The Patents Depend on Quality Act of 2006 - A recycled bill with a narrow approach to patent reform
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.
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.