Patent Law Reform

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Senate Judiciary Committee Releases BillAs I discussed earlier this week, the patent reform debate will begin anew in a matter of days. Today, a bipartisan group of Senators announced their intention to introduce new patent reform legislation when the Senate returns to session next week. The first bill to be introduced on Tuesday (found here),

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Congress Prepares to Tackle Contentious Patent Reform Issues Once More.As Congress begins to finalize key committee assignments and focus on legislative agendas for 2011, patent reform once again finds itself on the “to-do” list. While previous efforts to pass a comprehensive reform bill (S.515 being the most recent incarnation) have been hampered by powerful lobby groups, some genuine optimism seems to exist on the prospect of reform this year. However, the buzz around DC (e.g., last week’s DC Bar program) is that  S.515 will be at least slimmed down, if not broken out into separate bills.One of the more interesting proposals rumored to be under considerationis the creation of a post grant opposition proceeding specifically designed for “business method patents.” (Article 27 of TRIPS be damned?). Other proposals discuss dropping the damages and/or inequitable conduct initiatives altogether as best handled by the CAFC (i.e., Uniloc & Therasense).While staffers have discussed a February timetable for proposals, some bills appear to be targeted for next week (January 24th). Ever the cynic, I am left wondering whether the momentum behind splitting up S.515 into components will result in a Congressional land grab of sorts? Here too, it may be that the “first to file” gets all the glo

As Congress begins to finalize key committee assignments and focus on legislative agendas for 2011, patent reform once again finds itself on the “to-do” list. While previous efforts to pass a comprehensive reform bill (S.515 being the most recent incarnation) have been hampered by powerful lobby groups, some genuine optimism seems to exist on the prospect of reform this year. However, the buzz around DC (e.g., last week’s DC Bar program) is that  S.515 will be at least slimmed down, if not broken out into separate bills.

One of the more interesting proposals rumored to be under consideration…
Continue Reading Patent Reform Buzz Growing

DC Bar Program January 12, 2011Next week the DC Bar Association will host a “Patent Reform Update.” (details here). The panel will discuss the perceived needs for patent reform and the outlook for 2011. Speakers include:Paul R Michel, Federal Circuit Chief Judge (retired) Christal Sheppard, Chief Counsel for Patents and Trademarks and Chief Counsel for

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Intellectual Property Subcommittee Formed

Yesterday, House Judiciary Committee Chairman Elect Lamar Smith (R-Texas) announced the formation of an Intellectual Property Subcommittee. As pointed out last month, patent reform remains high on the Chairman Elect’s agenda.

In explaining the purpose of the subcommittee, Congressman Smith explained (announcement here):

One important change is the…

Change on the Horizon for 2011

With 2010 coming to a close, we can look back and see many positive changes at the USPTO. Ex parte and inter partes appeal brief processing has been streamlined, new user friendly BPAI appeal rules are proposed, new pilot programs are being introduced, and the pendency of reexamination proceedings is slowly improving. (I will post a podcast next week going through the full 2010 retrospective, so cancel those holiday plans!)

Looking forward to 2011 there is still significant uncertainty as to the status of patent reform, at least the kind expected from Congress. Will this be the year that something….anything…..comes out of Congress? Patent Reform is still on the minds of Congress, perhaps more so than in past years as it has the potential to be sold as a no-cost economic stimulus. Yet, courts and the USPTO continue to drive the real change in U.S. patent law, especially as it relates to post grant practice before the USPTO.

So, what can we look forward to in 2011?

Aside from the never ending patent reform drama, the CAFC is slated to decide three important patent reissue cases this year, In re Tanaka, In re Staats, and In re Mostafazadeh. Further, CAFC guidance on the inequitable conduct standard is imminent in Therasense, Inc. v. Becton Dickinson and Co. Meanwhile, the Supreme Court is considering perhaps the most important patent litigation case since Festo in i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp.

