Now that S.1145 is heading into the final stretch, more and more position letters are being sent to congressional members and fellow practitioners, voicing support and opposition to specific provisions of the Act.
Bush Administration Letter:
Yesterday, the Assistant Secretary of Commerce for Legislative and Intergovernmental Affairs Nathaniel F. Wienecke voiced the Administration's strong opposition to damages apportionment and to express support for "Applicant Quality Submissions" (AQS) and a "second window" for oppositions.
Regarding damages, the Administration indicated that apportionment would be a "deal killer." Quoting from the letter, "[t]he 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 . . . The Administration does not believe it advisable to create a statutory directive to courts that requires them to rigidly apply, in all cases, only one of the several broadly accepted factors now evaluated by the courts."
On the Applicant Quality Submissions (i.e., mandatory examination support documents), the letter states; "[t]he Administration strongly supports the bill's provisions to promote patent applicant quality submissions. As our patent system confronts increasingly complex technologies, it is critical that patent applications contain basic high-quality information as a requirement, not an option" (emphasis added).
On post-grant oppositions, the letter states:
While we support the structural approach to post-grant review as outlined in S. 1145 (including having a first window of opportunity to challenge a patent within one year of grant, and having a second window throughout the patent life, triggered by a timely notice of infringement and threat of significant economic harm), we believe that improvements are required to make the bill's post-grant procedures more effective, efficient, and manageable. For example, the threshold standards for access to both the first and second-window challenges need to be clarified. Further, the efficiency of the procedures would be improved by applying the estoppel effect for first-window reviews to "issues actually raised," and to "issues that were or could have been raised" for second-window reviews. This will help protect patent holders against claims that are not raised in a timely and appropriate manner. (Emphasis added).To view the letter in its entirety, click here (link)
PubPat Letter Supporting Inter Partes Reexamination:
Yesterday, Dan Ravicher from PubPat opposed the "second window" of oppositions, and expressed support for continuting inteer-pertes reexaminations:
While a Post Grant Review procedure could provide a way to achieve our public interest goals, the form of Post Grant Review currently proposed in the Senate's bill is a woefully inadequate substitute for reexamination because it would only permit us to question the validity of issued patents within twelve months of issuance. (We are not commercial actors, and thus would never be threatened with infringement, a requirement to request Post Grant Review after twelve months.) Since the true effect of a patent on the public is frequently not realized until well after the first year of its term, there would be no way for us to then have any concerns we may haveRead the letter here (link)
regarding its validity addressed. For these reasons, we favor the Patent Reform Act passed by the House last year (H.R. 1908), which, while also creating a Post Grant Review procedure, actually strengthens reexamination.
Licensing Executives Society (LES) Sample Opposition Letter
The president of the LES communicated in a recent bulletin that approximately 52% of LES members believe that damages apportionment will inhibit innovation. 40% belive that it will fairly apportion the economic value of patents, while 8% believe that the limitations would promote innovation. In a sample "Dear Senator" letter to Congress, the LES has provided language through which appropriate members can express their concerns. An excerpt of the letter is provided below:
As a member of the Licensing Executives Society USA and Canada (LES), I am fortunate to work in a profession that is driven by the innovation and creativity that have shaped the U.S. economy for over 200 years. However, I’ve been troubled by recent debate on the future of the patent system and urge you to seriously consider the consequences some of the significant changes included in legislation currently under consideration. S. 1145, the Patent Reform Act of 2007, includes significant changes to the incentive system that has fueled the American innovation engine, and we should think carefully before making such sweeping changes to this critical source of economic prosperity.
Kaptur Letter to Attorney General Mukasey
Unless you've been living in a hole, you've heard of Microisoft's $44.6B offer to buy Yahoo!. What does this have to do with patent reform? According to U.S. Representative Marcy Kaptur (D-OH-9), there's a connection. In a letter dated February 1, 2008 Kaptur states: "Microsoft is seeking to fundamentally transform the treatment for those entities that infringe on the intellectual property of other innovators by minimizing the damages the victim could receive and to ensure that the potential for harassment would extended dramatically by allowing for virtually endless attacks on patent validity. "
Read the letter here (link)
Wegner Article on Interlocutory Appeals and Cybor
Hal Wegner circulated the following email yesterday, pointing out that, with all the attention being given to damages apoprotionment, the provision for interlocutory appeals also has its own messy baggage to deal with. From the email:
Leahy S. 1145 to many appears to be only about “damages apportionment” – or so its seems from the flurry of activity concerning this most controversial provision. Lost in the weeds is the coup attempted on the Federal Circuit whereby a trial judge would be able to shunt essentially all patent infringement cases to the Federal Circuit for a one year or so breather: The trial court would – per S. 1145 – issue a quickie claim construction and certify the case to the Federal Circuit for an interlocutory appeal which would necessarily be heard by the Federal Circuit; a year or so later, the case would ping pong its way back to the trial court.View Wegner's Article here (link).
Legislatively Overrule Cybor, a Cleaner Solution: If Congress does want to cure the Cybor disease, a far better solution would be to simply legislatively overrule Cybor, a decision long overdue for repeal.