Posts in Government

Cloture is the only procedure by which the Senate can vote to place a time limit on consideration of a bill or other matter, and thereby overcome a filibuster. Under the cloture rule (Rule XXII), the Senate may limit consideration of a pending matter to 30 additional hours, but only by vote of three-fifths of the full Senate, normally 60 votes. Without 60 votes cloture fails and debate continues. Unfortunately for those who would like to see patent reform derailed, the fact that there was unanimous consent in the Senate for a cloture vote almost certainly suggests that there will be at least 60 votes to end debate on H.R. 1249, which will bring it to a vote, likely sometime later in the week of September 6.

The real sin is that reexamination could be a much better process. Those in Congress talk about alleviating the burden on the district courts by having a reexamination proceeding available, but they don’t seem to appreciate why it is that reexamination is under utilized. On top of that, patent reform circulating in Congress does absolutely nothing to revamp reexamination in a way that would streamline the process and make it more appealing. What patent reform does do, however, is add yet another procedure to bog down the Patent Office while not allowing the Patent Office to set fees and keep those fees they collect to do the work that is promised when they accept those fees. So if patent reform passes you can anticipate that the reexamination pendency numbers will get even more ugly, making the option even less appealing.

In Duramed, the invention claimed in U.S. Pat. No. 5,908,638 (the “’638 patent”) involved a conjugated estrogen pharmaceutical compositions for use in hormone replacement therapies. The critical aspect of the claimed invention was the moisture barrier coating (MBC) which surrounded the composition. Claim 7 (which depended from independent Claim 1) specified that this MBC “comprises ethylcellulose.” During patent prosecution, the examiner rejected both Claims 1 and 7 for obviousness under 35 U.S.C. § 103. As a result of an interview with the examiner, Claim 1 was amended to include the recitation in Claim 7, and in due course, the ‘638 patent issued. Sounds to me like a classical instance of prosecution history estoppel coming into play and barring any application of the doctrine of equivalents.

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings. It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office. Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant. The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.

Ocean Tomo released the results of its Patent Quality Benchmark Study. The Patent Quality Study is intended to provide a benchmark for those studying patent quality across the 430 United States Patent Classes as defined by the United States Patent and Trademark Office. The Study reflects Nanotechnology (class 977) as the number one technology class for patent quality.

Hardly a month passes without there being yet another Patent Prosecution Highway (PPH) announcement from the United States Patent and Trademark Office. The PPH is lauded by the USPTO with great frequency, and for good reason. But what exactly is the PPH and how do you use it to your benefit? Through the end of June 2011 there have been only 6,657 PPH requests, with upwards of 40,000 registered and practicing patent attorneys or agents in the United States, which means there is not a lot of collective experience with the PPH despite the obvious advantages.

That being the case it seems likely to me that patent reform won’t be picked up in the Senate until after Labor Day in September. What does this mean for patent reform? Who knows! I personally cannot see the Senate capitulating to the demands of the House of Representatives, and Senator Tom Coburn (R-OK) has already fired a shot across the bow prior to the House voting on H.R. 1249 suggesting he plans to make a big deal about USPTO funding, which was stripped from H.R. 1249. If the Senate does not accept H.R. 1249 and instead modifies the bill that would mean it would have to go back to the House. We might get into a game of ping-pong because I am told there will be no Conference on this legislation.

Small businesses are the backbone of the nation’s economy and those that are most likely to engage in job creation. Unfortunately, the small businesses surveyed tell a tale of little or no job creation over the next 1 to 3 years, and in fact suggest there will be more layoffs coming. The respondents see too much uncertainty in Washington, DC, too many regulations and a number of other matters (i.e., the deficit, debt, health care and taxes) as significant impediments to job creation. This on the heels of a disappointing jobs report for June 2010, downward revisions of the number of jobs created in April and May, and unemployment rising to 9.2%, this Chamber survey only piles on the continuing terrible news for the economy. With Congress bickering over the obvious — namely that we simply cannot spend money we don’t have and need to start spending less than we bring in to cut the deficit — it doesn’t seem there is likely to be any good news on the horizon.

The vast number of America’s companies that need patents to prosper and grow should fear the post-grant provisions for challenging patents in H.R. 1249, the patent reform bill passed last month by the House of Representatives. In a system already plagued by delays in granting patents, they threaten to delay courts from enforcing patents once finally granted. This threat has received little attention, perhaps because advocates of the bill promise promptness that they cannot deliver.

Under the “first to file” AIA regime, the effective prior art date is what prior art exists before the U.S. patent filing date. In other words, the U.S. patent applicant no longer has the luxury of that potential up to one year “window” after the invention date. Instead, the danger of intervening prior art by others steadily (and potentially exponentially) increases as time passes between the invention date and the U.S. patent filing date. Put differently, U.S. patent applicants are now really in a “race to the U.S. Patent & Trademark Office (USPTO)” to minimize the ever increasing danger of intervening (and accumulating) prior art coming into play. For the Goliaths, they’ve been existing in this situation for many years because the rest of the world (ROW) is “first to file.” But for the American Davids, “first to file” under the AIA is going to be culture shock of the worst, and most expensive kind, with time pressure that these Davids aren’t prepared or trained to handle.

In almost all cases, inter partes reexamination is better than ex parte reexamination, except of course where the requester wants to stay anonymous or the application from which the patent issued was filed before November 1999. The opportunity to reply to the patentee’s arguments and to address the specific concerns of the examiner is quite valuable. This is especially true where the examiner cites his or her own prior art. Issues commonly evolve over the course of reexamination, so that arguments in an ex parte request often are no longer persuasive by the end of the proceeding. I would add that some of the frequent users of reexamination, such as Apple and Google, almost always select inter partes reexamination when it is an option.

In going from the current “first to invent” to the new “first to file” regime mandated by the America Invents Act (AIA), much attention has been focused on the amorphous “grace period” provision provided to patent applicants for certain activities undertaken by them prior to filing for a U.S. patent. Much less attention was paid to the amendments made to sections 203(c)(2) and 203(c)(3) of the Bayh-Dole compliance obligations which were directly impacted by this change in definition from the old “statutory bar” provision (based on publication, on sale, or public use of the invention caused by the patent applicant), to this new “grace period” provision. But even more astounding (and unsettling) are the unrecognized consequences caused by the AIA in “realistically” meeting certain Bayh-Dole compliance obligations by going from the current “first to invent” to the new “first to file” regime.

This week marks the first anniversary of the Supreme Court issuing its decision in Bilski v. Kappos. The decision held that the machine-or-transformation test is not the exclusive test for patent eligibility, and that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply. The summary of cases prepared by Attorneys Holoubek and Sterne is excellent! It is absolutely must reading for attorneys prosecuting and litigating in this space.

United States House of Representatives passed H.R. 1249, which is known as the America Invents Act by a vote of 304-117. This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet. There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.

Shortly after 2pm Eastern Time the United States House of Representatives voted on the Managers Amendment to the America Invents Act, H.R. 1249. The Managers Amendment passed by a vote of 283 – 140. The House then proceeded to address several amendments to H.R. 1249. The handwriting seems to be on the wall. The House is poised to pass H.R. 1249, together with prior user rights and without giving the United States Patent and Trademark Office access to the fees it collects without the blessing and approval of appropriators.