TopTenSources has selected Promote the Progress as a TopTen site in the IP Law category. TopTen Sources is an internet directory that aims to bring users the most relevant content in defined categories. The service launched earlier this month and is quickly growing — more categories are added each day (they have already made it to the obscure IP section of the web…that’s a sure sign that they’re making progress!).

Here’s the difference with TopTen – Editors manually scour web 2.0 resources and develop TopTen lists for particular categories. You might say they’ve added a human touch to web organization. Read more about TopTenSources here.

Congratulations to the rest of the TopTen IP Law sites.

James Sensenbrenner recently introduced Concurrent Resolution 319 in the House to recognize the silver anniversary of the Bayh-Dole Act (Public Law 96-517, 35 U.S.C. &#167&#167 200, et seq.; enacted in 1980). The Act, which established a single uniform national policy on the utilization of government-funded inventions, is widely viewed as one of the most effective economic development policies ever enacted. Many credit it as the foundation that enabled the growth of the biotechnology industry.

The thrust of the Act — allowing inventors or their employers to retain patent rights in inventions developed with federal research funds — was indeed a sea change in 1980. As evidence of its scope, consider this: the law eliminated 26 different federal agency policies dealing with the use of the results of federally funded research and development.

Bayh-Dole is not without critics, though. Fortune magazine recently ran an article casting a negative light on the law, arguing that it has turned the nation’s educational institutions into school-corporation beasts that stifle innovation in the pursuit of licensing revenue.

I’ve posted some of my views on the Act (and the Fortune article) before. No matter your view, the Concurrent Resolution is an interesting (and brief) read…it has plenty of positive assessments and (I assume) facts on the effect of the law. You can view and/or download a .pdf of the text as introduced in the House here.

According to 35 U.S.C. section 305, “[a]ll reexamination proceedings…including any appeal to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office.” (emphasis added)

Mention of the standard of “special dispatch” amongst patent attorneys in the United States usually generates a few jeers and sarcastic snaps.

What does it mean? Who knows. But, in the reexamination of patents owned by NTP, a patent holding company currently embroiled in a very high profile patent litigation lawsuit with the maker of the popular BlackBerry e-mail device, the Patent and Trademark Office recently committed to following the standard and gave some insight as to what it means administratively.

“Given the district court’s concerns that the office has delayed the proceedings and the outstanding public interest in ensuring that these proceedings are acted upon with special dispatch, the office has assigned a dedicated examining team to handle all of the co-pending proceedings,” the Office said in a letter last week.

That’s a highly unusual move and probably reserved only for high profile cases like this one. Maybe it only applies in reexaminations that are connected to a current patent infringement lawsuit in a district court known for speed (i.e., the Rocket Docket of the Eastern District of Virginia or maybe even Rocket Docket II of the Eastern District of Texas). Maybe it’s something reserved for litigation suits that present interesting technological issues for the federal government.

The Office had trimmed 30 days from a response period for NTP in the reexamination and finalized that decision with the letter. Is that “special dispatch?” Seems strange, especially when you consider that the reexamination proceedings were initiated in 2002.

The standard is indeed vague, but that’s probably a good thing. The Office should have reasonable discretion to apply appropriate timeframes for reexamination proceedings, and those with the greatest potential public impact should probably be treated with “extra special dispatch,” which apparently is the case for the NTP reexamination.

Changing the standard for injunctive relief in patent infringement lawsuits has been the hottest topic in US patent law for all of 2005.  With the Patent Act of 2005, Congress is considering a legislative change to the standard and, with the granting of certiorari in Ebay v. MercExchange, the Supreme Court is now set to address the issue.

But how much change can be implemented considering the country’s obligations under TRIPs?  The Agreement on Trade Related Aspects of Intellectual Property Rights is lurking in the background and stands to be an issue if any significant change is implemented (either by legislation or judicial decision).

Under TRIPs, the country is obligated to confer exclusive rights by patent and entitled to provide exceptions to those exclusive rights only in certain circumstances.  Any change made to the injunctive relief standard must qualify under TRIPs and the Agreement provides an opportunity for challenging any change that is implemented.

The rest of this article includes background on TRIPs and the relevant provisions.  A forthcoming article will examine the issue in greater depth.

Background

Article 28 of TRIPs provides:

A patent shall confer on its owner the following exclusive rights:

(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of:  making, using, offering for sale, selling, or importing  for these purposes that product;

(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of:  using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.

(emphasis added)

Article 30 provides for exceptions to the exclusive rights in some circumstances:

Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

(emphasis added)

Any change to the injunctive relief standard in patent infringement cases must address the applicability of Article 30.  The text of Article 30 has been officially interpreted.  It is clear that any exception to the exclusive right conferred by patent must meet three requirements:

the exception must be limited;

the exception must not unreasonably conflict with the normal exploitation of the patent; AND

the exception must not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

For an exception to survive Article 30 scrutiny, all three requirements must be met.  At first blush, it appears that the second requirement presents the biggest hurdle for any proposed change to the injunctive relief standard.  The issue becomes:

“does a different standard for awarding injunctive relief unreasonably conflict with a normal exploitation of the patent?”

