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« Court Report | Main | Senate and House Introduce Bills Prohibiting Authorized Generics »

March 15, 2009

Comments

Don,

It is very alarming and distressing that the Judiciary Committee of the Senate is apparently intent on ramming S.515 through as quickly as possible, with minimal testimony from a select panel just a week ago. Given the potential significant adverse impact this legislation could, and will likely, have on American innovation, and most importantly American jobs, such “haste” by the Senate Judiciary Committee is completely uncalled for, and expresses an arrogance that is all too common from Congress. That S.515, as well as its House companion bill H.R. 1260, are so greatly one-sided and do not address the “real” causes affecting the U.S. patent examination system, makes any reference to these bills as “patent law reform” disingenuous oxymoronic in the extreme.

For these reasons, all of us who don't want the U.S. patent system destroyed by such a grossly one-sided, special interest driven bill need to make known (and quickly) to our Senators, Congressman, and others having potential impact on the passage of S.515 (and it's evil twin H.R. 1260): (1) why these bills are grossly deficient and will adversely impact important American interests (especially American jobs); and (2) what really needs to be done to create “true” patent law reform in the U.S. patent system. As they say in sports, "the time is now."

EG:

It does seem like Senator Leahy is pushing hard on S. 515. Hopefully, he will listen to the other members of the Committee and adopt more suitable language for determining damages. I think the fair compromise remains Senator Feinstein's suggestion of codifying the Georgia-Pacific factors with the judge acting as a gatekeeper with respect to which factors are to be considered by a jury. Thanks for the comment.

Don

EG & Don:

Indeed, Senator Leahy is urging his colleagues to push this bill more vigorously than a OB/GYN urges a woman in labor to push. It may not be too difficult to understand why as it's been widely rumored that Leahy is answerable to the tune of $10,000/plate dinners to many of those entities wanting this legislation passed. If that's true, I can understand his zeal. That's a lot to shell out for some salad, a filet, and dessert, without an accompanying side of Patent Reform Legislation.

For anyone that watched the Senate hearing, it may have been a bit telling that Sen. Leahy concluded his introduction of Mr. Appleton (Micron) with, "Good to see you again."

Senator Feinstein's suggestion is a good compromise but there are other issues that should be considered for improving Senator Leahy's bill.
Post Grant Review
I support a post grant review process which is based upon the current language in S. 515 but with several substantive amendments. In particular, under the current language, the post grant review process will be opened up to basis of invalidity that the Office is not skilled in evaluating and that will defeat the purpose of the post grant review being cost efficient and timely. In addition, a petitioner requesting Post Grant Review is not required to submit all materials known to the petitioner, meaning that a Petitioner may simply try out a particular defense in the PTO and, if unsuccessful, try one or more alternative defenses in a court of law. Thus, the current language does not encourage the prudent conservation of Judicial and Patent Offices resources and gives Petitioners an incentive to “try out” a defense in an administrative setting. A petitioner should bring forward all defenses they have, even if those defenses were not known to the petitioner when the proceeding was initiated. Finally, language should be added to ensure that the petitioner is the real party in interest to prevent the use of blind entities to circumvent the requirement that a petitioner lay all of their cards on the table in order to take advantage of the Post Grant Review process.

Inequitable Conduct
One of the short comings of the current bill is the lack of focus on improving the portion of the patent system that is in need of the most reform, the PTO. There are many ways for improving the efficiency of interactions with the PTO and improving patent quality but I will only mention one. One of the biggest factors that hampers efficient and open dialogue with the patent examiner is the threat of inequitable conduct. A provision on inequitable conduct should be in this bill or a separate bill. Reform of the laws around inequitable conduct will lead to a more collegial and cooperative relationship between Applicant’s and Examiners, will reduce the pendency time for applications and will result in stronger and higher quality patents issuing from the PTO. The provision should ensure that inequitable conduct can only be found where there is actual intent to deceive the PTO. Applicant’s should not be required to submit published patents or patent applications as the PTO has complained that they are receiving way too much of that information from the applicant but the applicant should be required to submit non-patent information as they are better at finding that information than the PTO. The bill should ensure that a defendant can only assert the defense of inequitable conduct after one or more claims has been held invalid by the court and must, when asserting a defense of inequitable conduct plead this defense with particularity. The requirement to plead with particularity would prohibit defendants from pleading inequitable conduct as part of the boilerplate defense language and prohibit discovery on this issue until and unless a claim was held invalid by the court.

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