Promote the Progress

Last week, Representative Howard Berman introduced the Patents Depend on Quality Act of 2006 ("the PDQ Act") (H.R. 5096).  Thanks to Steve Nipper for helping me out while I was away from blogging....

You can view and/or download a copy of the PDQ Act as introduced here.  Representative Berman's comments on introduction of the bill are available here.

The PDQ Act is aptly nicknamed...Representative Berman is looking for reform "pretty darn quick."  The bill reflects a relatively narrow approach to patent reform, as opposed to the comprehensive approach reflected in the Patent Act of 2005 (Representative Smith's proposed reform legislation; H.R. 2795).  The PDQ Act eschews such proposed reforms as adoption of a first-inventor-to file system, elimination of the best mode requirement, overhaul of the inequitable conduct 'system,' and other measures contained in the Smith bill.

In contrast, the PDQ Act focuses on a few reform measures that, to date, enjoy relatively broad support in the patent community.  For example, the bill establishes a post-grant review system within the Patent and Trademark Office, allows for submission of prior art by third parties following publication of an application, and significantly alters the estoppel created during inter partes reexamination proceedings (no more "...or could have raised..." estoppel).

While Representative Berman proposes a narrow approach to patent reform, the PDQ Act is not without controversial measures.  For example, the post-grant review system includes the controversial "second window" that was the subject of much debate during patent reform hearings held last year.  Furthermore, the bill includes an injunctive relief provision that requires a court to consider "the fairness of the remedy in light of all the facts and the relevant interest of the parties associated with the invention."  Notably, the injunctive relief provision requires a court to stay an awarded injunction pending appeal so long as the stay does not irreparably harm the patent owner (and other considerations).

Representative Berman has been advocating this narrow approach for some time.  The PDQ Act is very similar to his Patent Quality Assistance Act of 2004, introduced in the closing days of the last Congress (the PQAA included many of the same proposals as the PDQ Act, including the post-grant review system with a second window and the elimination of the "or could have raised" estoppel for inter partes reexamination).  The remarks made on introduction of the PDQ Act closely resemble those made on introduction of the PQAA.

Representative Berman has trimmed some proposed reforms from the PQAA, including a presumption of obviousness for claims directed to business methods.  Also, it appears that Representative Berman has softened his proposal for reforming the injunctive relief section of the patent law.

The PQAA (the 2004 bill) states that "...the court shall not presume the existence of irreparable harm, but rather the court shall consider and weigh evidence, if any, tending to establish or negate any equitable factor...including...the extent to which the patentee makes use of the technology claimed by the patent."

In contrast, the PDQ Act (current bill) states that "...the court shall consider the fairness of the remedy in light of all the facts and the relevant interest of the parties associated with the invention."

The PDQ Act has been referred to the Committee on the Judiciary where it will eventually find its way to the Subcommittee on Courts, the Internet and Intellectual Property.  Time will tell if the narrow approach to patent reform advances more smoothly than the comprehensive approach offered by the now-dead Patent Act of 2005.

Posted by J Matthew Buchanan at 02:34 PM | Permalink

The House Subcommittee on Courts, the Internet, and Intellectual Property is holding an oversight hearing on patent reform tomorrow (the hearing is scheduled for 4:00 PM Eastern; view the live webcast here).  From the agenda [.pdf], it appears that the Subcommittee will continue to explore the administrative challenges and the funding issues facing the Patent and Trademark Office.  Nothing new there...

Notably, Jim Balsillie, the Chairman and CEO of Research in Motion, is scheduled to testify.  He'll have plenty to say about patent trolls and the injunctive relief issue considering the hefty check his company recently gave to a troll.  Chairman Smith appears to be ready to give the maker of the BlackBerry a little bit of the spotlight on the troll issue, considering this question that appears on the agenda:

Are high-tech companies singled-out for unfair treatment in patent lawsuits?

Perhaps most interesting is the complete absence of any reference to the Patent Act of 2005 (H.R. 2795).  The bill is not officially scheduled for discussion.  The Subcommittee, it appears, is truly back at the drawing board when it comes to patent reform.

eBay looms large, and Round Two has begun.

Posted by J Matthew Buchanan at 10:42 PM | Permalink

Today's edition of the Wall Street Journal includes an op-ed piece on the current state of patent law, entitled "Patently Absurd."

