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"The time for change has come. The Patent Act of 2005, introduced by Rep. Lamar Smith, R-Texas, Chairman of the House Intellectual Property Subcommittee, goes a long way toward addressing many troubling aspects of the current patent system." Kelly C. Hunsaker, San Francisco Chronicle, August 30, 2005. "The bill, which Lutton expects will be approved in the next legislative session, would create the first significant changes to the patent law since 1952." National Law Journal, August 22, 2005. |
Since HR2795 was introduced in the House, we have heard rumors from the hill that that Senate was working on its own substantive bill. Rumor had it that the Senate was watching closely the activities in the House and would release a bill based in part on the House efforts. That day has come. On August 3, 2006, Senators Orrin Hatch (R) and Patrick Leahy (D), chairmen of the U.S. Senate's intellectual-property panel, introduced the first substantive Senate bill, S3818. The bill largely tracks the Smith Draft circulated on July 26, 2005, with the most notable exceptions being sweeping changes to the best mode, inequitable conduct, willfulness, post grant opposition, damages apportionment, venue and the prior art provisions. Unlike the Smith Draft, the Senate bill does not eviscerate the best mode requirement, but instead leaves it fully in tact. The bill also repeals Section 271(f) - a proposal not seen in the Smith Draft but introduced in the "Coalition" Print on September 1, 2005. Though the bill adds a second-window for post grant opposition that includes an estoppel provision, like the Smith Draft it lessens the estoppel provision of inter partes reexam deleting the language "or could have been raised." The result is that, under the bill, inter partes reexam will become a more viable option in litigation. The bill also rewrites the inequitable conduct and willfulness language from prior bills and drafts. It focuses damages apportionment not on the "inventive contribution" (HR2795) or "claimed invention" (Coalition Print), but rather on the "novel and nonobvious features" of the invention. The bill excludes the "reasonably accessible" standard for prior art introduced in HR2795 and dilutes the venue provision introduced in the Smith Draft, allowing a plaintiff to bring suit in the district in which it resides. The bill also introduces, for the first time, the concepts of fee shifting and interlocutory appeals of claim construction. Both proposals are generally pro-defendant as they would deter frivolous patent suits. As a package, the new proposals shift the risk of litigation toward the plaintiff and provide more certainty in patent cases.
Previous Speaking Engagements
November 3, 2006: Katherine Lutton participated in a panel entitled "Update on Patent Reform Legislation and Regulations" at the 31st Annual Intellectual Property Institute presented by the IP Section of the California State Bar in Santa Barbara, California.
October 24, 2006: John Pegram (New York) made a presentation on U.S. patent law reform before high officials of the Japan Patent Office during a meeting of the U.S. Bar - JPO Liaison Council in Berlin, Germany. Pegram participated in the meeting as delegate of the New York Intellectual Property Law Association.
October 23, 2006: Samuel Borodach, John Johnson and John Pegram (New York) presented a seminar on U.S. patent law and litigation developments in Osaka, Japan, in cooperation with the Kansai region Chamber of Commerce and the Oh-Ebashi Law Office. For more information (in Japanese) click here.
October 17 & 19, 2006: John Pegram (New York) presented on Willful Infringement at the American IP Law Association's "premeeting" with Japanese and European patent attorneys, and on the main AIPLA meeting program. For more information on AIPLA's main meeting, see this page.
October 12, 2006: Dorothy Whelan (Twin Cities) moderated a panel discussion on U.S. patent law reform. The seminar was sponsored by the Minneapolis/St. Paul Business Journal and Fish & Richardson.
September 15, 2006: John Pegram (New York) made a presentation on U.S. patent law reform before high officials of the European Patent Office during a meeting of the U.S. Bar - EPO Liaison Council in Berlin, Germany. Pegram participated in the meeting as delegate of the American Intellectual Property Law Association.
May 17, 2006: Katherine Kelly Lutton (Silicon Valley) co-chaired IP Law & Business' conference entitled "Innovations in IP Litigation: A Spring Briefing" in San Jose, California. Kelly Hunsaker (Silicon Valley) moderated a patent reform panel with panelists Peter Detkin (Managing Director, Intellectual Ventures), Michael Einschlag (Vice President, Intellectual Property, Nektar), Chip Lutton (Chief Patent Counsel, Apple Computer), and Derek Minihane (Senior Director, Intellectual Property Law and Assistant General Counsel, Altera Corporation).
April 21, 2006: Katherine Kelly Lutton (Silicon Valley) gave a talk entitled "Patent Reform Update: A Perspective" at Fish & Richardson's LEAD retreat held in Half Moon Bay, California.
November 29, 2005: Katherine Kelly Lutton (Silicon Valley) participated in the "Patent Reform: Two Sides of the Same Coin" panel during IP Law & Business' Winter Briefing in Washington, DC.
October 19, 2005: Dorothy Whelan (Twin Cities), Terry Stalford (Dallas), Stephen Fox (Dallas), "Patent Reform and Legislative Changes on the Horizon: What You Need to Know About the Changing Patent Process & IP Protection." The Belo Mansion, Dallas, TX. View the presentation.
Previous News
September 12, 2006: Redlined comparison of the Senate Bill with the Smith Draft - click here.
