Tuesday, March 03, 2009

Say Hello To 2009 Patent Reform - Dual Bills Introduced In House, Senate

As expected, new patent reform legislation was introduced today as identical bills in the House and Senate. Senator Orrin Hatch (R-Utah) joins Leahy as a co-sponsor of the Senate bill, while House Judiciary Committee Chairman John Conyers (D-Mich.) and ranking minority member Lamar Smith (R-Texas) are co-sponsoring the House version.

For the most part, the legislation is largely the same as 2008. According to Leahy, "[w]e kept the language the same because we want to start where we left off and give us something to work on."

The notable omissions in the latest draft include:

• No broad USPTO rulemaking authority
• No "Check-21" exemption;
• No "Applicant Quality Submission" provision that would have required all applicants to submit and characterize prior art searches;
• No "automatic publication" at 18 months for all applications;
• No provisions on inequitable conduct.

Highlights include:

"Hard" First-To-File Rule - providing no grace period, the first person to file gets the patent. Secret prior art (i.e., 102(e)) cannot be sworn behind.

Damage Apportionment - Damages are determined by looking at the invention’s “specific contribution over the prior art.” Also, reasonable royalties may be calculated by looking at the price of licensing a “similar noninfringing substitute in the relative market.”

Willfulness - Treble Damages will be limited to instances where the patent owner presents clear and convincing evidence that the defendant(s) acted with "objective recklessness" when infringing (intentionally copied, continued conduct that was not "colorably different" from previous infringement).

Reexamination - expands reexamination requests so that "any person at any time may file a request for reexamination by the Office of any claim on a patent on the basis of any prior art or documentary evidence."

Post Grant Review - "‘‘A post-grant proceeding may be instituted under this chapter pursuant to a cancellation petition filed under section 321 only if—‘‘(1) the petition is filed not later than 12 months after the issuance of the patent or a reissue patent, as the case may be." [as the case may be?]

Interlocutory Appeals - "of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.’’

Venue - ‘‘(1) where the defendant has its principal place of business or in the location or place in which the defendant is incorporated or formed . . . (2) where the defendant has committed substantial acts of infringement and has a regular and established physical facility that the defendant controls and that constitutes a substantial portion of the operations of the defendant; (3) where the primary plaintiff resides, if the primary plaintiff in the action is—‘‘(A) an institution of higher education . . . or (B) a nonprofit organization . . . or (4) where the plaintiff resides, if the sole plaintiff in the action is an individual inventor . . ."

While the chances of passage is unknown, there is a large chance that further and substantial revisions will be made. Co-sponsor Orrin Hatch commented at the news conference that "[w]e all agree that more work needs to be done."

Download a Copy of the draft here (link)

See

CNET - "Controversial provisions remain in patent reform bill"

Reuters - "Congress takes up patent redo, damages fight looms"

CNNMoney.com - "Congress To Try Again On Patent Reform"

5 Comentários:

Patent & Trademark Attorney said...

This isn't really news until something actually happens with it... every bill in congress regarding the patent system has failed. I don't expect this one to be any different.

Anonymous said...

"Reps Manzullo (R-IL) and Michaud (D-ME) issued a joint press release titled 'New patent bill encourages IP theft, destroys American jobs.'"

Reps Manzullo and Michaud are my new heroes. That at least some Democrats, along with Republicans, see the potential problems with this new version of so-called "patent law reform" as potentially costing American jobs and undercutting American global competitiveness is fair warning that this bill benefits the corporate Goliaths, not the innovative Davids. The corporate Goliaths certainly aren't going to create the jobs needed to bring American out of the current recession, but are (at least those in the banking and financial services world that created this mess) instead simply "sucking" money out of the so-called "stimulus" packages passed by the same Congressional characters who are supporting this new version of so-called "patent law reform."

Again, look at who is supporting this bill, the Coalition for Patent Fairness, a truly oxymoronic title for an organization that could care less if America's patent system goes down the toilet. CFPR, which whines continually about how the current American patent system is stacked against it, isn't going to create American jobs, but will simply increase the dominant position of the large computer/IT companies (who will continually cut American jobs). Also, could it be that these Congressional characters supporting this new version of so-called "patent law reform" pocketed funds from the Coalition for Patent Fairness? Again, this new version of so-called "patent law reform" will simply stamp out the Davids of Innovation, and with it the hope for job creation and global competitiveness in America. Anyone who believes otherwise is living in a dream world.

Anonymous said...

I said it before and I`ll continue to say it until, this crew,
(The Coalition for Patent Fairness) stops there attempt to perpetrate a hoax on the American public!!! The Coalition for Patent Fairness is a group of one hundred and fifty high tech companies. They are backed by the (Financial Round Table.) The Financial Round Table represents the countries one hundred largest banks. Data Treasury is suing these banks for patent infringement. A substantial number of banks have come to terms and have signed licensing agreements with Data Treasury. The banking industry has spent in excess of ONE BILLION DOLLARS to fight this case and to justify there illegal infringement .To date ,they have not won a single court battle. They attempted to buy there way out of this dilemma, with an unconstitutional amendment sponsored by Rep. Jeff Sessions. By the senators own admission " I don`t know how (the provision ) can pass a constitutional muster."