You can view the article here (subscription required).

The article is an attack on all things patent. Don't worry, though. The Editors have determined the source of the problem - the lawyers.

Yep. It's all our fault.

Patent Trolls? Yep...our fault. The article has a clever description of the so-called patent troll problem that avoids use of the "T" word while asserting a simple and disturibing message: small patent holders who don't commercialize their inventions don't deserve injunctive relief or even monetary damages when their patents are infringed. Their patent infringement lawsuits are "dubious," apparently simply because of their small size and lack of commercialization. This is a strong, anti-property rights position taken by the Journal that, sadly, comes as no surprise considering previous Journal articles regarding so-called trolls.

Damn lawyers should know better than to assert the patents of these undeserving opportunists.

The surge in the numbers of patents and patent applications? Yep...that's our fault too. Both the number of patent applications and issued patents have surged in the last two decades...everyone knows that. But, did you know that "[t]his has less to do with genuine innovation than it does with innovative lawyers filing a patent on anything that moves." Aside from the message that sends about using patents and applications to measure the state of innovation, it completely ignores the responsibility lawyers have to their clients.

Damn lawyers should know better than to aggressively protect the interests of their clients by pursuing patent protection that complies with the patent laws. Apparently we should advise our clients to seek less than that allowed by the law.

The article closes with an instruction that seems to blame us for everything:

"Testifying before Congress last June, Josh Lerner, a Harvard Business School professor, summed up the problem: "In the past two decades, the U.S. has strengthened patent rights, while weakening the standards for granting patents." The result is that the patent system is fast becoming a detriment to U.S. competitiveness, not to mention basic fairness. So if your BlackBerry ever does go dark, don't curse the company. Blame the lawyers."

Sure, they're talking about those evil NTP lawyers that are seeking enforcement of the rights of their troll client against RIM, the maker of the BlackBerry. But read it again...and again...and again. Yep, now you've got it. According to the Journal, it's all our fault.

What the article fails to mention is that lawyers, being the clever innovators that we are, have played a driving role in the current patent reform movement. The American Intellectual Property Law Association (largely a professional society for IP lawyers) played a key role in drafting the Patent Act of 2005, which the Journal article called "useful." Sure we have differing opinions on the need for reform and the structure of some proposals, but we, the lawyers, have played an important role in advancing the debate on an amazingly broad spectrum of sweeping changes to the law. As the magnifying glass has turned onto our corner of the law, we have not shyed away. Rather, we have grabbed the handle and helped with the review. Introspection is always difficult, but I believe we can be proud of our efforts thus far, despite the uninformed criticisms of others.

Posted by J Matthew Buchanan at 10:11 AM | Permalink

Last week, several newspapers ran an AP article on so-called “small-time” inventors and the pending patent reform proposals.  The story can be accessed at this Washington Post link.

The Professional Inventors Alliance, an interest group for independent and small entity  inventors (I don’t think the term “small-time” is accurate),  is spotlighted in the article.

A money quote from the article (and representative of the independent/small entity viewpoint on the proposed patent reform):

"I honestly feel that if we don't stop what the big companies are trying to do, there won't be any opportunity for us," said Ronald J. Riley, the Professional Inventors Alliance's president. "What they call patent reform is all about making it virtually impossible to enforce the patents."

Thanks to George Margolin, independent inventor extraordinaire, for the link.

Posted by J Matthew Buchanan at 07:56 AM | Permalink

Today’s hearing of the House Subcommittee on Courts, the Internet, and Intellectual Property revealed a significant shift in the progress of the Patent Act of 2005 and, indeed, in the patent reform movement in general.

Compromises are indeed being made.  The draft amendment circulated by Representative Smith over the summer eliminates the controversial injunctive relief provision.  This appears to reflect a compromise by the software and high technology industries in consideration for the newly added venue provision.  But, even in light of the elimination of the injunctive relief provision, opposition to the venue provision is developing, particularly by the biotechnology industry.

Representative Smith gave a not-so-subtle hint in his opening statement – “We’re attempting to thread the needle on two key issues – transfer of venue and apportionment of damages.”

