The Need for Consensus on Patent Reform

February 1, 2008 – Article

Reproduced with permission from BNA's Patent, Trademark & Copyright Law Daily, No. 20 (Jan. 31, 2008). Copyright 2008 by The Bureau of National Affairs, Inc. (800-372-1033)

White Paper Cautions Against 'Radical Reforms' of Patent System

A white paper released Jan. 30 by two former Patent and Trademark Office officials said that many of the changes to the U.S. patent system proposed in pending legislation will bring needed improvements in patent quality and timeliness. However, the current House and Senate bills "need fixing" before Congress can finish its work on comprehensive reform, according to authors Gerald J. Mossinghoff and Stephen G. Kunin, both of Oblon, Spivak, McClelland, Maier & Neustadt, Alexandria, Va. The 35-page paper, titled "The Need for Consensus on Patent Reform," focuses on H.R. 1908, which was passed by the House in September, and S. 1145, which awaits Senate action. Mossinghoff, who served as commissioner of the Patent and Trademark Office under President Ronald Reagan, and Kunin, a former deputy commissioner for patent examination policy at the PTO, said that the genesis for those measures was the release in 2003 of the PTO's "21st Century Strategic Plan, which emphasized the need to improve patent quality and harmonize this country's patent law with the laws of its major trading partners (24 PTD, 2/5/03) The content of the needed reforms, according to Mossinghoff and Kunin, was laid out a year later in a 2004 report by the National Academies of Science. The NAS report should continue serve as a framework for any changes to the current system, they suggested. However, enactment of a patent reform bill has been "stymied" over the past three years by controversial proposals that are "at odds" with the goal of maintaining a strong and effective patent system, Mossinghoff and Kunin maintained. Among the "problematic" elements they cited in the current measures were proposals for:

  • "mandatory" apportionment of patent infringement damages;
  • changes in venue rules to limit where patent cases may be filed;
  • immediate interlocutory appeal of patent claim construction rulings to the U.S. Court of Appeals for the Federal Circuit;
  • revised standards of proof for willful infringement; and
  • delayed publication of some U.S. patent applications.

In the authors' view, any overhaul of U.S. patent law should be carefully confined, "lest the fixing of 'posterchild' problems will actually weaken the patent system." In particular, Mossinghoff and Kunin recommended that future legislative efforts should focus on the following:

  • moving from the current "first-to-invent" system of priority to a "first-inventor-to-file system;
  • establishing procedures for post-grant review of patents, with a "single window" for initiating such challenges;
  • outlawing the diversion of PTO fees to other government programs and providing the PTO with full access to its user fees;
  • eliminating the inequitable conduct defense to patent infringement, or at least including a "safe harbor" and objective standard of materiality for allegations of inequitable conduct; and
  • requiring publication of all patent applications at 18 months.

The white paper was funded by the Coalition for 21st Century Patent Reform, whose members include the American Intellectual Property Law Association, as well as companies from the manufacturing, information technology, consumer products, energy, financial services, medical products, pharmaceutical, and biotechnology industries. The coalition has been critical of many elements of the pending reform measures, but it indicated in a press statement that the views expressed by Mossinghoff and Kunin in the white paper were their own. See above pdf for complete article.