IPO Announces Support for Patent Reform Act of 2010

By James DeGiulio --

As the Patent Reform Act of 2010 makes its way through the Senate, various groups continue to make their positions known on provisions contained within the legislation.  (For a detailed summary of the bill, see "Senate Leadership Unveils Details of Patent Reform Agreement.")  On September 12, the Intellectual Property Owners Association (IPO) published a short summary of the organization's positions, briefly indicating how the IPO interprets certain provisions within the legislation and whether such provisions are supported.  It appears that the IPO can be added to the growing list of groups supporting the 2010 version of the Patent Reform Act, for despite only minimal analysis, the IPO supports nearly all of the provisions discussed.

The IPO supports the change to a first-inventor-to-file system, as well as limiting false marking suits to persons who have "suffered a competitive injury," effectively eliminating the qui tam cause of action.  Regarding damages, the IPO supports the provision requiring a judge to identify the "methodologies and factors" used in a damages calculation and binding the judge to the use of those identified factors only.

The IPO is generally in favor of the bill's provisions aimed at improving patent quality, including allowing third parties to submit prior art for at least six months after publication and the new first-window post-grant review proceeding.  The IPO also supports the proposed supplemental examination procedure, which would allow patent owners to request supplemental examination before litigation to consider, reconsider, or correct information relevant to their patents.  The IPO notes this procedure should ease litigation burdens, since the reform provides that patents shall not be held unenforceable on the basis of information so considered, reconsidered, or corrected during supplemental examination.

The only provision not supported by the IPO is the codification of the standard for willfulness.  Following the Seagate opinion, the IPO sees no need for inclusion of a willfulness standard in the reform bill.

James DeGiulio has a doctorate in molecular biology and genetics from Northwestern University and is a graduate of Northwestern University School of Law.  Dr. DeGiulio is a member of MBHB's 2010 associate class and he can be contacted at degiulio@mbhb.com.

Comments

[staff]

"IPO is generally in favor of the bill's provisions aimed at improving patent quality, including allowing third parties to submit prior art for at least six months after publication and the new first-window post-grant review proceeding."

The present re-exam procedure is already abused by infringers who file sequential requests to a PTO that is all too eager to grant. As judge Michel says, the present 'substantial new question of patentability' standard is "hardly any standard at all". Let's not make matters even worse.

Just because they call it “reform” doesn’t mean it is. Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.

[patent litigation]

Many will particularly welcome the inclusion of a "competitive injury" provision as limitation on false marking patent suits. In other respects, however, I find the proposed patent reform act inadequate in confronting the patent system's current, urgent concerns.
http://www.aminn.org/webcast-aipr-patent-reform-presentation-us-patent-and-trademark-office