On April 18, 2007, bipartisan legislators in both the Senate and House of Representatives introduced sweeping patent reform measures in legislation termed the Patent Reform Act of 2007. The reform measures include the following provisions:
- First-to-file rights and elimination of interference proceedings;
- Reform to make it easier to file a patent application without the inventor's cooperation;
- Limitation of damages to only the economic value of the improvement as compared to the prior-art;
- Specific limitations on when damages may be trebled for willfulness;
- Post-grant opposition proceedings and a reduction in the litigation estoppel effect of reexaminations;
- Limitations on patent venue;
- Authority to the PTO director to create further regulations.
Although couched in terms of the importance of patents and patent quality. The thrust of many of the measures are clearly directed at "limiting litigation abuses." The two versions (Senate and House) are appear virtually identical in substance.
Analysis:
- Inter Partes Reexamination: Many patent litigators have warned clients against filing inter partes reexamination requests because of the litigation estoppel created by by 35 USC 315(c). That provision estopps later validity challenges on grounds that a third party "raised or could have raised" during the reexamination. The Patent Reform Act would limit the estoppel to only issues actually raised -- striking the "could have raised" language.
Legislative Documents:
- Download SENATE Version of the Bill (S.1145).
- Download HOUSE Version of the Bill (H.R.1908).
Congressional Players:
- The Senate version was introduced by Senators Leahy, Hatch, Schumar, and Cornyn
- The House version was introduced by Representatives Berman, Smith, Conyers, Coble, Boucher, Godlatte, Zoe Lofgren, Issa, Schiff, Cannon, and Jackson-Lee
Lobbying Players:
- www.innovationalliance.net (Tech Companies who want strong patents)
- www.ipo.org (Industry group -- Formerly supported strong IP rights -- now a consensus builder -- noting that "the battle-of-the-industries description of patent reform is simplistic and sensationalist.")
- www.phrma.org (Big Pharma: Strong patent rights)
- www.patentsmatter.com
- www.patentfairness.org ("Over-broad patent grants stifle future innovators, while unjustified lawsuits that aim to extort settlements")
- www.aipla.org (Group of lawyers who are, for the most part, unwilling to take a stand)
- www.bsa.org (Microsoft, Apple, HP -- all supporting dramatic patent reform that curbs litigation in favor of the more genteel cross-licensing).
Who is writing about patent reform:
News & PR:
- Nothing Cash Can't Cure (IP Law & Business by John Bringardner)($$$)
- BIO Expresses Concerns Regarding New Patent Reform Legislation (PR)
- Coalition for Patent Fairness Supports Introduction of Bipartisan, Bicameral Patent Reform Bills (PR)
- Apple among supporters of new patent reform bill (PR)
- BSA Applauds new Reforms (PR)
- Patent Reform May have a Chance (AP Report)
Call for Papers:
- I would like to publish a couple of well written editorials on patent reform within the next two weeks. Feel free to submit yours to dcrouch@gmail.com.
