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Patent Overhaul Sent to Obama; WilmerHale Gets $214M Clarification

Posted Sep 9, 2011 6:31 AM CDT
By Debra Cassens Weiss

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The U.S. Senate has approved patent legislation that adopts a “first to file” system and gives WilmerHale protection from $214 million in malpractice damages.

The legislation, the Leahy-Smith America Invents Act, is the most sweeping patent overhaul in decades, the National Law Journal reports.

Small business groups had criticized the bill, saying it gives an advantage to large companies that employ patent lawyers who will rush to file applications with the U.S. Patent and Trademark Office, the New York Times reports. PTO director David Kappos defended the change from "first to invent." Awarding patents to those who are first to file patent applications will create clearly established priorities and is in line with the system used by most other countries, he says.

Surviving the vote was a provision that clarifies the deadline for applying for patent term extensions due to delays in regulatory agency reviews, according to the stories and the Patentlyo blog. The retroactive provision will have the effect of reinstating a patent for the anticoagulant Angiomax under an extension filed by WilmerHale on behalf of the Medicines Company. The patent office had ruled the company missed the filing deadline by a day or two.

WilmerHale had reached a $214 million malpractice settlement with the drug maker in February that would be paid only if Wilmer lost an appeal on the deadline question. David Redlick, co-chairman of the life sciences practice at WilmerHale, told the New York Times that the clarifying provision in the patent bill provides insurance in case the law firm loses the court case. He also insisted, however, that the change was needed to clarify unclear wording.

Sen. Jeff Sessions, R-Ala., had proposed an amendment to delete the deadline provision from the bill. It was defeated by a vote of 47-51.

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