Maryland Intellectual Property Law Blog : Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     Hat tip to Philip Brooks for noting the upcoming Bio/Pharmaceutical Summit on Intellectual Asset Management Strategies to be held in Baltimore, MD, on January 20-21, 2009.  The Summit's organizer, The Center for Business Intelligence (CBI), plans a two-day, CLE-available conference that includes workshops covering the Hatch-Waxman Act, the MMA, the USPTO and expectations for patent reform, and conference presentations covering antitrust law and LCM, the expected implications of the EC Pharma Inquiry on Industry, tips for assessing your patent portfolio to assign value and identify risks and opportunities, and many others.

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     Below are links to and highlights of recently published blog posts discussing current events relating to the Patent Reform Act of 2007 (s.1145). It appears from all accounts that Sen. Arlen Specter (R-Pa.), ranking minority member of the Senate Judiciary Committee, and his Republican caucus, may block pending patent reform legislation until there is a "fair and equitable treatment" on the confirmation of federal judges, and resolution of provisions concerning apportionment of damages for patent infringement.

• Patent Bill Hits Impass in the Senate, Wall Street Journal (April 18, 2008)

     Gret Hitt, noting that Patent Reform efforts appear to be stalled in the Senate due to an impass over provisions in S. 1145, quotes Sen. Leahy, Chairman of the Judiciary Committee, as saying, "This was a missed opportunity."

• S.1145: "Not dead, but on ice", IPBIZ (April 17, 2008)

     Quoting a Reuters report, Lawrence Ebert points out that Barack Obama and his patent advisor, Mark Lemley, favor patent reforms, while U.S. trade unions oppose the bill.

• US Patent Reform Stalls as Senate Negotiations Break Down, IP Watch (April 15, 2008)

      Describes how Sen. Leahy's plan to bring s.1145 to a vote was derailed when he failed to agree on several provisions with the panel’s ranking member, Sen. Arlen Specter.

• Cracks Forming in the Passage of Patent Reform Act, 271 Patent Blog (April 9, 2008)

     Peter Zura, one of the first to blog that Sen. Specter was pulling his support for s.1145, quoted a report stating that the Senator "cannot join" his colleagues "on some parts of the bill," citing apportionment of damages as a "principle sticking point."

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     A search of Google© on February 4, 2008 (Monday) using the search terms "patent reform" and the date limiter "last 24 hours" returned "about 13,400" hits.  That compares to 15,400 hits for the entire previous week (same search terms, but using the date limiter "last week").  The 24-hour statistic is interesting, because the time period included Super Bowl Sunday when, presumably, even the most staunch advocates for and against patent reform took time off to watch the big game. Today, a search for "patent reform" and "last 24 hours" returned 14,600 hits. Clearly, reporting about patent reform efforts has increased on the Internet. This may be due to the fact that this week and next are considered by many to be the home stretch before the Senate votes on its current version of S.1145, the Patent Reform Act of 2007.

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     The following Notice concerning patent reform was posted on the USPTO website today. Clearly, the Bush Administration is concerned about a potential vote on the Senate's version of the Patent Reform Act of 2007 (S.1145), which was placed on the Senate Calendar in late January. In a letter to Sen. Leahy, dated today, Nathaniel Wienecke, Assistant Secretary of Commerce for Legislative and Intergovernmental Affairs, writes:

"The Administration continues to oppose Section 4, "Right of the Inventor to Obtain Damages." Consequently, we continue to oppose S. 1145 - in its entirety - unless Section 4 is significantly revised, as we believe the resulting harm to a reasonably well-functioning U.S. intellectual property system would outweigh all the bill's useful reforms.

* * *

"Downstream litigation costs can be minimized through patent clarity - offered through such early elucidation mechanisms as applicant quality submissions and post-grant procedures. Flexibility in assessing damages ensures that results can be tailored, avoiding a "one-size-fits-all" approach that pleases no one."

     The entire Notice, which involves a media call tomorrow, is after the jump...

