Patent Reform Opponents Send Letter to President Obama

Well, that surely didn’t take long.

Gene Quinn, at IPWatchdog.com, points to a letter sent to President Obama (PDF) from over 130 manufacturing companies located in the United States urging the administration to shelve patent reform.  In the letter, the parties clearly articulate their concerns about patent reform “proposals” that have been floated and the perceived consequences to manufacturing employment and competitiveness.

While there is some ambiguity out there about President Obama’s plans and priorities regarding patent reform (although, he did mention the awful “gold plated” scenario) – I think it is probably too early to read tea leaves.

Labor unions and traditional Democratic labor groups backed the campaign and election efforts in unprecedented ways and they will have a significant voice and influence at the negotiating table – a position that may have been somewhat discounted in the previous administration.  Considering labor’s opposition to patent reform in 2007, President Obama’s “perceived” willingness to push patent reform should not be taken for granted by his high technology/software supporters.

It appears that the manufacturing letter may be the first salvo to remind President Obama of the strength of support he received from labor and the manufacturing sectors.  I would predict that similar letters in support of patent reform will be forthcoming from the Coalition of Anti-Patent This and Coalition of Anti-Patent That. (Did that last sentence tip off my personal opinion of the matter?)

One question I do have – does anyone really think these letters are useful?  My guess is that 5-10 letters written by constituents are more important to the vast majority of members of Congress than a form letter signed on by a couple hundred interested parties.  But then again, I am a fan of “Mr. Smith Goes to Washington.”

Who will have the administration’s ear?  My best guess – no one.  In the face of the overwhelming challenges facing the country this year and the relatively low profile of patent reform, I would bet that patent reform is dead for serious consideration in the 111th Congress.  If I am wrong – I’ll buy you a beer if you ask.  Catch is – you have to come to Oklahoma City to collect.

Turning away from WAGs, Gene does an excellent job excerpting the manufacturers’ concerns and the jostling for position that the different patent reform stakeholders are engaged.  Highlights include:

• “A recent study focusing on the impact of apportionment legislation estimates that this change alone would put at risk up to 298,000 manufacturing jobs and reduce R&D investment by up to $66 billion.  This would be a negative outcome even when our economy is strong; at a time of economic crisis, it would be tragic.” 
   
• “We feel strongly that the prosperity of a few companies within two industries should not come at the expense of a larger group of stakeholders.”  
   
• “[T]here is no explosion in patent litigation. In 1993, lawsuits were 1.45% of patents granted. In 2007, lawsuits were 1.48% of patents granted. The number fluctuates from year to year, but it has never indicated a system out of control. (Source: USPTO Annual Reports, Federal Judicial Statistics)”  
   
• “[T]here is no explosion in patent damage awards. Adjusting for inflation, the median annual patent damages award has actually dropped slightly over the last 13 years. In constant dollars, the median was $3.9 million from 1995 through 2000, and $3.8 million from 2001 through 2007. (Source: 2008 Patent Litigation Study, PriceWaterhouseCoopers.)” 
   
• “It is crucial to remember that patent damages are imposed only after patent validity and infringement are determined on the merits. In other words, those paying damages have been found to have unlawfully used intellectual property belonging to someone else.”  
   
• “It would be a terrible mistake to allow the increase in patent applications to become an excuse to undermine patent protections. Rather, Congress should take advantage of Americans’ growing desire to invent by ensuring that the U.S. Patent and Trademark Office (”USPTO”) has the resources and management to handle the increased number of applications in a thorough and timely manner.”  
   
• “The legislation introduced in the 110th Congress dealt with patent issues on the back end rather than the front end, i.e., it attempted to deal with the symptoms of poor patent quality and growing pendency rather than addressing these issues directly. Many of the problems identified by legislative reform proponents as reasons for such reforms are best addressed instead by reforms of USPTO operations.” 
   

A few other patent blogs have taken a stab at the proverbial crystal ball gazing as to President Obama’s intentions – Patent Baristas, Patently-O, and PatentHawk, for example.  One, two, many, none, or all of us may be wrong/right. 

What do you think?  I would love to hear your thoughts/comments.

Posted by Douglas Sorocco, February 10, 2009 at 10:07 pm
Permalink: Patent Reform Opponents Send Letter to President Obama
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Round 2 – Part 3 – Review of the New Continuation Rules

As you may or may not already know, on November 1, 2007, the USPTO’s new claims and continuation rules become effective.  The new rules change various aspects of continued examination filings, requests for continued examination, and divisional filings.  This post covers the key rule changes regarding to related applications.   

