Sunday, September 09, 2007

Lex Luther brings down IPBiz

On September 8, 2007, Lex Luther brought IPBiz to a halt. The blue and gold macaw literally ate the keyboard. A (temporary) replacement has been obtained. Shortly before devouring the keyboard, the enraged macaw was heard to say I'm a better parrot than Howard Berman is AND I know more about patent law.

In the meantime, the IHT presented an account of the passage of H.R. 1908 on September 7, 2007 in an article titled: House passes sweeping revision of U.S. patent laws.

The IHT article did include the earlier text from the NYT about post-grant opposition:
It also would allow third parties to introduce evidence against applications, and create a system, called post-grant opposition, for challenging newly issued patents.

The article includes the text: Pfizer, the world's biggest drug maker, and Qualcomm, a major maker of chips for mobile phones, have agreed to support the measure with changes, said Representative Darrell Issa, Republican of California, an inventor who holds 37 patents. IPBiz notes Issa was among 60 Republicans who voted in favor of H.R. 1908.

Negative quotes included:

"It is a horror story for American inventors and a windfall for thieves," said Representative Dana Rohrabacher, Republican of California.

Representative Marcy Kaptur, Democrat of Ohio, said the measure would make it easier "to steal U.S. inventions."

The IHT put the vote at 220 to 175.

The Patent Prospector blog has the line: Hal Wegner prognosticates in emphatic italics: "It is absolutely certain that H.R. 1908 as passed by the House will never be finally enacted into law without significant amendments.

Kevin Noonan at patentdocs discusses some particular parts of 1908, including:

3. A post-grant opposition proceeding is created, requiring that a petition to cancel claims of a granted patent be filed within one year of the patent grant date. The Director is also given the power to sua sponte institute a cancellation proceeding. As with current re-examination practice, the Director's decision to grant or refuse a cancellation proceeding cannot be appealed. Moreover, a third party who fails to invalidate a patent in a civil action cannot provoke a cancellation proceeding against that patent, and repetitive petitions by the same party against the same patent are also prohibited. Sanctions are available for abuses of these provisions. A cancellation proceeding can be initiated on the basis of art that had been cited or considered during prosecution (i.e., eliminating the current reexamination standard that a new question of patentability be supported by the assertion of new art not considered during prosecution). A floor amendment to the bill by Congressman Conyers of Michigan preserved the right of a patentee to pursue infringement actions despite concurrent cancellation proceedings, and precludes the use of the existence of a cancellation proceeding as evidence of invalidity or unenforceability in any civil action or before the ITC. These provisions take effect one year after the bill becomes law.
14. The bill also authorizes retroactively the actions recently taken by the Patent Office with regard to the continuation rules by expanding the Director's rulemaking authority under Section 2. However, a floor amendment by Mr. Issa of California provided for a stay of any such regulations for 60 days to permit Congress time to disapprove such regulations.

IPBiz notes that this aspect of H.R. 1908 shows that the rules change on continuing applications is related to the current legislation before Congress. Without such authorizing legislation, IPBiz suspects that the rules change on continuing applications will be invalidated by the courts.

Dugie Standeford for Intellectual Property Watch had a post on H.R. 1908 (he has the vote as 220-175).

There is text from Congr. Rohrabacher: But Representative Dana Rohrabacher (R-California) blasted the first-to-file provision, saying it “tries to harmonise to lower standards in the world rather than cause other countries to harmonise up to our standards.” An inventor who comes to the USPTO, applies for a patent and is given the right as the first to invent could now “be superseded in the international market by someone who happened to catch that invention on the Internet or elsewhere and file it in China first,” he said.

Of post-grant review, Standeford noted: The second window has now been replaced with an expanded re-examination process, said Washington, DC IP attorney Jonathan Band. The measure “significantly strengthens” the process, said House Judiciary Committee Chairman John Conyers (D-Michigan). “Our goal…is to ensure that before a patent is issued, parties who contest its validity will have a full and complete opportunity to do so within the confines of the Patent Office itself,” he said.

The White House, however, balked at the provision, saying that although it generally supports the first window challenge opportunity, it has “some concerns” about the proposed inter-partes reexamination adjustments (reexaminations of patent grants initiated by members of the public, third parties) and prefers a “narrowly drawn second window.”

IPBiz notes that BOTH ex parte AND inter partes re-examination proceedings are currently available to third parties, as exemplified in the re-exam of WARF patents by third party FTCR.

-->Changes to "inter partes" re-exams would include the following

c) Conduct of Inter Partes Proceedings- Section 314 is amended--

(1) in the first sentence of subsection (a), by striking `conducted according to the procedures established for initial examination under the provisions of sections 132 and 133' and inserting `heard by an administrative patent judge in accordance with procedures which the Director shall establish';

(2) in subsection (b), by striking paragraph (2) and inserting the following:

`(2) The third-party requester shall have the opportunity to file written comments on any action on the merits by the Office in the inter partes reexamination proceeding, and on any response that the patent owner files to such an action, if those written comments are received by the Office within 60 days after the date of service on the third-party requester of the Office action or patent owner response, as the case may be.'; and

(3) by adding at the end the following:

`(d) Oral Hearing- At the request of a third party requestor or the patent owner, the administrative patent judge shall conduct an oral hearing, unless the judge finds cause lacking for such hearing.'.

-->Section 322 of HR 1908 includes ONLY the "first window" for post-grant review:

A post-grant proceeding may be instituted under this chapter pursuant to a cancellation petition filed under section 321 only if--

`(1) the petition is filed not later than 12 months after the grant of the patent or issuance of a reissue patent, as the case may be; or

`(2) the patent owner consents in writing to the proceeding.

-->IPBiz notes that Sec. 326. Conduct of post-grant review proceedings of HR 1908 (reported in the House) gives general information and Sec. 328 provides Burden of Proof- The party advancing a proposition under this chapter shall have the burden of proving that proposition by a preponderance of the evidence.


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