Promote the Progress

As everyone watches the Patent Act of 2005 (H.R. 2795) in the House, the Senate has yet to see any proposed legislation.  Senator Hatch, as Chairman of the Subcommittee on Intellectual Property, has held two oversight hearings on the matter but has yet to introduce a bill or even a proposed draft.

The Senate’s approach to patent reform is one of the most significant open questions at this time.

In this article from Senator Hatch’s home town newspaper, the Salt Lake Tribune, he alludes to a cautious approach and suggests that enacting reform will take some time, considering the seriousness of the issue:

“The patent system has some serious problems that need to be fixed before they become crises,” Hatch said. “But any reform – and especially something as complex as patents – is going to take time, and we need to make sure to examine all sides before crafting any legislation.”

Bruce Lehman, former United States Commissioner for Patents & Trademarks, writes in today’s Wall Street Journal about last month’s decision by the European Parliament to pass on a directive that would have established a Europe-wide standard for patenting computer related inventions.

You can view the article here (subscription required).

One of the most interesting aspects of the article is Mr. Lehman’s subtle outline of several possible side effects of the decision that might come to life in the United States.

First, the decision might negatively affect international harmonization efforts.  Mr. Lehman is quite direct on this point, noting his regret that the “…decision of the European Parliament will make it harder to harmonize global patent laws.”

Second, it’s clear that at least Mr. Lehman believes that the decision will likely boost the anti-software patent crusade in the US.

Lastly, Mr. Lehman plainly states that the disproportionate flow of global investment in software development into the United States will continue because of the European decision.  This conclusion is based on a simple premise — investors tend to apply capital in places where protection is clear and tend to avoid applying capital where protection is cloudy.  After the decision, protection for computer-implemented inventions in Europe is cloudy but remains clear in the US.

The CII Directive is officially dead in Europe…but it may very well have lingering effects in the United States.

Following on the heels of its last minute maneuvering to modernize its intellectual property laws, the Indian government announced yesterday the opening of its first “integrated intellectual property rights office.”

The new facility is in New Delhi and is one of four planned across the country.

The Commerce Minister called the new facility “state-of-the-art” and “comparable to the best in the world.”

While those quotes aren’t particularly interesting, the following caught my eye:

“The growing importance of intellectual property is seen from a four-fold rise in patent application filings in India in the past five years – from 5,000 in 1999-2000 to 17,000 last year, he said.”

Four-fold in five years.  I’m not sure if those numbers are skewed by the so-called mailbox applications in any manner, but four-fold is noteworthy no matter how you look at it.

Last week, on rethink(ip), we announced the availability of RSS feeds containing all items from the USPTO News and Notices site.

This new feature has been received with a great deal of enthusiasm by the RSS-lovers out there (you know who you are!).  Several readers explained that they loved the concept of getting USPTO news delivered to them, but that they were unfamiliar with RSS technology.

We thought it best to give the people what they want.  Enter your e-mail in the address below, and you’ll receive the feed delivered right to your inbox — no knowledge of RSS required!

 Enter your Email to receive USPTO News and Notices from rethink(ip)

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If you have even the slightest desire to learn about RSS, I encourage you to explore the technology.  In short, it allows you to efficiently process huge quantities of relevant information.  You can get started quickly with RSS and intellectual property blogs following the instructions in this prior PTP post.

I finally had a chance to review the entire draft amendment to H.R. 2795, the Patent Act of 2005.  The draft amendment is in the nature of a substitute, meaning that, if the amendment is entered, the entire text of the original bill, save the enacting clause, will be replaced with the text of the amendment.

The draft amendment appears to be the reform bill the pharmaceutical industry wanted.  The industry’s two major complaints with the original bill — change to the injunctive relief calculus and the existence of a ‘second window’ within which post grant review of an issued patent can be initiated by a third party — have been completely eliminated.

The original bill also grants authority to the Director to place limits on continuation applications, which are used heavily by the industry.  The draft amendment completely eliminates this provision as well.

The draft amendment clearly addresses all of the pharmaceutical industry’s major complaints about the Patent Act of 2005.  It’s almost as if someone asked the industry for its ideal bill.

The draft amendment includes one new provision that is quite interesting.  Section 9, entitled Venue, has very strong language limiting the venue for patent civil actions:

“Any civil action arising under any Act of Congress relating to patents, other than an action for declaratory judgment or an action seeking review of a decision of the Board of Patent Appeals under chapter 13 of title 35, may be brought only –

1) in the judicial district where the defendant resides;

2) in the judicial district where the defendant has committed acts of infringement and has a regular and established place of business; or

3) if the plaintiff is a not-for-profit educational institution that owned the rights of the patents in suit as of the effective filing date of those patents, in any judicial district in which the defendant is subject to personal jurisdiction at the time the action is commenced.”