I digress, before reading the rest of this article, think of the great song of the late 70s, We are Fa-mily, I got all my sistas with me!  We are Fa-mily, get up ev-rybody and sing!  It sets the tone for the remainder of this article since this post discusses patent Fa-milies.   

According to the new rules, an applicant must identify other pending and issued patents within its patent family.  This means, the applicant must identify patents that:

1. Other commonly owned applications  -OR-
2. Patents that have:

1. an inventor in common with the application; and
2. a filing date within 2 months of the filing date of the application.

1. Are commonly owned,
2. have an inventor in common with the application; AND
3. have a priority date within 2 months of the priority date of the application. 

Also, the new rules state that a rebuttable presumption exists that the application contains at least one claim that is not patentably distinct from at least one of the claims from its patent family if the related family patent:

1. has an inventor in common with the application
2. has a claimed filing or priority date that is the same as the claimed filing or priority date as the application; and
3. has substantial overlapping disclosure with the application. 

Where there is a rebuttable presumption, the applicant must:  

1. rebut the presumption that the claims are not patentably distinct by explaining how the application contains only patentably distinct claims
   -OR-
2. submit a terminal disclaimer. 

For additional information click here.  Also click here for a chart detailing the rule changes to “Commonly Owned Applications and Applications Containing Patentably Indistinct Claims”.

Posted by Douglas Sorocco, September 26, 2007 at 1:47 pm
Permalink: Round 2 – Part 3 – Review of the New Continuation Rules
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round 2 – continuation and claim rule review – part deux

As the dust settles on the patent frontier, I bet every patent attorney/inventor/corporate counsel/law student is sitting at their desk reading and re-reading the USPTO rules.  Lucky for you, this week we are providing the key highlights via PHOSITA.  Today’s topic….claims and the dreaded Examination Support Document (ESD).

Claims

We heard the rumors out of the USPTO that patent applications would be limited to ten claims.  The good news – the USPTO did not stick with the 10 claim rule.  The bad news – you are now limited to 5 independent claims and 25 total claims (5I/25T) per patent application without an ESD.  If you happen to file a patent application exceeding the 5I/25T rule without submitting an ESD, the USPTO will send you a nice little notice requesting you either amend the claims for compliance or submit the ESD within 2 months. 

These new rules give you a couple of options in claim drafting.  The easiest solution is to not exceed the 5I/25T rule when you file your application.  Boring.

For the brave at heart, you can jack up the number of claims that you file, exceed the 5I/25T rule, and then submit a suggested restriction requirement (assuming you can) selecting without traverse 5 independent claims and 25 total claims.   Withdrawn claims are not counted in your 5I/25T.  Hopefully the Examiner agrees with your suggested restriction requirement or you may have a little problem getting a refund on the claims you withdraw/cancel.  (Watch out for the section on refunds due to cancellation of claims – Section 1.117). 

For the loonies out there, go ahead and exceed the 5I/25T rule without a suggested restriction requirement, but be prepared for the monster – the dreaded ESD.

The Dreaded Examination Support Document

Starting November 1st, the ESD rule applies to applications exceeding 5I/25T that have yet to receive the first Office Action.  An ESD includes the following:

• a statement that a preexamination search was conducted;
• a listing of the references deemed most closely related to the claims;
• identification of all of the limitations of each of the claims that are disclosed by each reference (OUCH) (Note – there is a small entity exception to this Rule – see Comments);
• a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references (DOUBLE OUCH); and,
• a showing of where each limitation finds support in the written description of the specification (TRIPLE OUCH).

My guess is that the ESD is probably not on the top ten list of things a patent attorney would like to file.

Posted by Douglas Sorocco, September 25, 2007 at 12:24 pm
Permalink: round 2 – continuation and claim rule review – part deux
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Patent Reform Act of 2007 – Part 4

You are no doubt on the edge of your seat waiting to see what other changes are in store if the Patent Reform Act of 2007 is enacted.  Well, wait no longer, this blog post brings to you not one, but two more proposed changes to the current Patent System:  (1) Prior User Rights and (2) Best Mode Requirement Violations. 

You might be asking yourself, “Self, what are prior user rights?”  Well, prior user rights (also called the first inventor defense) stem from 35 U.S.C. § 273.  Currently, 35 U.S.C. § 273 provides a limited defense for actions that would normally constitute infringement if the person “actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.”  The defense is narrowly tailored so that “[a] person may not assert the defense under this section unless the invention for which the defense is asserted is for a method.”  In other words, the defense is limited to business method patents. 