The pharmaceutical industry appears relatively pleased with the draft amendment save the apportionment of damages provision.  In particular, the industry is happy to see the elimination of the injunctive relief provision, the so-called “second window” of the post-grant review procedure, and the section granting authority to the Director of the Patent and Trademark Office to place limitations on continuation practice.  These three provisions of the bill as introduced have been the primary target of the industry since getting involved in the effort.  Now, with these provisions gone, the industry seems to be focusing its efforts on the apportionment of damages section.

Some members of the Subcommittee expressed reservation against moving toward the text of the draft amendment.  Notably, Representative Berman is clearly opposed to the elimination of the “second window” from the post-grant review procedure.

The Coalition Print, also known as the “September Redline,” has become a focus of attention.  That version of the bill is supported by a coalition of companies (reportedly to be 33 at this time) and the Intellectual Property Owners (IPO) Association.

What happens next?  A substitute bill has to be introduced at some point.  H.R. 2795, as introduced, is clearly dead as a means for meaningful patent reform worthy of broad-based support.  A bill that reflects current compromises will be better suited for advancement of the issue.  Broad support, generally speaking, appears to be shoring up despite the fact that controversy continues to surround a few provisions.

When a substitute is introduced, look first at the venue and apportionment sections.

Timing of a substitute is an open question.  The draft amendment or coalition print could probably be dropped quickly with minimal tinkering.  If more compromise and/or additional support is desired, a more thorough edit of either of these drafts may be warranted, which will take time.  And we’ve still got one eye on the Senate to see if Hatch plans to show his hand anytime soon.

Please visit the PTP Patent Reform Library for copies of all versions of the bill and testimony from the hearing (will be available soon).

 

Posted by J Matthew Buchanan at 12:50 PM | Permalink

IPO has created a “Coalition Print” version of the Patent Act of 2005.  You can view and/or download a copy of the print here.

I have also added the print to the PTP Patent Reform Library.

IPO prepared the bill prior to its annual meeting, currently being held in Seattle.  It is a redlined version of Representative Smith’s substitute bill, which will be discussed in tomorrow’s hearing of the House Subcommittee on Courts, the Internet, and Intellectual Property.

I have not yet reviewed the Coalition Print.

IPO promises that details on the background of the print will be provided tomorrow.

Posted by J Matthew Buchanan at 12:08 PM | Permalink

Tomorrow, the House Subcommittee on Courts, the Internet, and Intellectual Property will hold a hearing on the draft amendment to the Patent Act of 2005.

The witness list includes representatives from the Business Software Alliance (BSA), the Pharmaceutical Research and Manufacturers of America (PhRMA), and the Biotechnology Industry Organization (BIO).

The BSA, of course, strongly supported the controversial injunctive relief provision present in the Patent Act of 2005 as introduced (HR 2795).  PhRMA and BIO strongly opposed that and other portions of the bill.

The draft amendment, which is a substitute bill, is clearly one supported by both PhRMA and BIO.  It’s highly likely that BSA strongly opposes the draft amendment – it completely eliminates two of the provisions backed by the group (the injunctive relief provision and the “second window” for post-grant review proceedings in the Patent and Trademark Office).

The hearing should be quite interesting.  If only you could be a fly on the wall.  Oh, wait, you can — watch the webcast here.

Need some reading material to prepare for the hearing?  Check out the PTP Patent Reform Library.

Posted by J Matthew Buchanan at 10:17 AM | Permalink

Today, the Wall Street Journal reports on the so-called patent "trolls" (Link here (subscription required)). That's what I thought when I pulled my copy from the mailbox this morning and saw the headline Aggressive Patent Litigants Pose Growing Threat to Big Business on the front page.


I started reading the article as I walked back into the house expecting a thorough analysis of the so-called troll problem.


I was disappointed.


The article misses that mark, amounting to nothing more than an account of one particular patent lawsuit. There's no question the author intended to talk trolls ("...lured by the potential returns...investors now are bankrolling businesses that buy up patent portfolios....Critics call the small litigants "patent trolls" and say they are parasites on successful businesses."). The article mentions the Patent Act of 2005 in passing, pointing to the injunctive relief provision and its support by "technology companies" and opposition by inventors and pharmaceutical companies. Almost unbelievably, though, it fails to highlight the controversy surrounding this provision and the draft amendment that would completelyeliminate it (and the hearing on that amendment that is scheduled for tomorrow).