Finally, and perhaps of most interest to me, the USPTO is working on a new rules package to overhaul aspects of patent reexamination and patent reissue practice.
Continue Reading Post Grant Expectations For 2011

Detroit_sealass=”alignleft size-thumbnail wp-image-4707″ title=”Detroit_seal” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/12/Detroit_seal-150×150.jpg” alt=”Detroit_seal” width=”150″ height=”150″ />In a teleconference with reporters on Thursday, December 16, 2010, Commerce Secretary Gary Locke – whose department includes the Patent Office – announced that the U.S. Patent and Trademark Office will open its first-ever satellite office in Detroit in the summer of 2011.  Also during this teleconference, it was stated that Detroit will be the first in what could be a few satellite offices scattered around the country (Denver is known to be making a strong push for a satellite office).   The objective of the satellite offices is to increase retention of the examining corps, as well as to increase the number of examiners, as the Office attempts to decrease the ever-increasing backlog of pending patent applications.  According to the Associated Press, officials said Detroit was chosen because of the area’s high percentage of scientists and engineers — many with auto industry background — and the region’s major research universities. Alternatively, PTO insiders indicate that Detroit already has a Department of Commerce facility that helps sidestep congressional red tape. (besides, no point having examiners distracted by competitive baseball and football teams, works in DC after all)
Continue Reading USPTO to Open Satellite Office in Detroit

Cert Granted Today on Important Patent MatterSeems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision. Not surprisingly, Microsoft’s petition seized upon this issue, noting:The Federal Circuit’s longstanding rule that a challenger must prove its invalidity defense by clear and convincing evidence even “when prior art is presented to the court which was not considered by the PTO,” Uniroyal, 837 F.2d at 1050—which is to say, whether or not the PTO was aware of the prior-art evidence when it issued the patent—cannot sensibly be reconciled with this Court’s statement that the “rationale underlying the presumption . . . seems much diminished” when a defense of invalidity is based on evidence that the PTO never considered, KSR, 550 U.S. at 426.While recent cases such as Bilski and KSR presented important questions of U.S. patent law, this case may have a more far ranging impact on the U.S. patent system. Will the Supreme Court pronounce a dual standard for district courts depending upon whether the art was previously considered? Will a changing in standard further bury the USPTO in IDS filings?  What does “not considered by the USPTO” mean?Will every current defendant seek to have ongoing district court validity determinations held in abeyance/stayed until after this ruling? What will this mean for patent reexamination which already offers the lower standard to defendants, and what if any congressional intent is demonstrated by the existence of the patent reexamination statutes? Does the standard really need to be changed in light of current administrative options?  Stay tuned.

Seems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.

Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision.
Continue Reading Supreme Court to Hear Arguments in Microsoft/i4i Dispute

Bipartisan support and economic spin keep hope alive. With all of the change brought by last Tuesday’s elections, the mandate to Congress has been made quite clear. Namely, the American public is expecting less government spending, an improved economy, and lower taxes (amen). Due to the significant shake up, one is left wondering what if any impact these personnel changes will have on everyone’s favorite never ending legislative saga….that is, patent reform.One notable change is that now that the GOP controls the House, the chair of the Judiciary Committee will shift from Rep. John Conyers (D-Mich.) to Rep. Lamar Smith (R-Texas). Earlier this week, Congressman Smith outlined his agenda. High on his agenda was, well, you guessed it………Congressman Smith characterized the patent reform pending legislation as:Nearly 30 percent of American workers are found in intellectual property industries such as health care, entertainment, renewable energy and information-technology.  Patents protect this intellectual property and encourage the creativity and innovation that generate jobs and increase productivity.The theft of intellectual property costs Americans billions of dollars and thousands of jobs.  When inventors and businesses invest in research and development that result in patents, they have the right to benefit from their efforts.  The American economy benefits too by the jobs these patents create.We need to improve our patent system to better protect intellectual property and help ensure that good patents are approved more quickly.  There is bipartisan support for much-needed revisions to our patent system, which has not been significantly updated in over half a century.Patent reform appears to have bipartisan support, and can be sold to the public as a form of economic stimulus. It is very unlikely we will see it this year….but you can bet it will be sold to us, in some form, next year….but then again, we have been saying that for many yea

With all of the change brought by last Tuesday’s elections, the mandate to Congress has been made quite clear. Namely, the American public is expecting less government spending, an improved economy, and lower taxes (amen). Due to the significant shake up, one is left wondering what if any impact these personnel changes will have on everyone’s favorite never ending legislative saga….that is, patent reform.

One notable change is that now that the GOP controls the House, the chair of the Judiciary Committee will shift from Rep. John Conyers (D-Mich.) to Rep. Lamar Smith (R-Texas). Earlier this week, Congressman Smith outlined his agenda. High on his agenda was, well, you guessed it…………
Continue Reading Patent Reform Still on the Table

Tax Group Seeks Special Legislation Banning Tax Strategy PatentsAs if the prospects of any meaningful patent reform this year weren’t dim enough, another special interest group has joined the fray. Yesterday, the AICPA sent a letter to Congress (here) urging the enactment of legislation banning tax strategy patents. The letter states that even though consideration

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