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“Views on the New (or Pending) Patent Reform Legislation”
AIPLA Annual MeetingOctober 18, 2007
Gary L. GriswoldPresident and Chief Intellectual Property
Counsel3M Innovative Properties Company
Chair, Steering Committee of the Coalition for 21st Century Patent Reform
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Patent Reform Act of 2007
318 Industries Represented
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NAS Report (April 2004) – “A Patent System for the 21st Century” 7 recommendations
1. Preserve Unitary, Flexible Patent System2. Reinvigorate Non-Obviousness Standard3. Institute Open Review (Post-Grant) Procedure4. Strengthen USPTO Capabilities5. Provide Research Exemption6. Modify or Eliminate Subjective Elements of
Litigationa) Inequitable Conductb) Best Modec) Willful Infringement
7. Foster Harmonization
The Playbook
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But landscape is changing…
The Supreme Court, Federal Circuit and PTO Have Jumped In
Injunctions eBay
DJ Jurisdiction MedImmune
271(f) Microsoft
Obviousness Standard KSR
Willful Infringement Seagate
PTO Claims & Continuation Rules…
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2007: Bicameral and Bipartisan
H.R. 1908, S. 1145 “Patent Reform Act of 2007” Introduced April 18, 2007 Sen. Leahy (D) and Rep. Berman (D),
each with numerous original co-sponsors
Chairman Leahy
Senator Hatch
Chairman BermanCongressman Smith
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Key Provisions
HR 1908 S 1145
Passed Sept. 7, 2007
220-175
Mark-Up July 19, 2007
First-Inventor-To-File
Post-Grant
Inequitable Conduct
Best Mode
Willful Infringement
Damages
Venue
Interlocutory Appeals
Substantive Rulemaking
Applicant Responsibilities
3rd Party Submission of Prior Art
Fee Setting Plus No Diversion
Publication After 18 Months Conceptually Unacceptable
Amendments Needed
OKIncluded
Not Included
(NAS)
(NAS)
(NAS)
(NAS)
(NAS)
(NAS)
(NAS)
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The Players
NAS Focused Coalition for 21st
Century Patent Reform
Innovation Alliance Universities PhRMA BIO
Defense Focused Coalition for Patent
Fairness Business Software
Alliance Generic Drug Industry Financial Services
Roundtable
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Weighing In Chief Judge Paul Michel Administration ABA-IPL Section AIPLA IPO NAM AFL-CIO Communication Workers United Steel Workers Independent Inventors Venture Capital Medical Device Manufacturers Association
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Message from Senators
“I have friends on both sides and I always vote in support of my friends.”
“Please work this out.”
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Negotiations
BermanPre Mark-Up Post-Grant
Specter/Feinstein Process August to Present
Damages Coalition for 21st
Century Patent Reform Innovation Alliance Coalition for Patent
Fairness BIO Univ. of California Financial Services AAU
Leahy/HatchSeptember 24, 2007
All Issues Coalition for 21st Century
Patent Reform Innovation Alliance Coalition for Patent Fairness PhRMA BIO Financial Services AAU Venture Capital InterDigital Cisco GE Intellectual Ventures Motorola IBM Microsoft
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Key Provisions
HR 1908 S 1145
Passed Sept. 7, 2007
220-175
Mark-Up July 19, 2007
First-Inventor-To-File
Post-Grant
Inequitable Conduct
Best Mode
Willful Infringement
Damages
Venue
Interlocutory Appeals
Substantive Rulemaking
Applicant Responsibilities
3rd Party Submission of Prior Art
Fee Setting Plus No Diversion
Publication After 18 Months Conceptually Unacceptable
Amendments Needed
OKIncluded
Not Included
(NAS)
(NAS)
(NAS)
(NAS)
(NAS)
(NAS)
(NAS)
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We are the stewards of the Patent System
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Thank you
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Post-Grant [Senate Bill]
Serial attacks for the life of the patent.
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Inequitable Conduct Reform[Both Bills] This is a patent quality issue. Codifies - does not fix. The PTO Rule Changes have made
Inequitable Conduct Reform even more necessary.
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Damages The wrong comparison at the wrong time.[Both Bills]
“Claimed Invention’s specific contribution over the prior art.”
If not marked - 2, not 6, years of past damages.[Senate Bill]
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Venue [Senate Bill]
Takes away the right for traditional research, development and manufacturing companies to sue where they do those activities.
Allows foreign entity infringers to forum shop.
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Applicant Responsibilities[Both Bills] Mandatory search & analysis would
add an average of more than $4200 to costs of filing a patent application (AIPLA Report of the Economic Survey 2007)
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