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?

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Patent Reform Passes in House of Representatives

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.

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Minnesota Pro bono Program Yields First Patent

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…)

Top 5 Patent Law Blog Posts of the Week

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…)

Top 5 Patent Law Blog Posts of the Week

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) Patently-O: Overlapping Copyright and Patent Rights – This post takes a look at the Oracle v. Google (N.D. Cal. 2012) and how Oracle has argued that Google’s actions constitute both copyright and patent infringement  as the court considers whether Google improperly relied on Java OS code when developing its Android operating system.

2) Patent Docs: Otsuka Pharmaceutical Co. v. Sandoz, Inc. (Fed. Cir. 2012) – Following the Federal Circuit’s decision in Otsuka Pharmaceutical Co. v. Sandoz, Inc., this post provides an explanation of what makes a new chemical compound prima facie obvious, and the differences between obviousness and obviousness-type double patenting for a chemical composition-of-matter invention.

3) IP Watchdog: Patents World-Wide: Deciding Where to Pursue Patent Rights – This post discusses the means through which a company pursue patent protection around the world. The Patent Cooperation Treaty  and popular countries to get patent protection are highlighted, as is the impact of filing international patent applications via these different means. (more…)