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• IPO Predicts Senate May Attempt to Pass Patent Reform Bill in February

According to the Intellectual Property Owners Association website earlier this week, the "IPO believes Sen. Patrick Leahy (D-VT) will attempt to pass a revised version of S. 1145 [the Patent Reform Act of 2007] in the Senate in February. Major amendments likely will not be available more than a few days in advance of Senate consideration. It is unclear whether the Senate has the votes to pass a bill. If the Senate does pass a bill, it likely will be sent to the House for swift passage by the House without amendments, eliminating the need for a Senate-House conference." 

See this earlier post that discusses some of the obstacles to major patent reform.

• Chart Compares Senate and House Versions

Thanks to lawyer Mark Walters over at the Washington State Patent Law blog for pointing out a useful side-by-side comparison of the House and Senate versions of patent reform legislation currently pending in Congress. The comparison, in the form of a chart, was apparently put together by Foley Hoag last year (so it does not benefit from the Senate's recent Judiciary Committee report) and is available from the Licensing Executive Society website.

• Patent reform comparisons on this blog

     For coverage and comparisons of the patent reform legislation on this blog, see the following previous Patent Reform Act posts: Part 8: Attorney misconduct; Part 7: Submission of prior art search reports; Part 5: 35 U.S.C. § 103(a) (Part II); Part 4: 35 U.S.C. § 103(a) (Part I); Part 3: 35 U.S.C. § 102(a).

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     Several sources (see 271 Blog, for example) are reporting that another obstacle facing patent reform was overcome yesterday when the Senate Judiciary Committee reported on S. 1145, the Patent Reform Act of 2007. According to the Intellectual Property Owners Association (IPO), the "106-page draft report explains in depth the provisions of the bill as approved by the Senate on July 19, 2007, but does not contain any new or compromise provisions."

     So, will patent reform actually happen this year, as some predict? Gene Quinn over at the PLI Blog notes that "patent legislation usually has a gestation period of between 2 to 3 years, and given that Congress began working seriously on some form of patent reform in 2005 the timing is right." On the other hand, industry associations, individuals, and other stakeholders have been pulling Congressional ears in different directions as long as patent reform legislation has been around, so I'm not sure that we'll see significant patent reforms, especially when you consider that several contentious provisions are still present in the Senate bill. However, it seems likely that at least some reforms will be seen this year, as long as Congress doesn't wait too long and get distracted by the election cycle, and some of those anticipated "compromise provisions" make their way into the legislation before the Senate votes.

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     Peter Zura suggested in his article "R.I.P. Patent Reform" (271 Patent Blog) that the Senate will not take action on the Patent Reform Act of 2007, S. 1145, this year. His prediction is based on comments by Matthew Sandgren, counsel to Sen. Orrin Hatch (R-Utah), that were presented at a speech in Washington, D.C. in early November. Peter noted that the biggest sticking points preventing a full Senate vote today are the second window of post-grant review and apportionment of damages provisions. The FDANews Drug Daily Bulletin for Nov. 19, posted a similar summary of Sandgren's comments. The Intellectual Property Owners Association reportedly expects the Senate will consider patent reform in February 2008. 

     The BNA Daily Report for Executives, Nov. 7 and 16, 2007 (subscription required), and other sources suggest that the following stakeholders have been or are still opposed to portions of the Patent Reform Act, and many may continue to yield as much influence as possible to win over Senators: the venture capital industry (at least 30 members who sent Senators a letter earlier in November); Innovation Alliance; American Bar Association's Intellectual Property Law Section; AFL-CIO; Paul R. Michel, Chief Judge of the U.S. Court of Appeals for the Federal Circuit; The Patent Officials Professional Association (the union representing patent examiners); Coalition for 21st Century Patent Reform, whose members include the American Intellectual Property Law Association, as well as companies from the manufacturing, information technology, consumer products, energy, financial services, medical products, pharmaceutical, and biotechnology industries.

     Of course, there are many in favor of the current bill, and would love to see an up vote sooner rather than later. Certain technology companies strongly back patent reform legislation because of provisions they see as leveling the playing field in lawsuits brought by non-practicing entities and so-called "patent trolls."

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New PTO Rules

Patent practitioners and others are keenly aware of the looming effective date for the new "claims and continuation" practice rules (November 1st, in case you forgot). Here are what people are saying about the pending rules.

