Don’t Tailor Make Patent Act


Publish Date:
May 11, 2009
Publication Title:
National Law Journal
Op-Ed or Opinion Piece Pages 18
  • Dan L. Burk and Mark A. Lemley, Don't Tailor Make Patent Act, National Law Journal, May 11, 2009, p. 18.


Congress has spent the past five years in an ongoing effort to reform the patent system. Reform proposals have come and gone; the debates between proponents and opponents of various amendments have been fierce and protracted.

The most recent iteration is found in the Patent Reform Act of 2009, S. 515, which recently passed the Senate Judiciary Committee despite significant concerns by various stakeholders and strong reservations by several members of the committee.

Patent reform has been aimed at resolving abuses of the patent examination process and of various doctrines that encouraged abuse of the patent litigation system. It has also included other changes not aimed at abuse of the patent system, including giving patents to the first person to file an application rather than the first to invent.

But the pharmaceutical and biotechnology industries have opposed virtually all elements of patent reform directed at abuse. Individual inventors have objected both to the first-to-file provisions and to the limitations directed at abuse of the patent system.

On the other side, the software, electronics, Internet and telecommunications industries generally line up behind reform, but they have expressed skepticism toward those few reforms that the pharmaceutical industry supported, such as restrictions on the defenses of inequitable conduct and best mode.

These disagreements demonstrate the conflicting needs of different industries in the patent system. The incentives necessary to promote innovation in the pharmaceutical industry are not necessarily those for software or to semiconductors. The incentives necessary to innovation by small entities may differ from those needed by large entities.