Patent Legislation Reform in the United States: A View from the Trenches

Professor John R. Thomas, Professor of Law, Georgetown University, June 2006

Pending legislation before the U.S. Congress would arguably work the most sweeping reforms to the U.S. patent system since the nineteenth century. Among its proposals are the adoption of a first-to-file priority system, post-grant oppositions, assignee filing, and prior user rights, as well as limitations upon continuation practice, the availability of injunctive relief, and the defense of inequitable conduct. Although originally motivated by concerns over patent quality, litigation costs, and the practices of so-called patent trolls, legislative reform has come to pit the biotechnology and pharmaceutical industries against software and financial services firms. The legislative process has also proceeded alongside developments at the U.S. Supreme Court and the USPTO. Professor Thomas reviewed the substance of the legislation, with emphasis upon those features most salient to a European practitioner. In addition, based upon his seven-year experience as a visiting fellow at the U.S. Congressional Research Service, he discussed the realpolitik underlying the reform process in Washington today.