No Patent Reform: Court Blocks New Patent Rules

4/3/08

Last summer, the US Patent Office issued a package of new rules for patent applications. On Monday, the U.S. District Court for the Eastern District of Virginia decided to permanently block the changes.

The reactions from patent lawyers are mainly upbeat. “We are still dancing—it came out yesterday and we thought it was a cruel April Fool’s joke,” David Resnick, a partner at Nixon Peabody in Boston, told us in an e-mail yesterday. The Wall Street Journal’s Law Blog reports that “this morning, we were flooded with notes from patent lawyers who could barely contain their glee.”

The rejected rule package would have radically changed the way the U.S. patent system works. The goal was to ease the Patent Office’s workload, reduce its backlog, and speed up the review process, by limiting the number of claims and possible continuation applications. (Continuations contain additions to a patent’s original claims, or contest the office’s rejection of a patent.)

Big software companies have pushed the reforms. But in the pharma and biotech industry, the new rules met strong opposition. In these sectors it’s common to submit new empirical data from experiments and clinical trials in continuation applications.

Pharma giant GlaxoSmithKline and inventor Triantafyllos Tafus, founder of New Haven, CT-based biotech startup Ikonisys, both took the Patent Office to court to try to stop the proposal. On October 31, the day before the rules were going to be implemented, the Virginia court decided to put the whole package on hold. That preliminary ruling has now been confirmed.

But while this week’s decision is being called “permanent,” the Patent Office might still get its way. The Patent Baristas blog compares the Office with a B-movie villain who always comes back, and warns against premature celebrations.

The court’s decision can be found on the Patent Docs blog.

Erik Mellgren is a Swedish journalist who worked for Xconomy Boston in 2008 as part of the Stanford Innovation Journalism Fellowship program. His real job is with Ny Teknik, a leading technology and innovation magazine in Sweden, but he loved seeing the Red Sox at Fenway. Follow @

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  • http://www.simpen.se Max$o

    Hello mr mellgren. U are a truly great writer! May the force be strong within you.
    T bone Tessie sends her sincere gratitudes.

    Max, Andreas & Fanny keep it real in Sweden.

  • Lawrence B. Ebert

    Of –Big software companies have pushed the reforms.–, big
    software companies are the ones filing the most incrementalist
    patent applications of anyone, a fact alluded to by USPTO Director Dudas in his Hollywood talk in mentioning the toilet queue patent of IBM, without mentioning IBM by name. Check out “how many” continuation applications Intel files. The now-invalidated rules of the USPTO would have addressed fewer than 5% of applications, and would not have significantly altered the backlog problem.

    Lawrence B. Ebert
    blog at IPBiz
    April 4

  • http://www.PIAUSA.org Ronald J Riley

    Patent Deform legislation (S. 1145 and HR 1908) was dealt a mortal blow in early March as a result of organized labor’s opposition to the bill. The Coalition for Patent fairness & PIRACY (CPF or “C-poof”) and their high-priced lobbyists are having a panic attack behind closed doors while publishing press releases painting a rosy picture of imminent passage.

    AFL-CIO Issues Report Cards Scoring Performance of Members of Congress. Patent Deform is now part of the scoring system. Democrats are going to be reluctant to vote for patent deform when doing so is going to adversely affect their score.

    I expect that we will have another month to six weeks of the bill going through its death throws, but it will then expire.

    At that point the Professional Inventors Alliance (PIAUSA.org) will be looking at which of the proponents of the bill might be held accountable in upcoming elections. We would like to add to our growing list of Utah inventors.

    Perhaps next year we can address the real problem. Poor examiner working conditions is driving very high attrition. We only have one third as many examiners as we need. While USPTO management collects fees based on patent complexity, examiners are allocated a strict 20.5 hours for each patent application no matter the complexity.

    USPTO management is either grossly incompetent and/or corrupt. A cynic might surmise that USPTO management is perfectly willing to promote the interests of thieving transnational companies in the hope of improving their post USPTO employment opportunities.

    Problems at the USPTO are due to classic labor issues and PIAUSA is extremely pleased that a broad spectrum organized labor is recognizing this to be the core problem with the patent system.

    The Professional Inventors Alliance (PIAUSA.org) has been working with the American Ingenuity Alliance for many years to save American ingenuity, jobs, and the tax base of our communities from the excesses and shortsightedness of transnational corporate greed.

    PIAUSA is working hard to halt transnational corporations from stealing American inventor’s work and shipping it to slave wage countries. It is ironic that these hypocritical corporations constantly whine about theft of their intellectual property while they are systematically destroying independent and small business to facilitate theft of other’s patent properties. This practice is killing startup companies who could create decent paying jobs and a solid tax base which America desperately needs to replace jobs which these transnational corporations are exporting to low wage counties.

    Furthermore, we believe that all employed inventors should receive a royalty in addition to their base pay and we believe that assignments should by law have to be renewed annually as part of the employee’s review. At this time companies stick a pile of papers in front of new employees to sign, including assignments and the assignments are open ended. When the employee starts producing inventions, often many years later, the assignment comes into play. Once the assignment is in force it is not a factor in ongoing wage and benefit discussions.

    Even more egregious is the fact that companies use these outrageously broad assignment agreements with all employees, including those at the lowest pay scale such as secretaries and janitors. The result is that much of the time employees have jobs which have nothing to do with inventing which they are expected to do while producing an invention as unpaid overtime.

    A side effect of this situation is that employees quickly learn that disclosing an invention is not in their interest. Surely this is an unintended consequence of short sighted and short-term gain oriented management. Can America afford to have this situation continue at a time when innovation has become so important to our competitiveness?

    On a related matter, PIAUSA would also like to see the abomination which has been misnamed “free trade” turned into responsible and equitable trade. We recognize that globalization is inevitable, but we believe that it is long past time that management of this transition is taken from transnational corporations who have used it as cover to drive obscene profits at the expense of people in both developed and developing countries.

    Ronald J. Riley,

    Speaking only on my own behalf.
    Affiliations:
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.patentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST