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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DJ Action Dismissed – 1st Post MedImmune
In what appears to to be the first dismissal of a declaratory judgment action post the Supreme Court’s decision in MedImmune, a court in Minneapolis dismissed two counts seeking declaratory judgment of non-infringement and invalidity (Case 08–cv-00816).
According to the ruling:
“However, although MedImmune lowers the bar for declaratory judgment jurisdiction, a substantial controversy is still required. In the post-MedImmune authorities relied on by[Plaintiff], a patentee has either demonstrated a preparedness to litigate against the prospective declaratory judgment plaintiff, accused the prospective declaratory judgment plaintiff of infringement, affirmatively asserted its rights to license fees, or engaged in some combination of all three. For example, in Micron Technology, Inc. v. MOSAID Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008), …
Under these circumstances, the Federal Circuit found that the record demonstrated a “substantial controversy” between the parties under the MedImmune standard.” (Emphasis added).
The instant case is distinguishable because [Defendant] has not demonstrated an intent to litigate against [Plaintiff], has not accused [Plaintiff] of infringement, and has not demanded licensing fees. There is no evidence that [Defendant] has pursued litigation against [Plaintiff].
Considering all the circumstances, the Court finds there is no substantial controversy regarding the … Patent supporting declaratory judgment jurisdiction. Specifically, [Defendant] has not yet established any position on whether [Plaintiff] infringes the ‘356 Patent. [Defendant]’s letter to Plaintiff was a means of gathering information regarding potential infringement, not an assertion of an already determined legal interest adverse to [Plaintiff]. Therefore, because the parties have not established positions of adverse legal interests, there is no substantial controversy regarding the ‘356 patent. Accordingly, this Court does not have subject matter jurisdiction over Counts II and III of [Plaintiff]’s Complaint.
A copy of the decision in PDF format can be found by clicking the link (Dismissal Order (26 KB)).
Posted by Douglas Sorocco, August 8, 2008 at 10:14 am
Permalink: DJ Action Dismissed – 1st Post MedImmune
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why has the us supreme court been so interested in patent cases?
One answer may be business …
It may be an interesting coincidence, but I dare you to read the linked article from the NY Times about the Supreme Court and its seemingly pro-business rulings of late, and substitute the word “patent” for “business” ….
Though the current Supreme Court has a well-earned reputation for divisiveness, it has been surprisingly united in cases affecting [business] Patent interests. Of the 30 [business] Patent cases last term, 22 were decided unanimously, or with only one or two dissenting votes.
In opinions last term, Ruth Bader Ginsburg, Stephen Breyer and David Souter each went out of his or her way to question the use of lawsuits to challenge corporate wrongdoing — a strategy championed by progressive groups like Public Citizen but routinely denounced by conservatives as “regulation by litigation.” Conrad reeled off some of her favorite moments: “Justice Ginsburg talked about how ‘[private-securities fraud actions] Patent Litigation, if not adequately contained, can be employed abusively.’ Justice Breyer had a wonderful quote about how Congress was trying to ‘weed out unmeritorious [securities lawsuits] Patents.’ Justice Souter talked about how the threat of litigation ‘will push cost-conscious defendants to settle.’ ”
Is it just me?
Supreme Court Inc. – New York Times.
Posted by Douglas Sorocco, March 18, 2008 at 10:03 pm
Permalink: why has the us supreme court been so interested in patent cases?
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pto website finally updated
Well, it looks like the USPTO finally updated the front page “news” on their website. I took some time off watching it to help the trick or treaters out, so I am not sure what time it officially “went live”.
So – kudos to the USPTO for taking approximately 7–8 hours to get notification up about the injunction to the patent community.
So – patent community, 7–8 hours. WSJ – almost instantaneous reaction.
Posted by Douglas Sorocco, October 31, 2007 at 7:13 pm
Permalink: pto website finally updated
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pto official communication to examining corps
Well – it appears that the USPTO has sent around a memorandum to the entire examining corps informing them of the injunction.
If you want to see the document, click here: PTO Notice.pdf (973 KB).
Fairly routine and it doesn’t convey much information… but, it is now 6:10pm Eastern Time and still no word or information to the patent community.
No email.
No website information.
No phone call.
You would think they didn’t want people to know.
Posted by Douglas Sorocco, at 5:11 pm
Permalink: pto official communication to examining corps
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2:47pm Eastern – Why no news from USPTO?
