a patent term extension. This particular provision of the reform has no other real purpose other than to reinstate The Medicine Company’s (MDCO’s) patent covering its Angiomax drug. The law firm WilmerHale is on the hook for substantial malpractice damages due to the filing debacle. These two firms have spent around $20 million lobbying Congress on this issue.

Sen. Cantwell’s proposed amendments have failed. The amendments would have eliminated the business method patent ‘transitional program.’ Failing that, a separate amendment would have limited the scope of the program only to “patents claiming abstract business methods” and not to patents covering “technological” or “nonfinancial” inventions.

Sen. Colburn’s proposed an amendment has failed. 48-50. The amendment would have ensured that the USPTO will be able to spend the fees it collects and end “fee diversion.”

The Senate will likely complete its vote on the entire reform measure by 5:45 pm ET today.     

13 thoughts on “Patent Reform –Amendments Fail

  1. Why? Clearly missing the deadline was unintentional

    Does this mean that all hard deadlines should be abolished? After all, no one intentionally misses important deadlines.

  2. Why? Clearly missing the deadline was unintentional.  The statutes are replete with restoration of rights due to mistakes in missing deadlines.   See also the reissue statute, which flowed from equity allowing correction of errors.

    If you want to check the cases, you can go back hundreds of years to determine that mistakes of any sort can be remedied by equity.  Not to do so is not in the interests of justice.  Not at all.

  3. Out of curiosity – why does it “appear to be right?”

    The first rule of patent practice is: DON’T BLOW A HARD DEADLINE. Practitioners labor daily under deadlines – filing deadlines due to public disclosure bars, prosecution deadlines for replying to office actions, and appeal and trial deadlines set by judicial bodies. We take excruciating care to calculate, track, and comply with these deadlines, because even one failure, even of a single day, is catastrophic (even more for our careers than for our clients’ rights).

    In light of that brutal reality – what makes it “right” that WilmerHale gets to buy its way out of a missed deadline, when those of us who don’t have the moxy to buy senators are obligated to play by the rules?

  4. That’s some mighty good lawyering for a company and a law firm to be able to so nakedly extract itself and write such a singularly beneficial law.

  5. Dan –

    “after this incident, everyone in the business knows what 60 days means”

    Well, that’s the issue, isn’t it. FDA and PTO measure it differently. What does “60 days” mean, on the specific facts of MedCo, where an agency sends a decision by fax after the close of business for the day?

  6. 1. What about the Coburn amendment?
    2. Ned, if Congress had acted 10 years ago when this happened, it might have been just. (Although how friggin’ hard can it be to read a statute that says 60 days? Even MDCO’s CEO admitted the problem was someone at the law firm docketed for 2 months instead of 60 days. Understandable mistake, that’s why people carry insurance.) But to act now, so many years later, after generic manufacturers already invested developing their own versions in the absence of a PTE (including a period of several years during which MDCO let its claims against the PTO and the FDA lie dormant), doesn’t appear to be fair to those companies. Or to the public that would benefit from the lower-priced drug. And forcing MDCO to eat the loss of profits in this one case wouldn’t undermine the patent system or Hatch-Waxman: after this incident, everyone in the business knows what 60 days means, so no one would be dissuaded from developing new drugs if MDCO lost this one.

  7. Can someone remind me what the “transitional program” about business methods is for? What are we “transitioning” to? Banning them outright? Allowing them outright? Studying their impact?

  8. Interesting that it takes congress to rectify an injustice. Patent rights should not depend upon not well understood filing deadlines.

    This is private legislation. But it appears to be right.

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