The author, unintentionally and, I think, unknowingly, highlights a critical problem in the patent troll debate - the so-called "trolls" are a difficult bunch to define. The plaintiff in the example lawsuit portrayed in the article is perhaps the worst "troll" the author could have chosen - a small company that, after experiencing early success, made a business decision to focus on enforcement of its patent rights.


Wow. If that's a "troll," stand back because the entire system is about to crumble.


Worse yet, it sounds as if the patent rights being enforced in that lawsuit were for an invention made by one of the principles of the business. That's right - the plaintiff didn't snatch the patent claims in a fire sale at the local bankruptcy court (an action typically attributed to the so-called "trolls" and rarely recognized as a smart investment move). Nope. It acquired them the old-fashioned way...through invention and patent prosecution.


Evil trolls.


No matter which definition you apply, it's difficult to envision a world in which the company portrayed in the article would qualify as a troll that, for whatever reason, is deserving of lesser property rights than others.


Here's the bottom line - the term is impossible to define without circumscribing the property right provided by patents. Any attempt to do so creates a policy nightmare. Continuing to do so stands to derail the real patent reform movement that should be focused on patent quality.


If a patent is valid and enforceable, it should not matter who owns it. Period.


I think Dean Kamen stated it best after being introduced at the recent Conference on Patent Reform in DC, "Hello. I'm Dean Kamen. I'm a troll."

Posted by J Matthew Buchanan at 09:06 AM | Permalink

The House Subcommittee on Courts, the Internet, and Intellectual Property has scheduled a legislative hearing on the Patent Act of 2005 for Thursday, September 15th, 2005 at 10:00 AM Eastern.

It appears that the hearing will focus solely on the proposed amendment to the Patent Act of 2005.  The amendment, which is a substitute bill, has been circulated by Chairman Lamar Smith but has not been entered yet.

The proposed amendment to the bill is quite controversial as it completely eliminates the injunctive relief provision and the “second window” option for post-grant review procedures.  It also eliminates a provision that would allow for limits on continuation practice.  These provisions of the Patent Act of 2005 are strongly supported by the information technology sector and are strongly opposed by other sectors, including the pharmaceutical sector.

This prior PTP post has an overview of the proposed amendment.

You can view and/or download a .pdf of the Patent Act of 2005 here.  A .pdf of the proposed amendment is available here.

 

Posted by J Matthew Buchanan at 12:46 PM | Permalink

As everyone watches the Patent Act of 2005 (H.R. 2795) in the House, the Senate has yet to see any proposed legislation.  Senator Hatch, as Chairman of the Subcommittee on Intellectual Property, has held two oversight hearings on the matter but has yet to introduce a bill or even a proposed draft.

The Senate’s approach to patent reform is one of the most significant open questions at this time.

In this article from Senator Hatch’s home town newspaper, the Salt Lake Tribune, he alludes to a cautious approach and suggests that enacting reform will take some time, considering the seriousness of the issue:

"The patent system has some serious problems that need to be fixed before they become crises," Hatch said. "But any reform - and especially something as complex as patents - is going to take time, and we need to make sure to examine all sides before crafting any legislation."

 

Posted by J Matthew Buchanan at 01:27 PM | Permalink

I finally had a chance to review the entire draft amendment to H.R. 2795, the Patent Act of 2005.  The draft amendment is in the nature of a substitute, meaning that, if the amendment is entered, the entire text of the original bill, save the enacting clause, will be replaced with the text of the amendment.

The draft amendment appears to be the reform bill the pharmaceutical industry wanted.  The industry’s two major complaints with the original bill — change to the injunctive relief calculus and the existence of a ‘second window’ within which post grant review of an issued patent can be initiated by a third party — have been completely eliminated.

The original bill also grants authority to the Director to place limits on continuation applications, which are used heavily by the industry.  The draft amendment completely eliminates this provision as well.

The draft amendment clearly addresses all of the pharmaceutical industry’s major complaints about the Patent Act of 2005.  It’s almost as if someone asked the industry for its ideal bill.

