Patent Law Practice Center

Are Additional Patent Reforms Necessary?

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?

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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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