As the 110th readies itself for the show, I’m sure patent reform is the top priority for all incoming Members. Fee diversion, post-grant review, and first to file, oh my! Boy, I sure hope they’re able to put their minds at rest over the holidays…

In all seriousness, we have seen a few hints about the direction in which patent reform will move once the 110th Congress signs its name to the growing log of the issue. Senator Leahy, the incoming chair of the Judiciary Committee, recently gave indications that the patent reform agenda will include efforts “to increase access to essential medicines throughout the world.”

According to Leahy:

“We can help struggling families in developing nations, while improving US relations with large segments of the world’s population…The current global health crisis is one of the great callings of our time. Whether it is the Avian Flu, AIDS, SARS, West Nile Virus, or the approaching menace of multi-drug resistant bacteria, we need to recognize that the health of those half-way around the world now influences our security and affects our lives here in the United States….I want the work of the Judiciary Committee to be a catalyst to help make life-saving medicines more readily available around the world.”

He leaves no doubt that he views patent reform as part of his agenda on “access to essential medicines,” stating that he intends “to redouble efforts to re-examine our patent laws in the hope that by making thoughtful and practical changes we can greatly increase access to essential medicines throughout the world.”

Certainly, that’s a whole new direction for patent reform in the United States. It sounds a lot like the debates that occurred in India as that country struggled to become fully TRIPs-compliant.

Read the full article on Leahy’s comments at Intellectual Property Watch.

Kathy at Moxie Design Studios recently tweaked the design and layout of PHOSITA. Wow…The results really show the impact that a few small changes can make. Check it out.

As 2006 winds down, I’m starting to put together the conference and speaking engagement schedule for 2007. The year starts off with a bang – The American Conference Institute’s Corporate Patent Congress 2007, which will be held in New York City on January 22 and 23. (.pdf of program brochure)

Doug and I will be on a panel with Stephen Albainy-Janei of Patent Baristas fame. We’ll be talking on a topic near and dear to my heart – “Maximizing Your Corporate Patent Portfolio and Harnessing Its Value in Changing Times.” Think patent reform (in all its various forms) and strategic patenting and portfolio management. Yeooow!

I think you’ll agree that ACI has put together a program that promises to deliver a fascinating conference. The topics are timely and the list of speakers is quite impressive. Looks like a great investment of time and money.

Readers of Promote the Progress can get $200 off of the registration fee by mentioning discount code 662L07.SBLG when registering.

Be sure to let Doug and I know if you’re going to attend…we can grab a coffee (or other suitable beverage). He apparently thinks I’m buying…but I’m counting on getting Barista Stephen to whip up a special blend…gratis.

As the Supreme Court considers the propriety of the teaching suggestion motivation test for determining whether a combination of references is proper in an obviousness analysis, the Federal Circuit has issued a pair of decisions that, taken together, highlight the confusion and lack of clarity that many see as the fundamental problem with the test.

An ironic result, indeed, considering that the first decision – penned by Chief Judge Michel – was clearly written as a resounding defense of the TSM test.

One hand polishes the test…..

As described by Justice Scalia during the KSR oral argument, the Federal Circuit tried to “polish up” the TSM test in Dystar Textilfarben v. C.H. Patrick.  The Dystar panel saw an opportunity, in essence, to write an amicus brief for consideration by the Supreme Court in KSR.  Writing for a unanimous panel, Chief Judge Michel penned a detailed defense of the TSM test and explained that, despite being misunderstood by many, the test is quite flexible and does not require an explicit motivation.

…while the other tarnishes it…

Oddly, six weeks after the decision in Dystar and less than two weeks before oral argument in KSR, a completely different panel of the Federal Circuit summarily dismissed a question of whether a motivation to combine existed in Optivus Technology v. Loma Linda University Medical Center.  The panel gave its motivation analysis in a single sentence:

“Here, there is no question that the CDR establishes that a person having a working familiarity with particle beam technology as it relates to cancer treatment, motivated by the need for more effective and efficient proton therapy facilities, would have been led to combine the University of Washington’s neutron therapy facility with the proton beam therapy design outlined in the CDR.”

That’s it.  There is no question.  Now go away.

This substantial omission of an analysis of the motivation issue highlights the arbitrary nature of the test and certainly bolsters the argument for its demise.  The timing of the decision in Optivus Technology in relation to Dystar only magnifies its message.

It’s hard to imagine how these two decisions, taken together, could bode well for maintaining the test in its current form.

The San Jose Mercury News is running an interesting editorial that strongly criticizes the current patent system. It’s one of the first I’ve seen that places significant blame for the current situation on the Court of Appeals for the Federal Circuit. Sure, plenty have criticized the Court before, but none have used such strong language.

Clearly timed for the KSR v. Teleflex debate, the piece is chok full of money quotes. Here’s two:

“The Court of Appeals for the Federal Circuit, which handles all patent appeals, has contributed mightily to the madness by laying down a set of rigid rules that make it too easy to get a patent, virtually impossible to overturn one after it’s granted — and prohibitively expensive to even try.”

“To help decide this, the high court and Congress have, over many decades, issued guidelines that take into account prior inventions and the knowledge that an ordinary person working in the field would have. Unfortunately, the appeals court has concocted a three-part test for obviousness that sets an unreasonably high barrier for anyone seeking to invalidate a patent that simply combines old, established ideas into a new one. (During oral arguments this week, Justice Antonin Scalia, not exactly a dimwit, noted the test amounted to “gobbledygook.”) Inventors need a more clear and, yes, obvious, standard of obviousness.”