Sweeping U.S. patent reforms will significantly impact businesses seeking or
owning patents, or avoiding competitor patents. Bills before the House (H.R. 1908)
and Senate (S. 1145) could result in new laws
by the end of this year. Also, recent judicial
decisions have already significantly impacted
both patents and patent applications.
“The proposed reforms will make it more
expensive to obtain patents and make it easier for issued patents to be challenged,” says
David B. Cupar, member, Litigation Department, Intellectual Property Practice Group,
McDonald Hopkins LLC. “Patent suits are
probably the most expensive of any type of
litigation, whether you’re the defendant or
plaintiff. It’s very important to become
informed now about the changes.”
Smart Business spoke to Cupar about the
impending patent changes.
What is happening in the here and now?
There are two major reforms occurring, the
first judicial and the second congressional.
The major judicial reform is the Supreme
Court’s KSR decision (May 2007), which has
prompted the U.S. Patent and Trademark
Office (USPTO) to change its internal guidelines for examining patent applications, making it harder to obtain new patents. In particular, the USPTO’s new guidelines broaden
the scope of determining ‘obviousness’ to
make it more difficult to obtain patent
issuance. The second Congressional reform
covers other changes to existing patent law.
What patent reforms are being considered?
The patent reforms presently found in
House and Senate bills include:
- Switching from a ‘first to invent’ to a ‘first
to file system.’ In the U.S., the first person to
invent obtains patent rights. Everywhere
else, it’s the first to file. The idea in the U.S.
was to protect inventors. Now, Congress
seeks to harmonize the U.S. system with the
rest of the world. This could negatively affect
entities that don’t have capital readily available to quickly apply for patents. - Mandated search reports. Mandated
search reports will require applicants to
report that they did a patentability search to
determine if the invention is ‘novel’ and ‘nonobvious.’ In the past, this was the
USPTO’s responsibility. This change will
require businesses to incur significant, additional expenses before applying for patents. - New post-grant opposition system. The
USPTO will have more power to render a
patent unpatentable after granting it. This
will provide challengers with more opportunity to oppose a newly issued patent in a formalized manner to reevaluate that patent. - Appointment of damages in a lawsuit.
Currently, a patent owner can seek damages
for an entire product even if only a portion of
it is patented. Now, damages will be limited
to the patented ‘articles’ in the entire device. - Codification of willful infringement standard. A recent court decision requires a
patent owner to prove willful infringment by
establishing an infringer’s ‘objective recklessness.’ New language will codify this as the
standard for proving willfulness. - Venue reform. Under the new law,
infringement suits will have to be brought in
the district court of the infringer, or where a
substantial amount of infringement is occurring. This will stop patent owners from shopping for ‘plaintiff-friendly’ courts and create a
level playing field for accused infringers. - Marking. Products are marked with U.S. patent numbers to provide notice that the
products are covered under one or more
patents. To obtain damages, a patent owner
must show that products are marked. If
they’re not, damages are limited beginning on
the day the patent owner provided notice to
the infringer. New provisions would permit a
patent owner to obtain damages for up to
two years prior to notifying the infringer.
Who is supporting the patent reforms?
Large, high-tech companies are supporters
of the reforms, as are companies that have
been sued for infringement in the past and
have paid significant damages afterward with
what they perceive as patents that should not
have been issued. They want to create a more
stable environment with more certainty as to
what they are facing on the patent landscape.
Who is opposing the patent reforms?
The opposition to the reform is just as large
as the support. Those opposing reform
include large manufacturers, universities,
nonprofit research centers, individuals, and
inventors, which constitute more than one-third of those seeking patents. Generally,
those opposing the reforms are doing so
based on specific portions of the bills.
How should businesses start preparing now?
First, follow the reforms closely over the
coming months and determine how they can
affect your business objectives. Second,
reconsider your patent strategy based on
those reforms. How do you want to proceed
with applications? Perhaps you’ll want to
spend less time and money on the number of
applications you are filing, and focus more on
ones that will provide greater quality. Third,
look more closely at the invention itself and
look ahead to potential issues such as obviousness. Fourth, think of creative ways that
your business can use the patent reforms to
your advantage. For example, the post-grant
opposition could be a cost-effective way to
challenge a competitor’s patent as opposed
to full-blown litigation.
DAVID B. CUPAR is a member of the Litigation Department, Intellectual Property Practice Group, at McDonald Hopkins LLC. Reach
him at (216) 430-2036 or [email protected].