Patent Law

Court Reform

By Gary Odom and Jordan Kuhn

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.

For the Coalition, 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."

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.

Full post as published by The Patent Prospector on February 08, 2009 (boomark / email).