The draft amendment includes one new provision that is quite interesting.  Section 9, entitled Venue, has very strong language limiting the venue for patent civil actions:

“Any civil action arising under any Act of Congress relating to patents, other than an action for declaratory judgment or an action seeking review of a decision of the Board of Patent Appeals under chapter 13 of title 35, may be brought only –

1) in the judicial district where the defendant resides;

2) in the judicial district where the defendant has committed acts of infringement and has a regular and established place of business; or

3) if the plaintiff is a not-for-profit educational institution that owned the rights of the patents in suit as of the effective filing date of those patents, in any judicial district in which the defendant is subject to personal jurisdiction at the time the action is commenced.”

Under this structure, qualified educational institutions can bring suit in any federal court having personal jurisdiction over the defendant, but all other plaintiffs must bring suit in a venue that is favorable to the defendant, at least in a geographic sense.

Is this designed for the so-called patent trolls?  Is it an attempt to force them to take their actions to their defendants?

Here’s the big question on the venue provision — was it included as a concession for the other changes?  Is the draft amendment actually a product of compromise?

 

Posted by J Matthew Buchanan at 09:59 AM | Permalink

There has been no formal action on the Patent Act of 2005 (H.R. 2795) since its initial referral to the House Subcommittee on Courts, the Internet, and Intellectual Property.

Representative Smith, the original sponsor of the bill, is currently circulating a draft amendment in the form of a substitute.  As of today, this amendment (substitute bill) has not been formally introduced.  The bill as introduced remains the working form of the bill.

I have not reviewed the substitute language in detail, but it is clear that the most significant change is the complete elimination of the injunctive relief provision.  Considering this change to the most controversial aspect of the bill, introduction of this amendment would likely widen the gap between the high-technology and pharmaceutical industries and would cast serious doubt on the future of H.R. 2795 as a vehicle for implementing reform.

In September, all eyes will be watching the House Subcommittee to see whether it is able to schedule a markup of the bill and, if so, whether the proposed amendment surfaces.  If a markup is not scheduled, the issue will likely go below the surface until next year.

K. Karel Lambert has made a redlined version of the of the patent statute available that shows the changes that would be made by the substitute bill.  I have not reviewed this document or determined its accuracy.

I have updated the PTP Patent Reform Library to include the draft amendment.

Posted by J Matthew Buchanan at 10:25 AM | Permalink

Dennis Crouch of the Patently-O blog has prepared a redlined version of the patent law that reflects the amendments that would be made if the Patent Act of 2005 were enacted in its present form.  The current version includes only those sections amended by HR 2795, but Dennis promises a new version that includes all sections of the patent law soon.

Thanks to Dennis for this great resource.  I’ll add a link to the document in the Patent Reform Library and will keep it up to date as Dennis releases new versions.

 [Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 04:32 PM | Permalink

Last Wednesday, on introduction of the Patent Act of 2005 (HR 2795), Congressman Berman made comments on behalf of the original sponsors of the bill.  View and/or download a .pdf of the comments here.  I will update the PTP Patent Reform Library to include this document.

Here’s a few quick takeaways from the comments:

1.  At times, Representative Berman seems to be bending over backwards to make it clear that the bill is simply a starting point while also stressing a need for relatively quick action on the issue.

“We acknowledge that the problems are difficult and, as yet, without agreed-upon solutions.  It is clear, however, that introduction of this legislation will focus and advance the discussion….With or without consensus, Congress must act soon to address these problems.”

2.  The comments, taken alone, would have you believe that the post-grant review system is a “go” at this point.

“I am pleased that, finally, at least a consensus has emerged among the various collaborators in support of the basic “post grant opposition” approach embodied in the legislation.”

It’s not quite that simple.  The existence of the “second window” within which a review of an issued patent can be initiated has been a point of controversy at least since the early hearings by this Congress.  This status was confirmed last week at the Conference on Patent Reform.  Post grant review is hardly a settled matter.

3.  The comments begin to lay out the intent of Congress behind the controversial injunctive relief provision (Section 7 of the bill).

“Section 7 is designed to address the negative effect on innovation created by patent “trolls.””

All comments made on this section of the bill relate to trolls.  One problem, though.  So far, no definition of “troll” has been offered and those that can be inferred from the language discussed to date are offensively broad.

The following comment may start to shed some light on the term, but can hardly be viewed as a definition.