These banks, now have a serious financial problem. (*They are presently involved in a patent infringement lawsuit*). A finding of willful infringement, will subject the banks to treble damages. (Three times the amount, that a jury would award, as per existing patent legislation.) The potential cost to the banks! Billions of dollars! If passed, the amendment would have shift a one billion dollar expense, from the banks, to the American tax payer., By Senator Sessions own admission, "I don’t know how (the provision) can be modified to pass a constitutional muster. This Senator was attempting to add, an unconstitutional amendment, to the Patent Reform Bill. I question his motivation. I assure you, It had nothing to do with honesty, justice or a burning desire to perform his civic duty. The Senator stated," I think this has more to do with lobbyists, than it has to do with merit". ( Lets call a spade a spade). This action had to do with lobbyists, buying politicians! It had to do with, personal gain! It had to do with a lack of integrity! (It had nothing to do with merit!)

NOW THERE AT IT AGAIN ! ---Senate Minority Whip Jon Kyl (R-AZ) has recently introduced the latest Patent Reform Act (S3600). In it includes a "Check 21" exception. The latest Patent Reform Act (S3600). In it includes a "Check 21" exception (sec. 13, page 80): "WITH RESPECT TO THE USE BY A FINANCIAL INSTITUTION OF A CHECK
COLLECTION SYSTEM THAT CONSTITUTES AN INFRINGEMENT UNDER SUBSECTION (a) or (b) of section 271, the provisions of sections 281, 283, 284, and 285"

"SHALL NOT APPLY AGAINST THE
FINANCIAL INSTITUTIONS WITH
RESPECT TO SUCH A CHECK
COLLECTION SYSTEM"
Senator Jeff Sessions attempted this, and his attempt was deemed as being unconstitutional. Now you`re attempting the same thing again. First the unprecedented bank bale out. Now you`re attempting to grant the banking industry immunity from a billion dollar patent patent infringement law suit? Your motivation seems quite obviou$.
Although a small Technology Company named Data Treasury and its patents were not specifically mentioned, the intent of the exception is aimed directly at Data Treasury and its on going litigation against the banking industry for infringing upon its "Check Collection" remote image capture technology.

(*The case, Data Treasury VS. Wells Fargo, and numerous other banks, was filed on Feb 24,2006 and is still in progress.*)
It will continue in October of this year.
In the interest of honesty and justice ,let this issue be resolve in court!

(Coalition for Patent Fairness)
Not even in anyone's wildest
dreams, does this name fit!

(Fairness by definition)
FREEDOM FROM DISHONESTY
AND INJUSTICE.
ONCE AGAIN, WHO DO YOU GUYS THINK
YOU ARE FOOLING?

Inspector Cluseau.

principo said...

It came as no surprise that Senate Minority Whip Jon Kyl (R-AZ) (and apparently with a straight face) has recently introduced HIS Patent Reform Act (S610), a copycat of the Bill he proposed last September (S3600) in the wake of the failure of the other patent reform bill then pending in the Senate and contrary to (S515) and (HR1260) currently pending in Congress.
It again includes a "Check 21" exception (sec. 13,): "With respect to the use by a financial institution of a check collection system that constitutes an infringement under subsection (a) or (b) of section 271, the provisions of sections 281, 283, 284, and 285 shall not apply against the financial institution with respect to such a check collection system." Although a small Technology Company named Data Treasury and its patents were NOT specifically mentioned, the intent of the exception is aimed directly at Data Treasury and its ongoing litigation against the banking industry for infringing upon its "Check Collection" remote image capture technology.
Sen. Jeff Sessions originally sponsored this exception in the then pending reform bill, but he later withdrew his support expressing doubts about its legality. Kyl's proposal has one key difference from the one Sessions offered: It attempts to keep the federal government from shouldering any financial liability for blocking DataTreasury's pursuit of patent damages against the banks. Under Kyl's bill, the bank-immunity provision would be voided if a federal court found that the legislation amounted to a government "taking" of DataTreasury's patent rights. This exception, as written, pollutes a legitimate legislative effort with ex post facto and probably unconstitutional provisions having the lofty purpose of allowing banks infringing Data Treasury Patents to negate and or dramatically reduce the damages they face. So rather than face a jury, where they obviously fear losing, the banks decided to call on their friends in Congress for legal protection. So what was the purpose of his adding this exception with the Gov’t provision to the bill other than depicting a clear and crass example of who gets bought in Congress? Legislation should not be used to grant retroactive legal immunity to large corporations that willfully ignored the property rights of a small, innovative company. And no elected official who has pledged to maintain the integrity of our legal system should be a party to such a travesty. Senator Kyle by championing this exception should be made (with a clear answer devoid of spin) to explain why exactly, banks should be immune to patent law that applies to everybody else.

roger the free mormon ward choir music guy said...

looks like this version has "No "Check-21" exemption though...

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