IPO Daily News™
Friday, December 6, 2013
U.S. HOUSE PASSES MAJOR PATENT LITIGATION BILL
Yesterday the U.S. House of Representatives passed H.R. 3309, the patent litigation bill introduced in October by Judiciary Committee Chairman BOB GOODLATTE (R-Va.), by a vote of 325 to 91. The lengthy bill is intended to deter frivolous patent suits. It now goes to the Senate. Four amendments were adopted yesterday and four were defeated. The amendments adopted are discussed below.
To date, the IPO Board of Directors has supported limited statutory changes relating to patent litigation in these main areas: (1) awards of attorney fees, (2) pleading standards, (3) stays of suits against customers, and (4) disclosure of real parties in interest. The board may take positions on additional issues in coming weeks.
IPO opposed two provisions that were in H.R. 3309 when it was introduced but are no longer in the bill:
• An expansion to the covered business method patent review created by Section 18 of the America Invents Act, which was removed from the bill during committee mark-up;
• A provision that would have repealed 35 U.S.C. § 145, which was removed by amendment yesterday striking the section from the bill. See below.
AMENDMENTS IMPOSE REQUIREMENTS FOR DEMAND LETTER SENDERS, PRESERVE PATENT APPLICANT RIGHT TO CHALLENGE USPTO REJECTIONS IN DISTRICT COURT
An amendment offered by Rep. JARED POLIS (D-Colo.) on demand letter requirements was adopted by voice vote. It was similar to Polis’s recently introduced bill H.R. 3540 and required certain letter senders to disclose detailed patent information to the USPTO; created a demand letter database at the USPTO; and required certain information to be included in all demand letters.
An amendment strongly supported by IPO was offered by Rep. DANA ROHRABACHER (R-Calif.) to strike Section 9(a) from the bill. Passage of the Rohrabacher amendment preserved a patent applicant’s ability under 35 U.S.C. § 145 to challenge USPTO decisions in district court. Section 145 has been a part of U.S. law since 1832. The amendment was backed by Rep. ZOE LOFGREN (D-Calif.) and passed handily be a margin of 216 to 156. It was proposed originally in the Judiciary Committee by Rep. HAKEEM JEFFRIES (D-N.Y.).
A manager’s amendment offered by Goodlatte was adopted to make largely technical changes. An amendment by Rep. SHEILA JACKSON LEE (D-Texas), also adopted, required the USPTO to study the impact of the bill on certain individuals and small businesses.
NEXT UP, SENATE JUDICIARY WILL EXPLORE ABUSIVE PATENT LITIGATION
On December 17, the U.S. Senate Committee on the Judiciary will hold a hearing titled “Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse.” The hearing is expected to focus on patent litigation bill S. 1720, introduced on November 20 by Sen. PATRICK LEAHY (D-Vt.), chairman of the Judiciary Committee. It will be at 10:00a.m. ET in Room 226 Dirksen Senate Office Building and will be webcast. IPO Daily News will publish more materials on patent litigation bills in coming days.
USPTO TO HOLD BIOTECH, CHEMICAL PARTNERSHIP MEETING
On December 9 from 8:30a.m. to 2:45p.m., the USPTO is hosting a Biotechnology, Chemical, and Pharmaceutical Partnership meeting in Alexandria, Va. Topics for discussion include the recent U.S. Supreme Court decisions in Bowman v. Monsanto and Association for Molecular Pathology v. Myriad Genetics and developments in the patent prosecution highway program. The meeting will be webcast.
IP NEWS CLIPS — Compiled from newswires and other sources:
Media Reports on House Passage of Patent Litigation Bill
Law & Advocacy
Friday, December 6, 2013
IPO WRITES TO USPTO ON DRAFT 2014-2018 STRATEGIC PLAN
Yesterday IPO President RICHARD PHILLIPS sent a letter to the USPTO commenting on the Office’s draft 2014-2018 strategic plan. IPO generally supported the USPTO’s overall strategic goal to optimize patent timeliness and quality. IPO suggested, however, that the Office consider whether further reduction in the unexamined application backlog is the highest priority given the significant increases in the number and pendency of RCEs and ex parte appeals. IPO also recommended that significant attention and resources be devoted to training examiners, especially in emerging technologies and relevant case law, and to reducing existing processes that delay patentability determinations.
IPO’s U.S. Patent Office Practice Committee assisted with the letter. The chair is GARY GANZI (Siemens Corp.). Co-vice chairs are WILLIAM SMITH (Woodcock Washburn), COURTENAY BRINKERHOFF (Foley & Lardner), and ERIKA ARNER (Finnegan). For more information on this committee, click here. To sign up for one of IPO’s standing IP committees, visit www.ipo.org/committeesignup.