I’ll provide more information on the analysis of this issue in a follow-up article in the next few days.

Wondering about the importance of eBay v. MercExchange? Consider this fact. As of last week, when the Supreme Court granted certiorari in the case, the value of every valid United States patent that remains in force following the decision is up in the air.

Every single one.

Last week, the Supreme Court granted certiorari in eBay v. MercExchange, a case directed squarely at the standard for granting injunctive relief in patent infringement suits. That legal standard, which currently results in the nearly automatic granting of an injunction once a patent is determined to be both valid and infringed, was the most controversial issue during the drafting of the Patent Act of 2005 earlier this year. Now, with the granting of certiorari, the injunctive relief issue stands to dramatically alter the future of the patent reform movement in the United States.

(Update May 15, 2006 – click here for an analysis of the Supreme Court decision)

The petitioner, eBay, seeks to change the standard in a manner that requires a court to consider various factors when determining whether a request for injunctive relief should be granted, including the extent to which the patentee makes use of the invention. This is exactly the same argument advanced by the Business Software Alliance during congressional patent reform hearings held earlier this year. The BSA had scored a major victory by getting an injunctive relief provision into the draft of the Act at the last minute, but suffered a setback when the provision was watered down with the introduction of H.R. 2795.

Now, as the issue moves out of Congress and into the Supreme Court, the argument for changing the legal standard is once again in the forefront. The granting of certiorari is another victory for the BSA agenda, particularly because the issue is now in absolutely pristine condition (free of all other patent reform proposals).

What does eBay mean for the future of patent reform legislation? I see three primary effects. First, the case very likely rings the death bell for H.R. 2795 as a vehicle for patent reform (if the bill isn’t dead already). Neither “side” (biotech/pharma and high-tech/software) has any motivation to advance that particular piece of legislation considering its attempt at compromise that has left both sides unsatisfied. Second, the case will very likely widen the chasm that already exists between these two sides on the proper scope and content of reform legislation, making future compromise in the legislative process even more difficult. Third, the case may shift the focus of future reform efforts in Congress as the losing side in eBay focuses its legislative resources on changing the law of injunctive relief as it stands after the Supreme Court decides the case.

A hearing in eBay will likely be held in April of next year and a decision is expected by June. Stay tuned.

It took a bit longer than expected, but the “overhaul” of Promote the progress is nearly complete. When I started project overhaul, I had one goal in mind – to make the site more useful and accessible.  I think the new design and organization achieves that goal, and I hope you agree.

In large part, I have “de-blogged” the site.  I’m using MovableType as my content management system, but have completely re-written the templates to eliminate a lot of the information typically presented in blogs that, in my opinion, does not help the reader in any way.  As a result, the blogroll is gone (if you want to know which sites I read…ask…chances are, you’re already reading them too), as are the largely useless alphabetical listing of categories and the completely useless date-based listing of archives (did you ever navigate the site by wondering what I wrote in August, 2004?  Didn’t think so.).

Looking at the main index page, you’ll notice the navigation “menu” at the right.  Using this menu, you can access information on Promote the Progress by searching or browsing the site.  I broke the browse function into primary categories (country, industry, issue, and US bill number) to further aid navigation.  Each link in the browse section opens a page containing all posts on the site relating to that particular item (click India, and you’ll see all posts relating to that country).  Interested in keeping tabs on a particular industry?  Click the link.  Issue?  Click the link.

These browse sections will continue to expand as new countries, industries, and issues are added.  The bill number section will be live soon, allowing for easy navigation to all entries dealing with a particular US bill.
You can, of course, still subscribe to the site.  Enter your e-mail address in the box provided, and you’ll get a message each time the site is updated.  The full text of new entries is included in the message.  For the gear heads out there, RSS is available here.

At the top right, you’ll notice the “newsflash” section.  Here I’ll add headline-type information relating to “significant and late-breaking ip law and policy news.”  When I say significant, I mean it.  You won’t see the newsflash lit up very often…when you do, you’ll know something major has occurred. 
I have also updated the printer-friendly displays to reflect a cleaner and well-defined layout (see this example).

The project isn’t over yet.  There are several features I plan to implement in the coming weeks and months.  Some of these are for serious business (e.g., adding a listing of related entries at the bottom of each individual entry page to make it easy to follow a specific issue through the site), and some are for fun (adding rotating images into the header…and an “about the picture” section).  The heavy lifting is done, though, and the new design, organization and layout will remain as these minor changes are implemented.

As always, I hope you find the site useful and welcome any comments and/or suggestion you have regarding the content, layout, design, or any other issue.  Thanks to everyone who sent their ideas and suggestions during the overhaul…I am truly honored to have received the input from so many representatives of our wonderful profession.  Thank you.