“We have learned of countless situations in which patent holders, making no effort to commercialize their inventions, lurk in the shadows until another party has invested substantial resources in a business or product that may infringe on the unutilized invention.  The patent troll then steps out of the shadows and demands that the alleged infringer pay a significant licensing fee to avoid an infringement suit.”

We might just need to decide on meanings for “lurk” and “the shadows” as well.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 12:12 AM | Permalink

The official press release from Representative Lamar Smith on today’s introduction of the Patent Act of 2005 is here.

The most interesting quote, to me, is:

“The bill is a good first-cut of what we envisioned when this process commenced.  No doubt, it will undergo changes as we proceed to markup.”

[Copyright 2005 J. Matthew Buchanan; Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 05:00 PM | Permalink

One of the major questions surrounding the Patent Act of 2005 was how the injunctive relief provision would be handled.

Well, now we know.

It’s in.  But it’s in a form that is vastly different than that presented in the Committee Print.  Here are the two versions:

As introduced:

In determining equity, the court shall consider the fairness of the remedy in light of all the facts and the relevant interests of the parties associated with the invention.  Unless the injunction is entered pursuant to a nonappealable judgment of infringement, a court shall stay the injunction pending an appeal upon an affirmative showing that the stay would not result in irreparable harm to the owner of the patent and that the balance of hardships from the stay does not favor the owner of the patent.

Committee Print:

A court shall not grant an injunction under this section unless it finds that the patentee is likely to suffer irreparable harm that cannot be remedied by the payment of money damages.  In making such a finding, the court shall not presume the existence of irreparable harm, but shall consider and weigh evidence that establishes or negates any equitable factor relevant to a determination of the existence of irreparable harm, including the extent to which the patentee makes use of the invention.

Quite a softening, I’d say (and Nipper agrees.)

But there’s more to the story.  As introduced, the injunctive relief provision includes language requiring a stay upon a satisfactory showing.

This language seems to reflect some of the testimony presented during the oversight hearings.  Look at page 23 of Bob Armitage’s testimony, for example.

Now, the focus for the injunctive relief provision may shift to whether stays during appeals are necessary and if the threat of an injunction after trial — and before an appeal that might succeed in invalidating the patent or establishing that the patent was not infringed — actually forces businesses to prematurely settle patent infringement suits and denies the public the possibility of killing an invalid patent.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 03:38 PM | Permalink

The Patent Act of 2005, which is expected to be introduced later today, is now available on Promote the Progress.  View/download a .pdf here.

I’ll review the bill and post more information later.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 01:41 PM | Permalink

Remember, after the much anticipated introduction, it’s just a bill.

Truly a classic.

Many people will want to sing that song over and over again as they consider the injunctive relief provision, if indeed it survives and finds its way into the bill. 

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 01:35 PM | Permalink

Tomorrow, June 9, 2005, the House Subcommittee on Courts, the Internet, and Intellectual Property will hold a hearing on “The Patent Act of 2005.”  Gary Griswold, President and Chief Intellectual Property Counsel of 3M Innovative Properties, is scheduled to appear on behalf of the American Intellectual Property Law Association (AIPLA).  Mr. Griswold is a past president of AIPLA.

Dan Ravicher, the Executive Director of the Public Patent Foundation, has also been requested to appear as a witness.  The Foundation, also known as PUBPAT, “represents the public’s interest against the harms caused by the patent system, particularly the harms caused by wrongly issued patents and unsound public policy.” (from the PUBPAT website).

The big question, of course, is whether the “Patent Act of 2005” will actually be introduced before the hearing.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

Posted by J Matthew Buchanan at 01:20 PM | Permalink

Scuttlebut is building around the coming patent reform bill.

Look for the Patent Act of 2005 to be released, and possibly formally introduced, next Tuesday.  If that happens, the hearing scheduled for Thursday could be a markup.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress (http://www.promotetheprogress.com).]

 

 

Posted by J Matthew Buchanan at 11:20 AM | Permalink

The House Subcommittee on Courts, the Internet, and Intellectual Property has scheduled a Legislative Hearing on H.R. ____, “The Patent Act of 2005.”

The hearing is scheduled to begin at 9:00 AM.  A subsequent, unrelated hearing is scheduled for 11:30 AM.

June 9th, of course, is the day on which the National Academies will host its Conference on Patent Reform.  Lamar Smith, Chairman of the House Subcommittee, is scheduled to delivery the keynote address at 12:30 PM.  You can view/download a .pdf of the draft agenda for the Town Hall here.