Under this structure, qualified educational institutions can bring suit in any federal court having personal jurisdiction over the defendant, but all other plaintiffs must bring suit in a venue that is favorable to the defendant, at least in a geographic sense.

Is this designed for the so-called patent trolls?  Is it an attempt to force them to take their actions to their defendants?

Here’s the big question on the venue provision — was it included as a concession for the other changes?  Is the draft amendment actually a product of compromise?

There has been no formal action on the Patent Act of 2005 (H.R. 2795) since its initial referral to the House Subcommittee on Courts, the Internet, and Intellectual Property.

Representative Smith, the original sponsor of the bill, is currently circulating a draft amendment in the form of a substitute.  As of today, this amendment (substitute bill) has not been formally introduced.  The bill as introduced remains the working form of the bill.

I have not reviewed the substitute language in detail, but it is clear that the most significant change is the complete elimination of the injunctive relief provision.  Considering this change to the most controversial aspect of the bill, introduction of this amendment would likely widen the gap between the high-technology and pharmaceutical industries and would cast serious doubt on the future of H.R. 2795 as a vehicle for implementing reform.

In September, all eyes will be watching the House Subcommittee to see whether it is able to schedule a markup of the bill and, if so, whether the proposed amendment surfaces.  If a markup is not scheduled, the issue will likely go below the surface until next year.

K. Karel Lambert has made a redlined version of the of the patent statute available that shows the changes that would be made by the substitute bill.  I have not reviewed this document or determined its accuracy.

I have updated the PTP Patent Reform Library to include the draft amendment.

Last month I signaled that a change was coming to Promote the Progress.  In that post, I joked about an “all Led Zeppelin, all the time” format.  Turns out, I was somewhat serious…

I used my recent break from blogging to give serious thought to the purpose of the blog.  In the last month, I’ve made several decisions regarding its future direction.  The result…I’m narrowing the focus on a core strength…Intellectual Property Law and Policy.

Focusing on Core Strength

Most importantly, I defined the core strength of Promote the Progress as timely and meaningful information on intellectual property law and policy.  From here forward, the blog will focus on and expand this core strength.  I will no longer post on issues relating to other interests of mine (legal technology, for example).  I’ll very likely continue to write on these other topics, but will do so elsewhere.

So, what exactly do I mean by “intellectual property law and policy?”  The blog will focus on legislative and regulatory developments in intellectual property law.  I’ll also discuss news items that have a clear relation to policy.  I may review an occasional judicial development if I determine it has sufficient impact on policy, but otherwise will not post case reviews (to stay up to date on case law developments, I recommend my good friend Dennis Crouch’s excellent site, Patently-O).

No Reblogging

I’m proud of the fact that I don’t just cut and paste news stories on the blog.  There are plenty of other places to go if you just want the “news of the day” parroted back to you.

Going Global – Intellectual Property Law and Policy, Worldwide

I watch the traffic and listen to my readers, and have learned immensely from doing so.  Two things have come through loud and clear.  First, I’ve learned that US practitioners and business people have a very strong need and desire to learn about developments in intellectual property law around the world.  Second, I’ve learned that many people from other countries closely watch developments in US intellectual property law, including business people, practitioners, and policy makers.  The intellectual property universe is global and becoming more so every day.  The sophisticated practitioner and business person must stay abreast of issues worldwide.  Focusing on the core strength will allow me to deliver timely and meaningful information to this audience.

Design and Organization Changes to Come

I’ll change the organization and design of the blog to reflect this new focus and to enhance its usability.  I’m open to suggestions on layout and design, so feel free to e-mail any thoughts you have.

The Great Blog Adventure Continues

I’m having fun and enjoying this adventure immensely.  I thank all of my readers for their continued support and look forward to moving ahead.

Best regards,

J. Matthew Buchanan

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress.]

Looking for patent reform resources?

View all Promote the Progress posts on the topic here.

Need a .pdf of the Patent Act of 2005?  Testimony from the Congressional hearings?  The PTP Patent Reform Library is here.

If you’re having trouble finding something, let me know.

[Copyright 2005 J. Matthew Buchanan. Originally published on Promote the Progress.]