Patent Law Practice Center

A patent reform conversation with Senator Coons and Congressman Massie

On Wednesday, October 7, 2015, I moderated a live Google Hangout with U.S. Senator Chris Coons (D-DE) and Congressman Thomas Massie (R-KY). The conversation took place in Senator Coons’ office in the Russell Senate Office Building in Washington, DC. Our conversation, hosted by the Innovation Alliance’s save the inventor campaign, focused on the major pending patent reform bills – the Innovation Act (H.R. 9) in the House of Representatives and the PATENT Act (S. 1137) in the Senate.

The first question I posed to Senator Coons and Congressman Massie was a broad-based, philosophical question. Unlike with virtually all other issues, patent reform is not a partisan political issue. Allegiance does not break down along party lines, but rather seems to depend philosophically on whether the individual believes patents promote innovation or whether patents hinder the progress of innovation. To start, I asked that simple question. Do patents promote or hinder innovation?

Senator Coons, who is a believer in s strong patent system, didn’t directly answer the question presented, although he did acknowledge that the question is “whether or not you think patents are essential and being able to defend those patents are essential to the vibrancy of our innovation system.” While he did not specifically say that he thinks patents are essential in this exchange, Senator Coons is on record with such views in many different forums. He is also the author and primary sponsor of the STRONG Patents Act, which presents an alternative patent reform that is widely recognized as being pro-patent and pro-innovator.

Coons, who spoke without notes and in a way that demonstrates a deep understanding of the issues, continually reiterated the need for patents to be defendable in court. He said, for instance:

Common across the advocates for a strong patent system in the House and the Senate is a profound belief that this constitutionally created and vital property right has to be defensible…that patent litigation has to remain capable of defending unique inventions, thus the Save the Inventor campaign. And those who are advancing the bills both in the House and the Senate that would change the patent litigation system are gravely concerned about what they view as so-called patent trolls and in the only hearing that we had in the Senate Judiciary Committee to discuss the bill in the current Congress, they really focused in on abusive patent litigation practices that do exist and that are a problem, but that I think can be dealt with more narrowly in a more focused and targeted way that just deals with abusive litigation practices…

On the issue of whether patents promote innovation, Congressman Massie’s response was hardly surprising to anyone familiar with the patent debate and Massie’s history. Massie is an inventor and one of only a few members of Congress to be a patent owner. He comes by his deeply rooted opinions out of experiences as an inventor and struggling entrepreneur. He said:

Well, you don’t have to believe or not believe, right? We’ve got 250 years of history in this country of innovation and we have the most innovation because we have the strongest patent system. The deal that our founding fathers gave us that was different from all the European models was what you create you own. And the charge that our Founding Fathers gave us in Congress was to promote the useful arts and sciences by granting for a limited period of time the exclusive use of an inventor’s works. So what we have to do is to decide, within that charter, how do you promote useful arts and sciences, and for what period of time? There are some people that believe that zero period of time is the correct period of time. That does not work.

Massie would then pivot to explain his own story, which is a very familiar story of an inventor starting from nothing to create a business built on the back of patented technology. Massie explained:

I’m not a lawyer, I’m an engineer. I went to MIT and I studied electrical and mechanical engineering because I love creating and right there in the laboratory and in the labs next to me people were inventing stuff all of the time and the great thing about being there in that hotbed at MIT is everybody wanted to start a company and the way you started a company was you had to go get capital and nobody was going to invest unless you had some intellectual property. So my startup that I spun out of MIT, my wife and I…we started right there in a married student housing dormitory…was licensed from MIT, from the Technology Licensing Office. Then, we went out and got venture capital and they believed in us and they knew we had a chance, but we had this limited period of time to get a return on that investment before the invention became public domain. That’s the great thing about patents. The deal you make with society is I’m going to tell you everything about how to copy this idea, and when my exclusivity lapses, everybody in the world can have it.

The entire video is available via YouTube. For a more complete transcript, please visit IPWatchdog.com.

 

PATENT Act passes the Senate Judiciary Committee

After a three-hour hearing held by the U.S. Senate Committee on the Judiciary, S.1137, the proposed legislation known as the PATENT Act, was approved to move to the floor of the United States Senate by a 16-4 vote of the Senate committee.

Ahead of the committee’s consideration of the bipartisan Act, Senate Judiciary Committee Chairman Chuck Grassley, Ranking Member Patrick Leahy, and Judiciary Committee members John Cornyn, Chuck Schumer, Orrin Hatch, Mike Lee and Amy Klobuchar released a managers’ amendment, which was approved by the Committee. The managers’  amendment includes technical changes, as well as provisions to address concerns regarding post grant review proceedings.

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First to File and the Patent Act of 1790

The United States Constitution is a relatively short document, but one that has provided guiding principles for over 220 years.  Article I, Section 8 of the U.S. Constitution granted Congress the power to grant patents and copyrights for limited times in order to promote the progress of science and the useful arts.  Clearly demonstrating just how important the Founding Fathers perceived a patent system to be, at the prompting of George Washington in his first State of the Union Address, the young Congress passed the the Patent Act of 1790 as the third Act of Congress.

Section 1 of the Patent Act of 1790 explained that a party would be awarded a patent in the event that it was deemed a sufficiently important discovery or invention:

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That upon the petition of any person or persons to the Secretary of State, the Secretary for the department of war, and the Attorney General of the United States, setting forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used, and praying that a patent may be granted therefor, it shall and may be lawful to and for the Secretary of State, the Secretary for the department of war, and the Attorney General, or any two of them, if they shall deem the invention or discovery sufficiently useful and important…

Patent Act of 1790, Ch. 7, 1 Stat. 109-112 (April 10, 1790).

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Amici Argue For Supreme Court Review Of The Indefiniteness Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor)

Last Thursday, Mark Lemley and I filed an amicus brief urging the Court to take certiorari in Applera v Enzo Biochem for the purpose of reviewing the test for when a claim is indefinite under 35 USC 112, Para. 2.   The brief (which is available here) was signed by an array of innovative companies.

The Patent Act requires claims to be “distinct” and “particular” in terms of calling out the subject matter of the claimed invention.  The purpose of this requirement is – not surprisingly – to put the public on notice of what the claims do and do not cover.   See Hearing Components, Inc v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (“the purpose of the definiteness requirement is to ensure that ‘the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee’s right to exclude.”).

In other words, the Patent Act requires claims to be definite precisely so that people reading the patent know what rights have been claimed by the patent owner and what rights are still available.  Permutit Co. v. Graver Co., 284 U.S. 52, 60 (1931) (“[t]he statute requires the patentee … to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.” ) (more…)

Navigating the Best Mode Requirement

            The Patent Act provides that the patent specification “shall set forth the best mode contemplated by the inventor of carrying out his invention.”[1]  This requirement, also known as the best mode requirement, is in essence a quid pro quo with the inventor.  In return for granting the right to exclude others from making or using a patented invention, the inventor must disclose or conversely not conceal from the public the preferred embodiment.  But, what constitutes the preferred embodiment, how much information actually needs to be disclosed, what can be withheld and what happens when the inventor is not aware of the best mode?  The recent case law provides some answers to these questions, but also raises other concerns, especially as we enter the brave new era of biosimilars and the inevitable wave of litigation that will likely ensue.

            In order to satisfy the best mode requirement, the inventor must disclose the preferred embodiment of his invention as well as any preferences that could materially affect the invention.[2]  The first step in a best mode inquiry begins, as is always the case with patent law, with the claims.[3]  This past March the Federal Circuit handed down a decision in Ajinomoto Co. v. ITC where the scope of the claims created a problem for the inventors.[4] (more…)