After many delays in the Senate, Senator Patrick Leahy (D-VT) announced on May 21, 2014, that patent reform is officially off the table for now and will not be considered in the Senate Judiciary Committee. Those in favor of patent reform who read Senator Leahy’s statement, which lamented the lack of consensus within the industry, may have taken false hope from his official statement because he ended by saying: “I hope we are able to return to this issue this year.” The reality of the legislative calendar suggests that revisiting patent legislation this year is a long shot at best. Patent reform in 2014 is all but dead.
At the end of 2013, legislative patent reform in 2014 seemed like all but a done deal. On Thursday, December 5, 2013, the United States House of Representatives passed the Innovation Act by a vote of 325-91. Surprisingly, the Innovation Act (HR 3309) had only been introduced on October 23, 2013, and was marked-up on November 20, 2013. Leading up to the vote in the House, Congressman Dana Rohrabacher (R-CA) said: “This schedule suggests the fix was in.” That was, indeed, how most of the opponents of patent reform felt at the time.
When patent reform bounced over to the Senate, there was much greater interest on the part of Senators and their staff to listen to critics who questioned why another round of patent reform was necessary so soon after the America Invents Act (AIA) passed, which was the most fundamental change to U.S. patent laws in many generations. Indeed, one of the central pieces of the AIA was to usher in new contested proceedings at the USPTO, which would make it more easy to challenge already-issued patents.
For 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?
The Innovation Act (HR 3309) was introduced on October 23, 2013; was marked-up on November 20, 2013; and by a vote of 325-91, passed in the United States House of Representatives on Thursday, December 5, 2013. This fast-tracking of the Innovation Act was despite bipartisan concerns raised by Judiciary Committee Members who urged Congressman Goodlatte (R-VA), who is Chair of the House Judiciary Committee, to slow the bill down for additional consideration and hearings.
Despite efforts of many in the House, the Innovation Act as passed includes fee-shifting provisions, which provide that the loser of a patent infringement litigation would have to pay the attorneys’ fees of the winner unless the loser’s positions were objectively reasonable. One of the most watched amendments to the Innovation Act had been the amendment submitted by Congressman Mel Watt (D-NC), which would have stripped the fee-shifting provisions from the Act. The Watt amendment lost by a vote of 213-199. Those who opposed deviating from the American Rule and adopting the British Rule (i.e., loser pays) are hopeful that the closeness of the vote on the Watt amendment will cause the Senate to take a closer, more thoughtful look.
Another provision of the Innovation Act that received much discussion, in the limited window available at least, was the change to the estoppel provisions that apply to post-grant review and inter partes review. The America Invents Act (AIA) included estoppel provisions that would prevent those challenging patents, as well as those in privy with them, from raising serial challenges by saying that they could not challenge the same patent claims again based on any prior art that was raised or could have been raised. The Innovation Act removes the “or could have been raised,” which all but certainly suggests that serial patent challenges will become possible, if not likely.
On June 6, 2012, a patent was granted to a small inventor who received assistance with his patent application from a Minnesota pilot pro bono program. Nick Musachio, an independent inventor in St. Paul, Minnesota, turned to the LegalCORPS Inventor Assistance Program after his initial patent application was rejected. With the professional expertise from attorneys at Fish & Richardson, Musachio was granted Patent Number 8157712 – a patent covering a “resistance exercise and physical therapy apparatus”.
This recent development is the first of what is expected to be many instances of small inventors contributing to the nation’s innovation via means of pro bono legal assistance. In the name of promoting innovation and equal access to the patent application process, the America Invents Act provides that the USPTO should “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” In Minnesota, the LegalCORPS Inventor Assistance Program was co-founded by three Minneapolis firms: Lindquist & Vennum; Meyer & Njus; and Patterson Thuente Christensen Pedersen. (more…)
Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.
1) Deal Book: Research in Motion Projects a Quarterly Loss – In the midst of the mobile technology patent storm, this post highlights what could serve as the impetus behind another set of valuable patents hitting the marketplace: the financial decline of the BlackBerry manufacturer. As Research in Motion is set to announce its second-consecutive quarterly loss next month, this post notes the possibility of, “the licensing of BlackBerry software or “strategic business model alternatives,” an apparent reference to the possible sale of all or part of the company.”
2) IP Watchdog: PTO Proposes Changes to Implement Micro Entity Patent Fees – This post reports on the USPTO’s announcement of a proposed rule change in regards implementing the micro entity provision of the America Invents Act (AIA). The announcement with the Federal Register is titled “Changes to Implement Micro Entity Status for Paying Patent Fees”. The Office seeks written comments no later than July 30, 2012. (more…)