After the State Street Bank decision, the USPTO experienced a huge surge of business method applications as well as a huge lack of adequate prior art to judge the novelty and obviousness of these applications.  Consequently, litigation erupted and the prior user defense was enacted to remedy the effects of the enforcement of poor-quality business method patents.   

The Patent Reform Act proposed to widen the scope of the prior user defense by eliminating the business method patent limitation so that users of all types of inventions would have been able to use the defense.  But as amended and passed, the legislation does not include any such changes to the prior user defense.  Instead, the legislation requires the USPTO to prepare a report for Congress detailing their findings and recommendations on the operation of prior user rights in several selected countries. 

The Patent Reform Act, if enacted, would also affect violations of the best mode requirement.  What is the best mode requirement, you might ask.  Well, funny you ask, because I just so happen to have a brief explanation.  Currently, under 35 U.S.C. § 112 a specification must, among other elements, “set forth the best mode contemplated by the inventor of carrying out his invention.”  Under the current law, a defendant in an infringement action could assert invalidity as a defense if the patentee failed to set forth the best mode of carrying out his invention.  35 U.S.C. § 282(3). 

But according to the Judiciary Committee Report there were several problems involved in litigating violations of the best mode requirement since it is so subjective.  So the Patent Reform Act amended the defenses available to potential infringers by making failure to meet the best mode requirement unavailable as a defense to infringement.  Now, the Patent Reform Act, if enacted, replaces Section 282(3) and states that invalidity of a patent or failure to comply with any requirement of Section 112 “other than the requirement that the specification shall set forth the best mode contemplated by the inventor of carrying out his invention” is an available defense. 

Posted by Douglas Sorocco, September 20, 2007 at 4:11 pm
Permalink: Patent Reform Act of 2007 – Part 4
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Labor unions join patent reform fight

This news report surprised me as I had never given much thought to the impact patent reform might have on the types of interests represented by Labor Unions.  But it makes sense.

The U.S. patent system provides a barrier to entry for “knock offs” of successful technologies and, as stated below, a large percentage of patents are issued for inventions covering improvements to manufactured goods.  Items that are highly susceptible to production offshore and imported into the U.S. 

According to the AFL-CIO:

But the AFL-CIO letter alluded to recent efforts of the U.S. government and the U.S. tech industry to prod China to strengthen its intellectual property protections. These two changes “may have a negative impact on innovation and research,” the AFL-CIO letter said.

“At a time when the Chinese government is constantly being challenged to live up to its intellectual property obligations, we do not want to take actions that may weaken ours.” The United Steelworkers letter said nearly 70 percent of patents filed in the U.S. come from manufacturing firms. “These bills would allow an endless loop of legal challenges after patents are awarded that will make it more difficult for U.S. patent holders to prevail against frivolous challenges,” the letter said.

Patent reform is truly making some odd bedfellows these days.

Via Labor unions join patent reform fight – addict3d.org.

Posted by Douglas Sorocco, August 24, 2007 at 7:29 pm
Permalink: Labor unions join patent reform fight
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Herring and Patents – And no, I don’t mean fish.

The other day I mentioned a chart from the Economist outlining the largest patent granting countries – with Japan coming out on top.

The Intellectual Asset Management Magazine also picked up on the online chart and added some additional thoughts to the debate concerning software patents.  They posit that it is the certainty of the legal protections afforded rather than the existence of protection for information technology that ensures a competitive industry.  In other words, patent protection for software is a debate that has little, if anything, to do with maintaining open and competitive IT industries.

Some food for thought…

Is the software patent debate a red herring?

That said, the EIU sees the legal infrastructure in a country as being much less important than other factors, such as IT infrastructure, human capital, R&D environment and support for IT industry development. Of course, it could be that all of these are actually affected by the IP infrastructure of a country (in other words, for example, maybe a company is more likely to invest in R&D or to attract funding for R&D, if the right IP protection is available); but it could also well be that, if the EIU is right, the vitriolic nature of the debate around software patents is actually little more than hot air because, in the end, as long as there is legal certainty – of whatever kind – other factors are far more important in ensuring strong competition in the IT industry. (Emphasis added)

Posted by Douglas Sorocco, August 5, 2007 at 9:15 pm
Permalink: Herring and Patents – And no, I don’t mean fish.
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Patent Reform – Getting Ready for the August Recess

Patent reform is the buzzword around the patent world right now and, for once, the news is not limited to geeks, wonks and inventors.  The mass media appears to have gotten the “patent reform” bug as well – although, it appears that the “fixing the ridiculous” meme is taking hold. 

