Thursday, July 19, 2007

Wall Street Journal on Judiciary Committee vote on patent reform

The Wall Street Journal article begins: The House Judiciary Committee passed a sweeping overhaul of U.S. patent laws, a move long sought by technology companies eager to streamline the process and reduce the costs of patent-infringement lawsuits.

Although there is mention of amendments made on July 18, the WSJ does not mention that the second window of post-grant review was eliminated. The WSJ quotes Congressman Berman:

"This legislation is designed to improve patent quality, deter abusive practices by patent holders, provide meaningful, low-cost alternatives to litigation for challenging the patent validity and harmonize U.S. patent law with the patent law of most other countries," Mr. Berman said in a statement.

IPBiz observes that the first two items mentioned by Berman are "patent quality" and "abusive practices by patent holders."

Of the text "low-cost alternatives to litigation for challenging the patent validity", with the "second window" gone, the low-cost alternative will be available to people who identify a patent to challenge within a certain time frame after patent issuance and have money (estimated at $100,000 to 200,000) to mount the challenge. One can easily see that the small inventor or university inventor is far more likely to be the target, than the initiator, of this sort of challenge.

The coverage by Stephen Heuser of the Boston Globe is more detailed as to the opposing players. His article begins:

Biotech and high technology, two key Massachusetts industries, are often seen as allies -- innovation-driven businesses that depend on a highly educated workforce. But this week they're on opposite sides of a fight playing out in Washington: How to overhaul the nation's patent system.

Sadly, however, Heuser screws up what happened on the post-grant review matter. Heuser incorrectly writes:

The biotech industry appears to have prevailed, at least partly, in a significant early battle.

Yesterday the House judiciary committee completed its mark-up of the bill and eliminated the new avenue to challenge patents, according to an analysis by Hans Sauer, an intellectual-property lawyer for the Biotech Industry Organization in Washington.

Only the "second window" of post-grant review was removed in the House bill. The "first window", which can be effectively used by challengers who BOTH monitor issued patents AND have $100K or so to spend on challenges, is still available. Smaller entities who do NOT have $100K to defend such challenges are the big losers. The current route to challenges, re-examination, imposes less cost on challenged patentees.

See also the IPBiz post of July 18:


Getting the Patent Reform Wars Back on Track


Post-Grant Opposition: a Bad Idea


Blogger ogangurel said...

I have written about - including in the Wall Street Journal - the implications of patent reform for medical technology focusing in particular, on the growing area of convergent medical technologies. Basically, this new patent reform bill will be more in favor of such combinatorial innovation. For a more detailed review of this, please see the article:

"Patent Reform Act of 2007: Innovation, Implications and the American Inventor" which you can find at:

I'd certainly be interested in your thoughts on this specific issue given your expertise as a patent attorney.

10:26 AM  

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