August 3, 2006: Sen. Hatch (R-Utah), chairman of the Senate IP subcommittee, introduces S.3818, a comprehensive patent law reform bill that differs from H.R. 2795 in several important aspects. The bill is co-sponsored by Sen. Leahy (D-VT). To read a statement by Sen. Hatch on the introduction of the "Patent Reform Act of 2006", click here.
May 19, 2006: Rep. Issa introduces H.R. 5418 to create a pilot program to enhance the expertise of district court judges hearing patent cases. To review a press release addressing the bill, click here.
April 5, 2006: Read new draft legislation (HR 5096) from Rep. Howard Berman (D-Calif.).
March 29, 2006: Read new draft legislation from Rep. Darrell Issa (R-Calif.).
Dec. 15, 2005: For the first time in 2005, the Senate formally addresses patent reform. Senate Bill 2109.
was introduced by Senators Ensign, Lieberman, Lugar, DeWine, Allen, Bingaman, Alexander, Chambliss, Bayh, Nelson (of Florida), Kohl, Cornyn, Isakson, Smith, Leahy, and Nelson (of Nebraska). The senators speak out in support of post-grant oppositions and better funding for the Patent Office. Though lacking the specificity of House Bill 2795, and the Coalition Draft currently in circulation, the Bill does address many of the same underlying concerns and goals.
Oct. 26, 2005: Compare patent reform bill versions with this chart
compiled by the Intellectual Property Owners Association (IPO).
The Bill: Currently the only bill officially introduced into Congress is H.R. 2795. Read the most recent coalition draft of the legislation.
Sept. 15, 2005: Fish & Richardson hosted Steve Pinkos, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, at a California Healthcare Institute (CHI) roundtable discussion on patent reform. Pinkos and leading representatives from a broad cross-section of the California life sciences community participated in an informative dialogue concerning a number of intellectual property and patent-related issues of importance to continued biomedical research and innovation. Key topics discussed included congressional efforts to undertake the most significant reform of U.S. patent law in over 50 years, ongoing work to address the growing patent application backlog and end the diversion of user fees, and the growing concern over global IP theft. The event was hosted on Fish & Richardson's San Diego campus and Katherine Lutton from Silicon Valley moderated the discussion. For CHI's position statement on patent reform, click here.
Sept. 15, 2005: The House Committee on the Judiciary held hearings on HR 2795. Click here to read witness testimony from Emery Simon (The Small Business Software Alliance), Philip S. Johnson (Johnson & Johnson, on behalf of PhRMA), Robert B. Chess (Nektar Therapeutics, on behalf of BIO), and John R. Thomas (Georgetown University Law Center).
Sept. 1, 2005: On September 1st, the Coalition for 21st Century Patent Law Reform--a coalition of major US corporations, released the coalition draft--a marked-up copy of the Smith Draft.
July 26, 2005: AIPLA mark-up of HR 2795 with proposed amendments and a mark-up from Congressman Lamar Smith (R-TX).
Listen to the hearing webcast.
June 28, 2005: Anti-fee Diversion Bill Sent to Full House Judiciary Committee Without Amendment The Patent and Trademark Fee Modernization Act of 2005 (H.R. 2791), introduced in the House on June 8, 2005, would end the incentive for fee diversion by establishing a fee refund system for fees collected that exceed PTO appropriations, but would allow the PTO to make rules governing how those refunds will be allocated. H.R. 2791 would also extend a program to outsource patent searches. For more insight on fee diversion, read Fish & Richardson Principal David Feigenbaum's remarks in The Boston Globe.
June 13, 2005: IP Law Bulletin: Federal Judges Urge Caution On Patent Reform.
May 13, 2005: Another anti-fee diversion bill, the COMPETE Act
(S. 1020) was introduced in the Senate on May 13, but has not seen any further action in Congress since its introduction. In contrast to the fee refund system of H.R. 2791, S. 1020 would avoid fee diversion using a fee reduction system.
Fish in the News
August 30, 2005: San Francisco Chronicle editorial item by Kelly Hunsaker strongly criticizing the redefinition of "prior art"
in the patent reform bill. Click here to see the article.
August 22, 2005: National Law Journal Article in which Katherine Kelly Lutton is cited. Click here to see the article.
Resources & Links
June 14, 2005: Senate Committee on the Judiciary Subcommittee on Intellectual Property hearing on "Patent Law Reform: Injunctions and Damages" click here.
April 28, 2005: House Oversight Hearing on the "Committee Print Regarding Patent Quality Improvement." (Part II) click here.
April 25, 2005: Senate Judiciary Committee, "Perspectives on Patents"
click here.
April 20, 2005: House Oversight Hearing on the "Committee Print Regarding Patent Quality Improvement." (Part I) click here.
April 14, 2005: The Subcommittee on Intellectual Property of the United States House of Representatives published a bill that would make several significant changes to federal patent law.
April 14, 2005: House Judiciary Committee Bill - Committee Print ("Patent Act of 2005") download pdf.
The Intellectual Property Owners association tracks all legislation affecting intellectual property rights. To link to the bills IPO is tracking, click here.
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For more information contact:
Kathi Kelly Lutton
650-839-5084
lutton@fr.com
Kelly Hunsaker
650-839-5077
hunsaker@fr.com
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