Hmmm…. As Steve, Matt and I have been noticing – it is 2:47pm Eastern time and the USPTO website still has no news relating to the injunction issued this morning.
They, of course, still have up the warning about the Nov. 1st implementation from last week but they apparently cannot update the website with the news that they lost and the rules will not go into effect tomorrow.
What ever are they waiting for?
Update: 4:47pm Eastern – Still no word.
It is coming up on the close of the business day at the USPTO and there is still no word on the front page of the USPTO’s website allerting patentees that the Nov. 1st implementation of the rules has been enjoined.
No email.
No website.
No phone call.
As the administrator of the entire patent system in the U.S., don’t they have an obligation (actual or implied) to notify their stakeholders about the injunction?
As Matt said, they had time to speak with the WSJ – why don’t they have the time to speak to their stakeholders?
Posted by Douglas Sorocco, at 1:51 pm
Permalink: 2:47pm Eastern – Why no news from USPTO?
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patent continuation rules – ding dong the witch is dead … for now
Yes, the chorus of cheers has risen up in the patent community – the dreaded Nov. 1st implementation of the continuation rules has been enjoined.
The order should be up this afternoon and we will update this post with a copy and analysis.
What a wonderful Treat this Halloween.
PLI’s patent center has some good “live” blogging of the court hearing.
Image is of Margaret Hamilton as the Wicked Witch of the West in “The Wizard of Oz,” distributed by Warner Bros. Copyright Warner Bros.
Update: 5:26pm Memorandum Opinion of Court’s Injunction Released
A copy of the court’s Memorandum Opinion has been released. Download a copy for your reading pleasure. File Attachment: Court Order.pdf (135 KB)
Posted by Douglas Sorocco, at 11:59 am
Permalink: patent continuation rules – ding dong the witch is dead … for now
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Promoting progress – what are we doing?
Matt raises some interesting questions on all the patent reform/rules nonsense going on these days out East. Worth a read and some thought about what “we” are bringing about in our patent system here in the U.S.
Our patent system has two primary purposes -
1. To encourage disclosure of inventions, and
2. To encourage development of new ideas by fostering design around efforts
Seems to me our great, world-leading patent system is now failing to achieve these purposes in at least two regards…with a third complication on the horizon…
Promote the Progress® ::: J. Matthew Buchanan’s Patent Blog.
Posted by Douglas Sorocco, October 28, 2007 at 10:03 am
Permalink: Promoting progress – what are we doing?
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New Blog to Check Out: Financial Aspects of Intellectual Property
One of my new favorite blogs is the Financial Aspects of Intellectual Property blog by the folks at the Innovation Asset Group.
According to their “about” page:
Innovation Asset is a leading provider of software for intellectual property (IP) and contracts management. Founded in 2002, we set out to design fresh solutions to the challenges today’s companies face in managing their intangible assets. We’ve quickly gained a national reputation for our flagship product, Decipher™.
So far, their blog has really been a fun and informative read – dealing with meta trends in intellectual property acquisition and valuation. As a sample to whet your appetite:
We are seeing an evolution – perhaps revolution. Not just in terms of the recognition of IP as the fundamentally core asset for businesses today; but also in terms of the way in which that IP is managed (I think “where” remains the same).
Initially, IP is managed out of the legal department. In a non-strategic mindset, IP management equates to docketing in some of these companies.
As companies embrace the strategic importance of IP and understand the need to move beyond simply docketing, there is an evolution of the role of the legal department. Much the way IT departments in corporate America evolved from a cost center and service provider to a strategic enabler of the business in the past couple of decades, legal departments are making a similar evolution today.
If you picture a pyramid similar to Maslow’s hierarchy of needs, and similar to the one described in “Edison in the Boardroom,” the bottom of the pyramid represents the least sophisticated IP companies, and the top of the pyramid the most sophisticated.
Well worth a read for anyone interested in intellectual property and what I would consider a “must read” for those within corporate intellectual property departments who must identify, protect and communicate the importance of intellectual property assets.
Sorry for the disruption in the middle of all the “Rules Mess” – we now return you to your regularly scheduled programming.
Posted by Douglas Sorocco, September 26, 2007 at 7:41 pm
Permalink: New Blog to Check Out: Financial Aspects of Intellectual Property
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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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