Howard Berman: “I rise in support of H.R. 1866, and I urge my colleagues to vote for it. The Committee on the Judiciary favorably…”

“I rise in support of H.R. 1866, and I urge my colleagues to vote for it. The Committee on the Judiciary favorably reported this legislation by voice vote on June 20. Prior to that, the Subcommittee on Courts, the Internet and Intellectual Property passed the bill by a voice vote on May 22. It is a good step forward on the road of making reexamination a more attractive and effective option for challenging a patent's validity. The bill overturns, as the gentleman from Wisconsin mentioned, the 1997 Federal circuit decision In Re Portola Packaging. In that case, the Federal circuit narrowly construed the term 'substantial new question of patentability' to mean prior art that was not before the examiner during an earlier examination. Because the PTO director can only order a reexamination if a 'substantial new question of patentability' exists, the Federal court's decision in Portola effectively bars the PTO from conducting a reexamination based on prior art that was cited in the patent application. The Portola decision is troublesome because it prevents reexaminations from correcting mistakes made by examiners.”