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BIO Expresses Concern with Patent Reform Legislation as Reported Out of House Judiciary Committee

Thanks chairmen for improvements made during markup.</p>

WASHINGTON, D.C. (July 19, 2007) -- The following statement was issued today by Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood regarding yesterday’s markup of patent reform legislation by the House Judiciary Committee:

“BIO welcomes efforts by Congress – particularly House Judiciary Committee Chairman John Conyers (D-MI), Ranking Member Lamar Smith (R-TX), Intellectual Property Subcommittee Chair Howard Berman (D-CA) and Subcommittee Ranking Member Howard Coble (R-NC) – to make improvements to the U.S. patent system.  Patent reform, done correctly, will help provide the necessary incentives that drive continued development of biomedical and other biotechnology innovations. 

“Unfortunately, BIO must continue to oppose the Patent Reform Act of 2007, as approved yesterday by the House Judiciary Committee.  The bill, as it currently stands, threatens continued biotech innovation.

“The bill as passed out of Committee improves upon the legislation introduced earlier this year in the House.  Specifically, BIO appreciates the process Chairman Berman used to identify problems with the ‘second window’ in the proposed post-grant review proceeding, and his decision to strike this second window in the bill considered before the Committee yesterday.   The second window would extend the opportunity to challenge a patent, diminishing its value and reducing incentives for investment.

“We also appreciate the changes the Chairman made to the so-called ‘best mode’ requirement which requires an inventor to describe the best mode of practicing his or her invention. This outdated doctrine is now primarily used in modern litigation to attack the subjective state of mind of the inventor at the time the patent application was filed in a belated attempt to invalidate an otherwise valid patent.

“We remain concerned, however, with provisions in the legislation that would change how damages against patent infringers are calculated, in a way that would often make infringement cheaper.  We also believe changes are required to the provision that would require that courts peel away from the patented and infringed invention the value of all previously known elements and award damages based solely on the remaining elements.  This provision severely devalues all underlying patent rights and could seriously undermine the incentive to develop novel new forms of medicines and other biotechnologies.  Further, the bill continues to contain broad new rulemaking authority for the PTO, which is of great concern to BIO.

“BIO remains committed to working with the Judiciary Committee, as well as the full House, to make the necessary improvements to this bill to strengthen the patent system to ensure it continues to provide the necessary foundation to enable continued U.S. leadership in innovation.”