For example:

Congress tackles patent-law reform — via the baltimoresun.com

WASHINGTON – Crustless peanut-butter-and-jelly sandwiches, a way to move sideways on a swing, a technique for exercising cats using a laser pointer – these are among the inventions patented in the United States over the years.

Now Congress is trying to cut down on poor-quality or downright ridiculous patents, and at the same time adapt the patent system to a high-tech era in which computers and other electronic devices might contain thousands of patentable parts.

We will be exploring all things patent reform here at Phosita during the month of August, so send us your stories, frustrations and rumors.  Of course, we will not reveal your name, slant or employer – so, send it to:  douglas.sorocco+reformtip@gmail.com

See you in August!

Posted by Douglas Sorocco, July 29, 2007 at 9:12 pm
Permalink: Patent Reform – Getting Ready for the August Recess
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Nope… There is no ‘Official’ Policy

Of course the PTO has no ‘official policy’ relating to the dis-allowance of patent applications.  It is merely coincidence that the number of allowances have plummeted …. while the “backlog” continues to grow…

Anyone have a FOIA form handy? 

Discussion:  Matt Buchanan on “Rethinking Backlog”

Posted by Douglas Sorocco, February 12, 2007 at 8:30 pm
Permalink: Nope… There is no ‘Official’ Policy
6 Comments

The Resolution(tm) — a new Fedcirc.us Product

FedCirc.us (Matt/Steve/and I) announced earlier today the availability of a free preview issue of The Resolution, the inaugural issue of our quarterly magazine, The FedCirc.us Reader.  Download the .pdf here.

According to Matt:

The Resolution will give you a sneak-peak at the features of the magazine.  It’s jam-packed with all sorts of patent-caselaw goodness, including a ‘Trend Spotting’ article, a featured case review, prosecution- and litigation-focused digests, chronological and alphabetical listings of cases from last quarter (including summaries), and a fun “Quotables” section that includes some of our favorite quotes from cases issued during last quarter.

For this issue, we’ve even included a brief note about the story behind the FedCirc.us name and domain.

We think you’ll agree that the magazine is an exciting and effective new tool for staying current on patent caselaw developments.

Of course, the free preview issue includes subscription details for the magazine.  The site will be ready to accept subscription payments starting tomorrow.

Please download our first copy and let us know what you think.

Posted by Douglas Sorocco, January 31, 2007 at 10:20 am
Permalink: The Resolution(tm) — a new Fedcirc.us Product
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Continuation Rule Implementation May be Delayed til 2007

As many readers know, the U.S. PTO has been pounding its chest over the past year with threats of implementing a draconian and, as believed by many, unconstitutional rule limiting the availability of continuation applications.  Matt has a couple of great posts on the subject of the ‘continuation rule’ over at Promote the Progress.

According to a news blast from Hal Wegner this morning, a reliable source has informed him that the implementation of the rule may be delayed into 2007 and possibly killed altogether. 

Specifically, according to Hal:

An always previously reliable PTO official has stated that the dreaded, notorious “continuation rules” package is hung up within the PTO with uncertain implementation. Per this official, the continuation rules, if implemented, will be significantly delayed well into calendar year 2007.

The information has been provided by Leon Radomsky, Chair of the AIPLA Chemical Practice Committee, in his notice of the meeting later this week in Washington, D.C. The relevant information on the continuation rules has been highlighted in red.

Rob Clarke noted at the beginning of the meeting that the proposed rule changes regarding Continuations and Representative Claims are still being considered, that more comments were filed in response to these rules than ever before, and that if they do decide to go forward with the rule changes, they have to be submitted through a special rulemaking procedure because they are substantive rule changes.  That internal administrative review will take at least 90 days, and the result may be a refusal to allow the rules to go forward.  And after that, it will be at least another 30 days before the rules become final.  Rob Clarke did state that he expects the IDS rules to come out before the continuation and representative claims rules.

If any reader has any additional information – please post in the comments or send to me via an email —– your anonymity will be safe with us.

Posted by Douglas Sorocco, October 17, 2006 at 9:01 am
Permalink: Continuation Rule Implementation May be Delayed til 2007
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