• Peter Weissman at Blank Rome suggests that "[i]t may be prudent to describe patentably “distinct” subject matter in separate applications rather than combining common subject matter in a single application. This could support an argument that the claims are truly patentably distinct"
  
  
• Dr. Charles F. Louis, Vice Chancellor for Research, University of California, Riverside said in testimony before the Senate Judiciary Committe "any rules promulgated by the U.S. Patent and Trademark Office that make it more burdensome and expensive for universities to obtain patents on their inventions, such as the new claims and continuation rules, would be detrimental to university technology transfer." (Source: IPWatchdog)
  
  
• Hal Wegman at Foley notes that "[i]f cloture is voted by the Senate on patent reform and ultimately patent reform includes the House-passed version on delegation of rulemaking authority, whatever happens in the near term on Continuation Rules will be superseded by the new law. Yet, the great bulk of the focus of the patent community is on the sideshow in Alexandria." (Source: PatentHawk)
  
  
• That "sideshow" includes GlaxoSmithKline's Motion for Temporary Restraining Order and Preliminary Injunction to halt implementation of the new PTO rules. A hearing on GSK's motion is set for October 31, 2007.

Favorable Patent Lawsuit Forums

Move over Eastern District of Texas, more and more other districts are being eyed as the place to file patent lawsuits, especially since patent reform will make it harder to go forum shopping. Take the Western District of Wisconsin, for example, mention of which continues to be linked with terms like "speedy justice."  The Wisconsin court boasts a filing-to-trial time of 11.3 months, which compares to a pokey 12 months at the Eastern District of Virginia (the average, in case you're wondering, is about 22 months, so says Dewey Ballentine co-authors last year in an IPToday article).

Patent Reform

It's no secret that the bio industry is against patent reform. At last week's 2007 Mid-Atlantic Bio Conference, held in Bethesda, MD, a representative from the Biotechnology Industry Organization (BIO) made the organization's views plainly clear in a presentation about patent reform legislation. Saying that bio was being thrown in front of the bus to save the IT industry, BIO urged member organizations to call their Senators to fight passage of the legislation.

Tired of Trademark Oppositions? Call Your Senator

In an opinion issued last week relating to a lawsuit against the PTO, the Fourth Circuit Court of Appeals overturned an Eastern District of Virginia decision, effectively sanctioning the practice used by Montana Congressmen of using the political appropriations process to halt the registration of the trademark THE LAST BEST PLACE, which was being sought by a Nevada company. Hopefully, I'll have more on this later (here's a preview: "Senate approves ‘Last Best' measure").

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Summary:  Patent Reform Act of 2007 would require courts to forward the identify of registered patent practitioners to the Patent Office if practitioners' conduct is linked to an act of inequitable conduct.

     It's not everyday that patent agents and attorneys registered to practice before the U.S. Patent & Trademark Office are found to have committed inequitable conduct by a court of law, despite the fact that inequitable conduct is "indiscriminately pled in nearly every case" as a defense to patent infringement (AIPLA Reports 2007). Nevertheless, patent reformers in Congress have proposed new provisions to the Patent Act, as shown below, which require the Patent Office to consider "appropriate disciplinary action" under 35 U.S.C. § 32 where inequitable conduct is attributed to a registered patent attorney:

"ATTORNEY MISCONDUCT- Upon a finding of inequitable conduct, if there is evidence that the conduct is attributable to a person or persons authorized to practice before the Office, the court shall refer the matter to the Office for appropriate disciplinary action under section 32, and shall order the parties to preserve and make available to the Office any materials that may be relevant to the determination under section 32."

That excerpt is from Section 12 of the Patent Reform Act of 2007, H.R. 1908.

     In case you're a patent practitioner and haven't read section 32 since your patent bar exam days, it says:

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     The table below shows how Maryland was represented on the House floor during yesterday's vote on passage of H.R.1908, the Patent Reform Act of 2007. 

Comments:

• To see how other legislators voted, click on Final Vote Results for Roll Call 863
  
  
• The see the resolution that was approved by an earlier vote, click on House Report 110-319
  
  
• Click on the Patent Reform Act link to the right for more on this topic

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