Although discussing the Patent Transparency and Improvements Act of 2013 in today’s executive business meeting, the Senate Judiciary Committee decided they needed a few more days. The Committee intends to work toward releasing a manager’s amendment next Tuesday, April 8th. Proposed amendments are expected in the coming days and may be posted to the committee web page before Tuesday.
Archive for the ‘Patent Law Reform’ Category
Last week, the Senate Judiciary Committee generally considered bill S. 1720 entitled Patent Transparency and Improvements Act of 2013 but held over the matter for this week. It seems there was a bit of a stalemate on the topic of litigation fee shifting and expansion of the Covered Business Method (CBM) challenge proceeding at the USPTO. Senator Cornyn (R-TX) appeared to be the most vocal. Yet, the Senate seems intent on working out a deal to keep the legislation moving. So, we may see the most recent version of the Bill later this week, further amendments to come when the bill moves to the Senate floor.
This is all despite the fact that the AIA has altered the patent assertion landscape to the point where the USPTO is being criticized for being too effective…..that would have been an April Fools joke a few years ago.
Mark-Up Scheduled for Senate Judiciary Committee March 27th
Senator Leahy will dust off his proposed bill S. 1720 entitled Patent Transparency and Improvements Act of 2013 next week. The Bill has been the subject of fairly intense lobbying over the past few months, stalling the otherwise fast track effort. With the mark-up scheduled for Senate Judiciary Committee consideration on March 27th, it is expected that debate on the revised bill will be pushed for early/mid April.
It will be interesting to see the mark-ups and differences between the initial version of the Bill and its House counterpart (Goodlatte bill) — a veritable patent lobby report card.
With little progress being made in Washington DC these days on hot button issues such as immigration, health care, or debt control, the White House is once again going back to the patent reform well. The latest round of political theater occurred last Thursday when the White House announced yet another round of ”executive actions.” Like the earlier round, these also recycle ongoing PTO programs and initiatives as ”new ideas” of the administration.
The latest initiatives include providing a web page of resources for those facing patent troll suits, a program to encourage the USPTO to “crowdsource” for prior art, and additional seminars for patent examiners to keep them up to date on changes in technology and functional claiming. Of course, the PTO has been cooperating with industry on technology seminars for years, and the peer-to-patent program was introduced in 2007 to leverage crowdsourcing.
As an aside, the PTO now has a page of PTAB decisions on functional claiming, which I find useful.
Last Friday, the Senate Judiciary Committee concluded a round of additional staff hearings on pending Senate Bills S.1720 (Leahy) entitled Patent Transparency & Improvement Act. The hearings focused on the concerns of universities, small inventors, and restauranteurs/retailers with the currently proposed legislation. At the same time, the Committee considered refinements to the Bill, including the value in adopting one or more of the concepts expressed in related Senate Bills 1612 (Hatch), 1013 (Cornyn) and 866 (Schumer).
At the forefront of these deliberations is the concern to balance “unintended consequences” with the goal of eliminating frivolous patent suits, especially those targeting downstream users of off-the-shelf products. With the legislative effort completed in the House by the passage of the Goodlatte Bill, and the Senate coming down the home stretch with their companion bill, president Obama took the bold step of calling on Congress to reform patent law in his recent State of the Union address….you see where this is going.
Last week, the USPTO released a Notice of Proposed Rulemaking (NPRM) entitled Changes to Require Identification of Attributable Owner. The proposals would heap significant new administrative requirements on patent owners in the name of thwarting abusive patent suits. The agency explains the new reporting requirements will, in part, reduce risk of abusive patent litigation by helping the public defend itself against such abusive assertions by providing more information about all the parties that have an interest in patents or patent applications.
The proposal is unlikely to cause any kind of meaningful relief for companies targeted by patent trolls. Unfortunately, this effort is being driven from the White House. The PTO is fully expecting the firestorm that is coming to push back on this misguided mandate….unleash the fury.
The Senate Judiciary Committee will be scheduling additional staff hearings in the coming weeks on the potential impact of the proposed Patent Transparency & Improvement Act. The additional briefings are responsive to concerns of “unintended consequences” expressed during the last hearing, which was held in late December 2013. The additional hearings are expected to explore the concerns of universities, small innovators and new, smaller targets of evolving patent troll tactics.
With the House passing the Goodlatte Bill in short order at the close of 2013, Patent reform remains a hot issue. It is expected that Congress will continue to move forward at an accelerated pace so that some type of “reforms” can be in enacted into law in the first half of 2014. Given the fast track, it seems unlikely that major changes will be made to the Bill at this point in the legislative process.
PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm
As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).
I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.
The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.
Yesterday, the Virginia House of Delegates introduced House Bill No. 375, entitled Bad Faith Assertions of Patent Infringement. The bill tracks, in part, similar consumer protection bills introduced in Nebraska and Vermont. Nebraska has taken the matter a step forward and is now proposing that bad faith letters constitute deceptive trade practices, subject to criminal penalties.
These statutes can complicate matters for the handful of trolls that rely on letter writing campaigns for quick, $10,000 settlements (often mailing hotels and restaurants, claiming to own laser printing and/or basic WiFi concepts). These types of trolls are a relatively recent phenomena.
Meanwhile, the Senate is expected to turn to patent reform this month. As a reminder, with the Innovation Act (HR 3309) passed by the House a few weeks back, the Senate is expected to move forward on the companion bill in a matter of weeks.
Next Tuesday the Senate Judiciary Committee will hold a hearing entitled Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse. The 10 AM hearing will be webcast. A witness list is not yet available. The hearing will focus issues for possible mark up so that the Senate Bill can be fast tracked in early 2014. The Senate effort is expected to track the Goodlatte bill to avoid, or significantly minimize issues for conference.