Are Additional Patent Reforms Necessary?


todd-dickinson-aipla-2012-2For better or for worse, Congress hasn’t asked whether additional patent reforms are necessary. Rather, they decided that additional patent reforms were necessary and the only discussion worth having was about the implementation details for that legislation. This ‘legislate first, ask questions later’ approach is evidenced by the fact that the Innovation Act was submitted in late October 2013, marked-up in late November 2013, and passed by the House in early December 2013. Before we were even out of 2013, the Senate held its first hearing on the legislation, a companion bill submitted by Senator Patrick Leahy.

Todd Dickinson, who is the Executive Director of the AIPLA (American Intellectual Property Law Association) and a former Director of the United States Patent and Trademark Office, testified before the Senate Judiciary Committee. Dickinson recommended that Congress take no action now. His argument is persuasive — the America Invents Act requires the USPTO to study the effects of that law, which was a major revision to the patent laws. The report isn’t even due to Congress until 2015. So why rush to make more changes now?

In his prepared remarks, Dickinson explained:

We believe that the prudent course is to give these reforms the chance to demonstrate their efficacy to deal with the concerns for which they were created before we consider making significant additional changes which may have their own unintended consequences. In support of this proposition to wait and see how they are working, we would simply point out that the AIA itself requires that USPTO study the reforms implemented by the AIA and report back to Congress by September 16, 2015. Those reports would serve as an important and more empirically-driven body of data which would allow for greater clarity and direction in making any necessary changes.

Dickinson went on:

Any further proposed legislative remedy should not overlook the extensive revisions which the AIA only recently accomplished. The AIA includes a variety of reforms directed to improving the quality of pending patent applications and the enforceability of issued patents. With respect to patent quality, the legislation institutes a first-inventor-to-file system that will provide a more objective basis for establishing the priority of rights. It also provides tools to allow third parties to participate in patent examination or challenge the validity of an issued patent. These tools are expected to decrease abusive patent litigation practices by reducing the issuance of low quality patents and by providing a lower-cost administrative procedure for challenging issued patents. With respect to patent enforcement, the AIA reforms to prior user rights, case removal, false marking, and joinder practice, are all areas in which the interests of plaintiffs and defendants were in need of rebalancing. The exact balance struck by these various reform provisions is just beginning to unfold.

The breakneck legislative pace, which ironically comes from a Congress that has been noted for its extraordinary inaction, is curious to say the least. Leading up to the vote in the House, one member of Congress went much further than raising a curious eyebrow about the rush to patent reform. “This schedule suggests the fix was in,” said Congressman Dana Rohrabacher (R-CA) on December 3, 2013. “The clear message to little inventors: give thanks for your intellectual property rights, because you may not have them by this time next year.”

But is there anything that can be done to slow the tide and get the Senate to more carefully consider patent reform legislation? That is unclear, but in the Senate there is more ability to slow legislation, which at times can be a good thing and at times quite frustrating. So the battle moves to the Senate for now, perhaps with a vote sometime during Q1 2014.

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