 

 

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress.]

Posted by J Matthew Buchanan at 09:06 AM | Permalink

This post contains the PTP Patent Reform Library.

A .pdf of The Patent Act of 2005 is available for viewing and downloading in the Legislative Materials section

Background Information

The following resources are considered by many to be the primary catalysts behind the current patent reform movement:

• The NAS Report
• A Patent System for the 21st Century by the National Research Council of the National Academy of Sciences (290 pp.)
• Summary of the NAS report (4 pp.)
• AIPLA response to the NAS Report
• The FTC Report
• To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy by the Federal Trade Commission [.pdf](315 pp.)
• AIPLA response to the FTC report
• The USPTO’s 21st Century Strategic Plan
• The book Innovation and Its Discontents: How our broken patent system is endangering innovation and progress, and what to do about it; by Adam B. Jaffe and Josh Lerner

Legislative Materials

• Bills
• 109th Congress
• The Patent Act of 2005
• DRAFT amendment in the nature of a substitute (NOT INTRODUCED as of August 23, 2005
• As introduced in the House (H.R. 2795)
• Comments on introduction in the House
• Red-lined version of affected sections (.doc) (via the Patently-O Blog of Dennis Crouch)
• The "Coalition Print" (a red-lined version of the draft amendment in the nature of a substitute; Also referred to as the "September redline")
• The Committee Print (pre-introduction working draft of The Patent Act of 2005)
• The Patent and Trademark Fee Modernization Act of 2005
• As introduced in the House (HR 2791)
• The COMPETE Act
• As introduced in the Senate (S. 1020)
• Comments on introduction in the Senate
• The National Innovation Act of 2005
• As introduced in the Senate (S. 2109)
• Comments on introduction in the Senate
• 108th Congress
• The Patent Quality Assistance Act of 2004
• As introduced in the House (HR 5299)
• Comments on introduction in the House (extended)
• The Patent and Trademark Fee Modernization Act of 2004
• In last minute politicking, the Act, in large part, was dumped into an omnibus appropriations bill
• I presented a summary of key provisions in this post on Promote the Progress
• Oversight Hearings
• House (Committee on the Judiciary, Subcommittee on Courts, the Internet, and Intellectual Property)
• April 20, 2005
• Opening remarks of Chairman Lamar Smith
• Prepared statements of witnesses
• Lutton (Business Software Alliance)
• Lafuze (American Bar Association)
• Kushan (Genentech)
• Hawley (Intellectual Property Owner’s (IPO) Association)
• April 28, 2005
• Prepared statements of witnesses
• Myhrvold
• Levin
• Dudas (USPTO)
• Bartholomew
• June 9, 2005
• Opening remarks of Chairman Lamar Smith
• Prepared statements of witnesses
• Griswold (AIPLA)
• Gulbrandsen (Wisconsin Alumni Research Foundation)
• Lerner (Harvard Business School)
• Ravicher (Public Patent Foundation)
• September 15, 2005 (Discussion of the draft amendment in the nature of a substitute and the Coalition Print; Not a markup of H.R. 2795)
• Opening remarks of Chairman Lamar Smith
• Prepared statements of witnesses
• Chess (Biotechnology Industry Organization)
• Johnson (Pharmaceutical Research and Manufacturers of America (PhRMA))
• Simon (Small Business Software Alliance)
• Thomas (Geourgetown Law School)
• Senate (Committee on the Judiciary, Subcommittee on Intellectual Property)
• April 25, 2005
• Prepared statements of witnesses
• Simon
• Poppen
• Parker
• Myers
• Levin
• Kirk
• Kamen
• Dudas (USPTO)
• Armitage (Eli Lilly)
• June 14, 2005 (specifically directed to injunctions and damages aspects of reform)
• Opening remarks of Ranking Member Patrick Leahy
• Prepared statements of witnesses
• Band (Visa and the Financial Services Roundtable)
• Fish (Time Warner)
• Kushan (Sidley Austin Brown & Wood)
• Lemley (Stanford Law School)
• Miscellaneous Legislative Items
• New Democrat Coalition letter of support of Smith and Berman efforts to draft legislation (May 19, 2005)

USPTO Materials

• The 21st Century Strategic Plan
• The plan
• Supporting materials
• Statement of James E. Rogan (then Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) before the House Subcommittee on Courts, the Internet, and Intellectual Property (April 3, 2003) (introducing the strategic plan)
• USPTO Listing of Action Papers
• USPTO Changes to administrative rules to support implementation of the plan
• The Office's Report to Congress on Inter Partes Reexamination
• The report, required by the American Inventor's Protection Act, is quite telling. It reveals a real need and indeed a desire on the part of the Patent Office for a new post-grant review procedure.

