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February 7, 2009

Court Reform

The Coalition for 21st Century Patent Reform is working "to secure enactment of recommendations in the 2004 report of the National Academies of Science (NAS)." Disappointed with Congressional efforts the past few years, and the USPTO, the lobbyist is declaring victory in light of recent court cases. "The patent law changes that have occurred since 2004 suggest that the courts--not the legislature--should be entrusted with many of the patent reform topics that have been considered."

From the Coalition's statement for the 111th Congress:

There is a perception that the performance of the United States Patent and Trademark Office has deteriorated during the past four years. The Office has become progressively less able to complete the examination of pending patent applications in a timely manner. As a result, it has amassed a large and growing backlog of unexamined patent applications. In addition, the quality of patents has been questioned by the media and certain stakeholders, leading to the perception that patent protection is not being appropriately granted to deserving inventions. In short, the need to address the core mission of the Office has never been more urgent.

In contrast, the responsiveness of the courts to issues arising in litigation has been no less than remarkable during the past four years. In Seagate, treble damage awards were limited. In ATT v. Microsoft, offshore infringement liability was reined in. In Volkswagen, a venue abuse was addressed. In Bilski, the criteria for patenting "business methods" were clarified. In eBay, the traditional four-factor test was confirmed as the appropriate test to use when considering the grant of an injunction under the Patent Act. In KSR, the non-obviousness standard was reinforced. In brief, the courts have gone a long way towards eliminating any need for Congress to address these issues--some of which had been the subject of controversial legislative proposals over the past four years.

Howrey attorneys William C. Rooklidge and Alyson G. Barker penned a report (summary) on recent developments in this country's patent regime, with the view "that the courts--not the legislature--should be entrusted with many of the patent reform topics that have been considered."

The report was written because the authors "are watching the patent reform efforts in the new Congress heading in the same failed direction as they have in past years, and to generate debate on the sensible allocation of reform efforts between the legislative, judicial and executive branches." The Coalition seized upon the report for its own recommendation.

In addition to other issues covered in the above statements, Rooklidge and Barker praise the end of "forum shopping," largely foreclosed by In re Volkswagen and In re TS Tech, and restricting inequitable conduct charges (Star Scientific v. RJR).

Regardless of one's position, it is undeniable that the Rooklidge/Barker Report is thoughtful and well-researched. Recommended reading. [Many of the links provided in this entry cast a less glowing light on the court decisions discussed in the report, as well as the 2004 NAS study.]

The Coalition for 21st Century Patent Reform is a broad-based group, including the American Intellectual Property Law Association (AIPLA), drug companies such as Eli Lilly, Merck, Pfizer, and GlaxoSmithKline, and various manufacturers, including General Electric, Caterpillar, Corning, Procter & Gamble, 3M, Motorola, and Texas Instruments.

[Note: This entry was edited to incorporate new material from Ms. Alyson Barker. Thanks for the clarification, Alyson.]

Posted by Patent Hawk at February 7, 2009 11:46 PM | The Patent System


Bravo. It has been said over and over that the statutory provisions (like 102) are as simple as they could ever be, while remaining compatible with "First to Invent". If FtI is untouchable, then send the politicians home and ask the judges to concentrate on going back to basics and keeping things simple. At least then we can stop arguing about harmonisation. Let the rest of the world standardise on one model (and note how Chinese patent law is progressively approximating ever closer to the European model) while the USA perfects its different model. Industry can cope with just two models, and individual US inventors can stay with their cherished FtI.

Posted by: MaxDrei at February 8, 2009 3:00 AM

Ask not what you can do for your country, Ask what you can do for the Coalition.

Mr. Gore and Blago-chov, tear down that patent system.

What's good for the Coalition, is good for America.

... Stand beside her, and guide her, through the nights with the blights from the Coalition ...

Posted by: step back at February 8, 2009 4:11 AM

Step Back said, "Ask not what you can do for your country, Ask what you can do for the Coalition."

What's wrong with the Coalition for 21st Century Patent Reform?

[It's an honest question... the C21 companies do real research/innovation, rely on patents, and have opposed the agenda of the non-innovative copycats corporations/Asian-goods-marketers in the Coalition for Patent Fairness (CPF) at every turn.]

Posted by: NIPRA anonymous at February 9, 2009 6:11 AM

There are all sorts of Coalitions for special interests.

There is a Coalition for "Fairness".
There is a Coalition for "the 21st Century".
No doubt there is a Coalition for "the 14th Century".

The question though is, should you put any Coalition ahead of what is good for your country?

Posted by: step back at February 9, 2009 10:23 AM

Wow, Step Back, you skirted an honest question? Intellectually dishonest, as was your misleading question.

Posted by: NIPRA anonymous at February 9, 2009 11:03 AM

Skirted? Not really. Coal. for Fairness reps special interests of Big IT. Coal. for 21 includes special interests of Big Pharma & thank goodness they are pro-patent to extent it serves their purposes. (Look at who funded law suit against PTO re continuation rules. If not for Glaxo, small inventors would have been steamrollered over.) But each "Coalition" is special interests of Big Business. It takes big money to form a Coalition, thus freezing the little guys out of having any voice in this so-called Democracy. You may be one who accepts on the basis of ideological faith that what is good for GM is good for America. I like to step back and question such dogma. So I skirted the question? No. Sorry. It's you who misses the forest due to love for one of the trees. Don't hug that 21st Coal. tree so tightly. No hard feelings intended here. :-)

Posted by: step back at February 10, 2009 3:14 AM

Step Back, your silly question assumed the conclusion that you should have tried to prove, and then when pressed, you hand-waved and mumbled, "includes the interests of Big Pharma" as if that is in itself evil. Oooh, too inclusive.

By your logic, the only true Americans are the ones that never group together and always stay silent on the sidelines, like yourself perhaps. That is utter fallacy, and perhaps the ones who never group together are just selfish. If everyone had been like you, perhaps patent reform would have passed.

Widen you perspective Step Back, and stop talking down to people. Democracy only works because some people are willing to stand up for what they believe....

"Don't hug that 21st Coal. tree so tightly."

Again, you've assumed what you should have tried to prove (you're wrong again - I'm not in C21, it was an honest question), and you're again talking down to people, and you seem to have a very lofty attitude of yourself. Wow.

Posted by: NIPRA anonymous at February 10, 2009 5:28 AM