By Donald Zuhn --
The journal Medical Innovation & Business has devoted its summer issue, which was released last month, to an examination of the effects of patent reform on medical innovation. The periodical has assembled a group of recognizable and respected members of the patent community to tackle various aspects of the topic. Among the articles that are presented in the issue (all of which are freely available here) are:
• "Patent Reform: Effects on Medical Innovation Businesses," by Dr. Renee Kaswan, the founder of the non-profit organization, IP Advocate; David Boundy, the Vice President and Assistant General Counsel for Intellectual Property at Cantor Fitzgerald, LP; and Dr. Ron Katznelson, the Founder and President of Bi-Level Technologies, lays the foundation for the special issue which is devoted to evaluating the potential consequences of the Patent Reform Act of 2010, with an emphasis on how the legislation will impact university researchers, university spin-offs, emerging start-ups, and small life sciences companies, especially those in the medical sciences.
• "Venture Capital -- The Buck Stops Where?" by Gary Lauder, the Managing Partner of the venture capital firm Lauder Partners LLC, outlines how the 2010 Patent Reform Act threatens venture capital investment in American innovation.
• "Conversations with Two Chief Judges," by Matthew Dowd of Wiley Rein, LLP, in which the former and current Chief Judges of the Federal Circuit, the Hon. Paul R. Michel and the Hon. Randall R. Rader, discuss the impact of that Court on the patent reform dialogue.
• "Adequately Funding the USPTO: A Critical Problem That Must Be Solved," by Nicholas Godici, the Executive Advisor at Birch, Stewart, Kolasch & Birch, LLP and former Commissioner for Patents at the U.S. Patent and Trademark Office.
• "What Is A Bad Patent?" by Patrick Doody, a partner at Goodwin Procter, attempts to provide a definition of so-called "bad patents."
• "Patent Reform's Weakened Grace Period: Its Effects on Startups, Small Companies, University Spin-Offs and Medical Innovators," by David Boundy and Matthew Marquardt, a U.S. and Canadian patent lawyer, argues for the removal or replacement of a "radical and disruptive" provision of the Patent Reform Act that would, with one "procedurally inaccessible" exception, render all public disclosures as bars to a patent, thereby forcing companies to file more patent applications, earlier in the development cycle.
• "Would Derivation Proceedings Be the Same As Derivation Interferences?" by Charles Gholz, a partner at Oblon Spivak, looks at the significant differences, both intended and unintended, between the derivation proceedings that would be created by the Patent Reform Act and derivation interferences.
"Post-Grant Review-Our Next Nightmare? VC Perspective,"
by John Neis, a Managing Director at the venture capital firm Venture Investors
LLC, concludes that none of the proposed changes in current patent reform
legislation, including a much-expanded post-grant review system, would stimulate
investments in innovative startups, but rather would make these investments far
riskier and potentially untenable for venture capitalists .
• "Post-Grant Review of U.S. Patents: Will Past Be Prologue?" by Dr. Kevin Noonan, a founding author of Patent Docs and partner at McDonnell Boehnen Hulbert & Berghoff LLP, explores whether the reexamination schemes provided by current patent reform legislation will improve patent quality and reduce litigation, as patent reform proponents contend, based on an analysis of historical patterns of reexamination outcomes and by contrasting the provisions of the earlier reexamination processes with what is proposed in the Senate bill.
• "The Gatekeeper Patent Damages Compromise of S. 515," by Philip Johnson, the Chief Intellectual Property Counsel for Johnson & Johnson, looks at the most controversial provision of the Senate patent reform bill -- that which relates to patent damages.
• "The Proposed Interlocutory Appeals Provision of Patent Reform: Is It Dead Yet?" by Edward Reines, a partner at Weil, Gotshal and Mange, and Nathan Greenblatt, an associate at that firm, addresses the "misguided" provision in the House bill that would give district courts the authority to approve interlocutory appeals of claim construction orders and deprive the Federal Circuit of the discretion to decline such appeals.
• "Patent Reforms Must Focus on the U.S. Patent Office," by Dr. Ron Katznelson, asserts that the USPTO operations (particularly those that impact patent quality and the application backlog) must be the focus of any patent "reform" movement, contending that "no reformed statutory scheme can work well if the USPTO doesn't."
• "Attenuated Judicial Review of Patent and Trademark Office Decisions: 'Technical Amendment,' or Stacking The Deck Against Inventors?" by Dr. Charles Miller, senior counsel at Dickstein Shapiro, and Daniel Archibald, and associate at that firm, contends that the Senate bill would do serious harm to the U.S. patent system by attenuating the rights of judicial review by transferring venue from a court that views federal agency decisions somewhat skeptically to a court that seldom overrules them.
Patent Docs plans to provide additional coverage of the special issue of Medical
Innovation & Business in subsequent posts.