Patent Reform in the u.s . Q. Todd Dickinson April, 2011

1. Patent Reform in the u.s. Q. Todd Dickinson April, 2011

2. Reform 2001-2011 • Legislative debate and stalemate • 2005 House bill drafted in response to 2001 studies at FTC and DOJ • Stakeholders unable to reach agreement • Widely unacceptable version passes House, Sept. ‘08 • House defers to Senate in 111th Congress, 2009-10 • Same time Courts begin take “reform” cases • Both CAFC and U.S. Supreme Court • Alters the legislative debate

3. Court “Reform” • eBay (SCt) – permanent injunctions • Seagate (CAFC) – willfulness/treble damages • i4i (SCt/CAFC) - damages • Uniloc (CAFC) - damages • T Tech (CAFC) - venue • Bilski (SCt) - business method patentability • KSR (SCt) - obviousness • Therasense (CAFC) - inequitable conduct

4. Patent Reform Legislation • LOOKING BACK AT THE 111TH CONGRESS….

5. Patent Reform Legislation - Senate • S. 515 (111th Congress) • Introduced in March, 2009. • Senate Judiciary Committee approved an amended version of S. 515 on April 2, 2009. • Chairman Leahy announced a “compromise” in March, 2010. • September (2010) Letter of Support from 25 Senators. • No Senate Floor Consideration in the 111th Congress.

6. Patent Reform Legislation -- House • H.R. 1260 (111th Congress) • Hearing on April 30, 2009 • Waited for the Senate to move first • After Senate Committee approved bill, House Committee leadership issued statements reserving prerogatives and suggesting changes are needed.

7. Patent Reform Legislation – 112th Congress • Outlook for the 112th • Both Judiciary Committee Chairmen said this would be a priority • Began in the Senate with the introduction of S. 23, the Patent Reform Act of 2011, later renamed the “America Invents Act.” • Senate marked up quickly and moved to Senate floor • What follows summarizes the bill as approved by the Senate on March 8th.

8. S. 23, the America Invents Act • Transition to a first-inventor-to-file system • Effort to strike provision voted down 87 to 13 • Corresponding changes to sections 102 and 103 • USPTO fee setting authority • Small entities get %50 discount; Micro entities get 75% discount • End diversion of fees by establishing revolving fund to assure Office can utilize all fees it collects • 3rd party submissions of prior art

9. S. 23, the America Invents Act • PGR (9-month first window) “Opposition” – broader range of prior art and discovery allowed. Fast-track proceeding. 3 judge (APJ) panels • IPR • Conducted by APJs • Threshold (“reasonable likelihood”), estoppel (“reasonably could have raised”), joinder • One year to complete; 4 year Office implementation • Best mode requirement reform • Supplemental examination (response to inequitable conduct reform) • Cure defects prior to litigation

10. S. 23, the America Invents Act • Patent False Marking statute • Must demonstrate competitive injury • Repeal of the residency requirement for Federal Circuit judges • Establish special review proceeding for business method patents • Clarifies CAFC jurisdiction in response to Holmes Group • Unpatentability of tax strategies (as within the prior art)

11. S. 23, the America Invents Act • Extends USPTO statute of limitations for disciplinary actions • Earlier of 10 years from occurrence, or 1 year from when PTO knows • USPTO authority to establish three satellite offices • Creation of a USPTO ombudsman • Language adopted giving USPTO authority to prioritize examination of inventions of “national importance”.

12. S. 23, the America Invents Act What’s NOT in the bill: • Damage provisions deleted • Willfulness provisions deleted • Detailed venue provisions deleted • No specific inequitable conduct reform • Elimination of “opt out” of 18 month publication

13. S. 23, the America Invents Act • Bill passed the Senate 95 to 5 on March 8th. • Amendment to delete First-inventor-to-file fails 87-13.

14. Patent Reform Legislation - House • House Judiciary Committee has conducted multiple related hearings thus far: • January 25, Oversight hearing on the USPTO • February 11, Oversight hearing on Patent Reform • March 10, on Review of Judicial Decisions on Patent Law • Bill introduction and legislative hearing on March 30.

15. H.R. 1249, the America Invents Act • How does H.R. 1249 compare to S. 23? • Most of the bill tracks S. 23 closely: First-inventor-to-file University Funding Agreements Assignee filing Tax Strategy Patents Best mode Virtual/False Marking IPR Transitional Program for BMP PGR (12, rather than 9 months) CAFC Jurisdiction Patent Trial and Appeal Board PTO Revolving Fund 3rd Party Submissions Satellite Offices (requires 3) Fee setting authority PTO Ombudsman Program Micro entity Priority Exam for Important tech Supplemental Examination

16. H.R. 1249, the America Invents Act • However, some interesting differences: • Sec. 4. Prior user rights (PUR) in conjunction with FITF (Carve out an exception for university and affiliated tech transfer entity. ) • Sec. 5. In the IPR provisions, lowered the threshold to “substantial new question of patentability,” extended the time in which a request can be made after suit, and inserted factors for granting a stay of litigation during pendency of these proceeding (for both PGR’s and IPRs). • Sec. 18. Some additional “strengthening” of the business method patent transitional language (i.e. the Schumer amendment) by specifying an interlocutory appeal and mandatory de novo review at the CAFC.  There is also language regarding special venue and “Loser Pays” provisions for suits involving business method patents.  • Note: no repeal of the Baldwin Rule

17. H.R. 1249, the America Invents Act • Road ahead? • Committee markup expected soon • Obama Administration “SAP” • Final debate and passage by __?___.

18. Thank you! Q. Todd Dickinson Executive Director AIPLA tdickinson@aipla.org