Posts in Capitol Hill

It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key. Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

It will enhance the development and review of innovative new therapies through increased transparency and scientific dialogue, advancements in regulatory science and strengthened post-market review. It will also increase FDA’s access to external expertise to improve the drug review process. FDASIA will foster timely interactive communication with sponsors during the drug development phase as a core Agency activity to facilitate the conduct of efficient and effective drug development programs and help make safe and effective drugs available to the American public in a timely manner.

The inclusion of an enhanced Accelerated Approval pathway, crafted by Senator Kay Hagan (D-NC), will help expedite the development of modern, targeted, and personalized therapies for patients suffering from serious and life-threatening diseases while preserving the FDA’s robust standards for safety and effectiveness. Senator Hagan is to be congratulated for her hard work and leadership on this very important provision.

However, if prior users are keeping their technology secret while being protected, that leap-frogging from one breakthrough to the next be impeded. Disclosure is the backbone of the progression of the sciences for this reason. “[T]he ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure.” Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 151 (1989). Sharing ideas allows others to improve upon the state of the art and as a result, better products such as medicine and consumer electronics are brought to market thereby driving our economy and benefiting the welfare of the U.S. as a whole. Prior user rights, on the other hand, will inhibit this progression.

The troubling news starts with the fact that a technical amendments bill to the America Invents Act (AIA) that is working its way around Capitol Hill, and in true government by ambush fashion it could work its way into a bill at any time! What is the big deal about technical amendments? The problem is that not all of the amendments will be “technical.” For example, there is a plot afoot to change the estoppel provisions in the AIA relative to post-grant review and inter partes review. In my opinion there would have been absolutely no chance that the America Invents Act would have passed if the estoppel provisions for post-grant review only applied to issues actually raised.

Simply stated, the OPEN Act would be completely and totally ineffectual and, therefore, it must be opposed. There is simply no point in enacting more pointless legislation, we have enough pointless legislation already. Content creators cannot create in a vacuum devoid of economic reality. If you take eyeballs away and/or provide things for free that are supposed to be paid for you are causing injury and making it all the more difficult to be a content creator. Think about it for a second. The content that you most value, is that created by commercial enterprises or people just doing it for free as a hobby in their spare time? If you are honest with yourself we both know the answer.

To all those who can read the Constitution it has to be clear that the Supreme Court’s decision in Golan v. Holder is absurd. It is a ridiculous decision that lacks intellectual honesty and defies common sense. Further, the facts of this case provide ample ground for the suspicions of many who wonder why it is that the United States is so interested in losing its identity and compromising Constitutional principles in order to facilitate some ill conceived plan to join the world community. Simply stated, treaties and international law cannot trump the Constitution. With all due respect to the six Justices who ruled in favor of stripping works from the public domain, the Constitution does not support this decision and any attempts to argue to the contrary are insulting and show a contemptuous understanding of the history and role of intellectual property in America.

The Obama government restructuring plan is of particular importance within the patent community because it will affect the Commerce Department as well as five smaller agencies. As soon as I heard that my Spidey-senses started tingling. Wasn’t there something in the America Invents Act that applied only so long as the United States Patent and Trademark Office remained an agency within the Department of Commerce? Sure enough, there is. The new fee setting authority vested in the USPTO is contingent upon the Patent and Trademark Office remaining within the Department of Commerce.

There has to be some patent attorneys living in the portions of Montgomery and Prince George Counties represented by Congressman Van Hollen. There has to be some patent law firms in Dallas with ties to Congressman Hensarling and/or the 5th District of Texas. I know for sure there are patent attorneys in Ohio, Arizona, Massachusetts and Washington. These are the folks who are tasked with the burden of finding $1.2 trillion to submit to Congress for a vote, and stakeholders in the patent system should reach out to them and express their views on funding for the Patent Office. Businesses, firms and individuals within the relevant Districts and States will likely have the most influence, but anyone and everyone should stand up and be heard. Who knows when, or if, there will ever be an opportunity as good as this to end fee diversion.

As the Super Committee struggles to find nearly $1.2 trillion in revenue or savings, they should take a serious look at the proposal to give the US Patent and Trademark Office greater control over its budget and fees by creating a revolving fund. At the request of many in the patent community, Senator Jon Kyl – a member of the Super Committee – is proposing that the Super Committee include the revolving fund The Congressional Budget Office (CBO) has informally indicated that it will score the Kyl provision as saving $700 million over 10 years. By taking the USPTO out of the regular appropriations process, the creation of a revolving fund will take approximately $700 million off budget and help the Super Committee reach their goal. And –besides being a budget saver – the revolving fund is good policy.

Notwithstanding the inherent unreliability of legislative history and the truly scary prospect of trying to get inside the head of Members of Congress, it seems fairly clear to me that the America Invents Act, which was signed into law by President Obama on September 16, 2012, contains at least a handful of things that can only be characterized as unintended consequences. Among them are: (1) U.S. patents issued from foreign filings will be prior art as of the foreign filing date; (2) commonly owned patent applications cannot be used against each other for novelty purposes; and (3) the creation of an post grant challenge limbo because of the delay in initiating post-grant review procedures.

The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing two public hearings for two studies the agency is required to conduct under the America Invents Act. Specifically, Congress is requiring the USPTO to study and report on the availability of prior user rights in foreign countries as well as options to aid small businesses and independent inventors in securing patent protection for their inventions. The USPTO reports for both studies are due in mid-January 2012.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1. Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple. On this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3.

If (B) gives a blanket exclusion to subject matter, which cannot be used as prior art after a disclosure by an inventor, that would lead to nearly ridiculous results. Imagine for example that an inventor discloses a specific embodiment of a coffee cup and then subsequently another who did not derive independently comes up with and discloses a coffee cup with a lid. If (B) does more than relate to a personal grace-period the subsequent disclosure could not be used against the first to publish inventor as prior art because it relates to the same “subject matter.” That would mean that the inventor could incorporate the cup and the lid into his/her patent application and obtain claims. You might be tempted to say that is impossible, but if the cup with the lid is not prior art then under what rationale could an examiner issue a good rejection? This would lead to results that turn the patent system upside down, and was clear evidence to me that those arguing that 102(b)(1)(B) excluded out subsequent independently disclosed inventions was fanciful at best.

There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section in some places change and in other places remains the same, making you suspect that different terms must mean different things but the same term in different places has to mean the same thing, right? That being said, I thought I might take this opportunity to provide a high level overview of the America Invents Act.  What follows is discussion of 5 provisions contained in the Act.  Look for an overview breakdown of additional provisions (prior user rights, supplemental examination, post-grant review, etc.) coming soon.