Fee-Shifting Provisions Front and Center in Innovation Act
In April 2014, the United States Supreme Court addressed the issue of awarding attorney’s fees under 35 U.S.C. § 285 to successful litigants in a patent infringement proceeding. The decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was the primary decision simply because that case was treated first by the Court and formed the basis of the Court’s decision in Highmark, Inc. v. Allcare Health Management System, Inc. Essentially, the Supreme Court in these two cases ruled that an appellate court should apply an abuse-of-discretion standard in reviewing all aspects of a district court’s § 285 determination. Those familiar with the abuse-of-discretion standard know that it is a difficult standard of review, which should mean that district courts will have far more latitude to handle attorney’s fee awards without meddling from the Federal Circuit.
After these decisions by the Supreme Court, patent reform died in the Senate after lopsided passage in the House. Politically, and procedurally, the problem for patent reform in 2014 wound up being that the Supreme Court mooted one of the leading drivers of this round of reform — fee-shifting. But that hasn’t stopped patent reform advocates from once again pushing the Innovation Act in 2015, which is identical to the Innovation Act from 2014 that died in the Senate.
Micro Entities do Well in Proposed Patent Fees
At the end of May 2012, the United States Patent and Trademark Office (USPTO) announced a proposed rule change with the publication of a Federal Register notice titled Changes to Implement Micro Entity Status for Paying Patent Fees. The Office seeks written comments no later than July 30, 2012. On September 6, 2012, the USPTO published proposed patent fees in the Federal Register, seeking to set fees for the first time under the authority derived from the America Invents Act.
These fees include micro-entity fees that are steeply discounted over the full fee. Indeed, the proposed patent fees made public for comment on September 6, 2012, significantly raise virtually all fees on small entities and large entities. Only micro-entities see a discount compared to the patent fees charged today. Because all fees across the board have gone up the micro-entity discount, while certainly significant, will not be quite what some were hoping for when dreaming of $.25-on-the-dollar fees based on what the fees are presently.
09.12.12 | posts | Gene Quinn
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) IP Watchdog: Patent Mass Aggregators: The Giants Among Us – Written by guest authors Tom Ewing and Professor Robin Feldman, this post discusses how a handful of entities have amassed vast treasuries of patents on an unprecedented scale. The post points out how it is important to understand the method of organization and the types of activities that are causing a paradigm shift in the world of patents and innovation.
2) Patently-O: New Post Grant Options and Associated Proposed Fees – This post lists the new fees for petition for post-grant opposition or covered business method patent review, a petition for inter partes review, a petition for ex parte reexamination, supplemental examination, derivation, and third party submission of prior art in pending cases. (more…)
02.10.12 | posts | Mark Dighton
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03.6.15 | Patent Issues, Patent Litigation, Patent Reform | Gene Quinn