Law Review Articles

• Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell. Prop. L. 336 (2005)
• James G. McEwen, Is the Cure Worse than the Disease? An Overview of the Patent Reform Act of 2005, 5 J. Marshall Rev. Intell. Prop. L. 55 (2005)

Media Coverage

• Press release of Representative Lamar Smith on introduction of the Patent Act of 2005 (June 8, 2005)
• Cnet:  Patent reform — or else (May 24, 2005)
• Inc. Magazine:  Patent law reform proposed (May 10, 2005)
• USA Today:  Pressure mounts for reform of patent system (May 2, 2005)
• ZD Net:  IBM Calls for patent reform (April 11, 2005)
• internetnews.com:  Mr. Smith went to Washington for patent reform (March 10, 2005) (on Microsoft proposals for patent reform)

Key Posts on Promote the Progress

• Comments of Representative Berman on introduction of the Patent Act of 2005 (HR 2795) (June 13, 2005)
• Conference on patent reform - a quick summary of five major themes (June 10, 2005)
• Details of the New Democrat letter of support for patent reform: Focus is on litigation reforms, including changing the injunctive relief calculus (May 25, 2005)
• COMPETE Act introduced in Senate: The return of anti-fee diversion and a possible funding mate for patent reform legislation (May 16, 2005)
• An early action problem under first to file (or Second Action Surprise — you lost the race!) (May 12, 2005)
• Predictions on content and time frame of coming reform bill (May 11, 2005)
• Dear Congressman: Please use the Promote the Progress blog as a resource and a communications tool during the legislative process on patent reform (May 9, 2005)
• Reforms to include longer patent terms? More on Cnet, Feinstein and Levi Strauss (May 2, 2005)
• Second House oversight hearing on patent reform – two quick takes (April 28, 2005)
• On the Senate side: Summary of patent reform hearing of the Subcommittee on Intellectual Property (April 26, 2005)
• Dudas opens Senate reform hearing: Our responsibility is to perfect and educate (April 25, 2005)
• House oversight hearing on draft patent reform bill: What did we learn? (April 21, 2005)
• Draft patent reform bill circulated in support-shopping — don’t sweat the details just yet (April 18, 2005)
• Microsoft patent reform ideas – largely in-line with AIPLA proposals (March 11, 2005)
• Two take home lessons from Town Hall meeting on patent reform (March 7, 2005)
• A patent reform primer (February 3, 2005)
• Senator Norm Coleman to introduce COMPETE Act: The return of anti-fee diversion (January 25, 2005)
• Late term bill proposes several patent law reforms, including post-grant opposition of patent claims (December 20, 2004)
• Patent Office report to Congress on inter partes reexamination suggests changes and highlights need for expanded post grant review system (December 17, 2004)

Recommended readings from other blogs

• Patently-O (Dennis Crouch)
• Patent reform: Congress choosing sides (May 25, 2005)
• Does the Constitution provide for a right to an injunction in patent cases? (May 18, 2005)
• Patent Reform: Injunctions only when money is not enough (April 18, 2005)
• Patent reform: Overturn Eolas v. Microsoft (April 18, 2005)
• Patent reform: Proposed changes allow assignee to file patent application (April 18, 2005)
• Patent reform: House IP Subcommittee prepares sweeping patent law changes (April 17, 2005)
• The Invent Blog (Steve Nipper)
• Patent reform: Do small entities support the status quo? (May 26, 2005)
• Constitutional argument against changing injunctive relief (May 18, 2005)
• Patent reform guide for small entities (May 26, 2005)





Sponsored Links: Business-Grade Clustered Scalable Web Hosting






Posted by J Matthew Buchanan at 05:07 PM | Permalink | TrackBacks (1)