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Patent Reform

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					Eleventh Annual Los Angeles Intellectual Property Law Association
         (LAIPLA) “Washington in the West ”Conference

                 January 30, 2008 – Los Angeles

                  Robert Clarke, Director
       Office of Patent Legal Administration (OPLA)
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          S. 1145
PATENT REFORM ACT OF 2007
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             Patent Reform
Where the Issues Fit in the Patent Process




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                           Patent Reform
       Applicant Quality Submission (AQS)

Question: Should applicants explain what they file at the USPTO?
Issues:
       25% of applicants provide no evidence or supporting information with their
       patent applications. Another 15% provide lots of documents (sometimes
       thousands), usually with no explanation
       Lack of information and too much undigested information greatly hamper
       patent examiners’ review
       Practitioners reluctant to provide data/make statements for fear of
       “inequitable conduct” attacks
Our thoughts:
       Inequitable conduct must be fixed, so applicants/practitioners are
       encouraged to be forthcoming with the USPTO.
       Clear statements, providing prior art and explaining its relevance, will
       provide clarity, improve the quality of patents, and promote timely
       examination by the USPTO.
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       WHY WE NEED
APPLICANT QUALITY SUBMISSIONS




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                            Patent Reform
                INEQUITABLE CONDUCT (IC)

Question: How should “inequitable conduct” be reformed?
Issues:
      “Inequitable conduct” = Accusation of lying to the USPTO
      Widespread agreement that judge-made doctrine needs fixing
      Right now – harsh results (loss of patent rights), even where
      misstatements are inadvertent. Discourages full disclosure.
Our thoughts:
      Easy fixes:
       - Correct the standard &
       - Correct the impact when IC is found
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                       PATENT REFORM
                DAMAGES & REMEDIES
Question: How much does an infringer (party found to have
    violated a patent) owe?
Issues:
      Patent owners want compensation
      Infringers believe courts are over-compensating owners
      Standard for compensation is “no less than a reasonable royalty”
Our thoughts:
      Current system is fundamentally fair.
      Parties want certainty – Need to know what is a “reasonable
      royalty”?
      Courts could benefit from guidance, which is easy to provide and
      won’t ruin a fundamentally fair system.
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                      Patent Reform
             POST GRANT REVIEW
Question: Fast-track, lower-cost way to challenge a patent?
Issues:
      Is there an alternative, fair system for reviewing patents?
      Input reflects widespread support for a USPTO-run review


Our thoughts:
      The USPTO has developed a rigorous, streamlined,
      transparent post-grant review proceeding.
      Implementation requires statutory authority.
      Only real remaining issue = When can challengers request
      review? (USPTO has a proposal).
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               Patent Reform
                   VENUE

Question: Where should a patentee or patent
challenger be permitted to sue?
Issue: Should venue be restricted to defendant’s
principal locations to avoid forum shopping?
Our thoughts:
   Present law subjects many companies to suits in every
  district
   Forum shopping should be discouraged while
  providing reasonable forum selection to plaintiffs


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                                Patent Reform
                FIRST-INVENTOR-TO-FILE
Question: First-inventor-to-file (FITF) vs. first-to-invent?

Issues:
       Predictability –2 inventors - - who gets the patent?
       Administration – Who determines novelty, resolves conflicts between two (or
       more) parties asserting priority?
       Harmonization - First-to-Invent (U.S.) vs. the rest of the world?
Our thoughts:
       FITF is more predictable, easier to administer, and would facilitate global
       patent protection for U.S. innovators
       Unilateral move to FITF could compromise USG negotiating leverage to
       obtain an internationally harmonized grace period for U.S. inventors.
       Grace period = Period of time before filing the application when an inventor
       can disclose the invention without losing patent rights.
        Some trading partners lack a U.S.-style grace period, putting American
       inventors’ rights at risk in the global marketplace.
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                              Patent Reform
                     FEE-SETTING AUTHORITY

Question: Should the USPTO have authority to set fees?
Issues:
     General concerns about any Federal agency setting fees
     Questions about what fees the USPTO would change
Our thoughts:
     USPTO would like ability to eliminate fees, lower fees,
     consolidate fees, raise fees if necessary – all to accurately
     capture the cost of providing services.
     Oversight – Important, necessary, and sought by USPTO. Fee
     changes (including lowering & eliminating fees) merit transparent
     review.
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      Contact Information


   Robert Clarke, Director
    Office of Patent Legal Administration
      e-mail: Robert.Clarke@uspto.gov
             Phone: (571) 272-7735



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Thank you.



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