About a year after the introduction of the post grant challenge (PGC) options, you probably have some idea about PGCs and how to deal with the unique rules of this forum. (If you need a refresher on that, read here.) What a lot of us are left wondering is how exactly to decide whether to use one of these options. I’ll elaborate on one approach that may provide some guidance: 1) Weigh the pros and cons; 2) Think about the timing of filing; and 3) Evaluate the nature of your argument.
Assuming there’s enough at stake for your client to go this route, you’ll first want to weigh the pros and cons of filing a petition.
Advantages of PGCs
“From an in-house perspective there’s no question that the various new post grant challenge options under the America invents Act are really a major shift in strategy; it’s a major step in the right direction,” says Samir Pandya, Senior IP Counsel of the Global Litigation Group at SAP, at the 2013 AIPLA Annual meeting.
A goal of nearly every defendant is to lower the total cost of resolution of any legal issue. As counsel for the defendant, you have to weigh the settlement and licensing costs of a patent dispute against the total defense cost and how long it takes to resolve the dispute with certainty. Today, CBM, IPR, and PGR are the lowest possible cost options.
On Thursday, December 5, 2013, the United States House of Representatives passed the Innovation Act by a vote of 325-91.
Surprisingly, the Innovation Act (HR 3309) had only been introduced on October 23, 2013, and was marked-up on November 20, 2013. So what was the rush? This break-neck pace, which took place in a Congress that has been noted for its extraordinary inaction, is curious to say the least. Indeed, one Member of Congress went much further than raising a curious eyebrow. “This schedule suggests the fix was in,” said Congressman Dana Rohrabacher (R-CA) on December 3, 2013, “The clear message to little inventors: give thanks for your intellectual property rights, because you may not have them by this time next year.”
There is no doubt that Congressman Rohrabacher is correct, even if his criticism seems at first glance to be a bit over the top. There can be no serious disagreement over the undeniable truth that over the last 7 or 8 years there has been a steady erosion of patent rights both in the Courts and thanks to laws passed by Congress. There can also be little serious disagreement that the speedy process afforded the Innovation Act prevented those who favor strong patent rights from mounting a credible opposition to the bill. Unfortunately, the forces that seek to weaken patent rights are well funded and fight the battle each and every day. Even before the America Invents Act (AIA) was passed in 2011 there were efforts underway to plant the seeds of what will be the next “industry ask” of Congress, which is stripping the ITC of its patent jurisdiction or at the least preventing the ITC from issuing exclusion orders. See Follow the Moneyand Weakening the ITC Will Harm the US Economyand Are Some Patent Holders More Equal Than Others?
The Truth is that while innovators spend their time inventing and doing business, not focusing on what has been taken for granted in the United States since the days of Thomas Edison, which is a strong patent system. Indeed, in this round of patent reform Universities, small businesses, technology based start-ups and independent inventors were given no meaningful opportunity to express their views. At the one hearing on the bill David Kappos, former Director of the USPTO and now a partner at Cravath, Swaine & Moore, cautioned Congress about going to fast and pointed out that no independent inventors were even invited to testify. But there is no rest for those who seek patent reforms that make patents less valuable, they are hard at work on whatever the current attempt is to chip away at patent rights, but also working to lay the foundation for further erosion of patent rights.
As the year quickly comes to a close, I recently engaged in some file cleanup. During this cleanup, it struck me that the most common type of agreement – by far – I worked on for my clients in the past year was the Non-DisclosureAgreement (NDA). While NDAs are no doubt considered “routine” or “standard” by practitioners and business clients alike, I suggest that each time you engage in the drafting and negotiating of one in the New Year, you actually question the forms you normally use by considering the following:
1.Parties. Who is the contracting party? That is, does the Non-Disclosure Agreement (“NDA” or Confidentiality Agreement) specify a parent, affiliate or subsidiary company? Does the NDA allow the party receiving your client’s confidential information to share it with a parent, affiliate or subsidiary?
2.Personnel. Does the NDA need to specifically list the employees and other personnel of the receiving party who can rightfully access the confidential information?
3.Direction. Does the NDA contemplate a mutual (i.e., “two-way”) exchange of confidential information or just a “one-way” exchange?
The deadline for nominating candidates for the position of Director General of the World Intellectual Property Organization is fast approaching. The last day to nominate a candidate is Friday, December 6, 2013. Currently there are only three candidates nominated, they are: (1) Francis Gurry, the current Director General of WIPO; (2) Geoffrey Onyeama, who grew up in England, was educated at Oxford and is the current Deputy Director General of WIPO for the Development Sector; and (3) Ambassador Alfredo Suescum, a U.S. educated lawyer who has served as Ambassador to the United Nations on behalf of Panama, as well as holding numerous other diplomatic posts. Suescum is currently Chairman of the TRIPS Council in the World Trade Organization (WTO).
In what should otherwise be a relatively benign news story, the election of the next Director General of WIPO is taking on a life almost of its own. Over the last several administrations WIPO has been plagued with scandals. For example, Kamil Idris, Director General of WIPO from from 1997 to 2008, was forced to step down a year early from the position due to allegations of misconduct.
When Idris was under attack, then U.S. Ambassador Warren Tichenor, was quoted in the New York Times as follows: “The member states and the employees of WIPO deserve to have an organization that is led with the highest professional and ethical standards…” In a 2008 interview published in Managing IP, Roland Grossenbacher, then chairman of the Administrative Council of the European Patent Organization, explained: “WIPO is in a very, very difficult situation right now and needs someone willing and capable over the next years, to handle the operational business, not by rhetoric but by action. That includes effective technical cooperation with developing countries. Sound operational management has been lost under the leadership of Kamil Idris but it has to be restored.”
WASHINGTON – Dean Kamen, founder of DEKA Research & Development, joined a group of fellow American inventors for a press conference call this week to highlight the negative impacts of H.R. 3309, The Innovation Act, and urge members of the U.S. House to vote ‘NO’ on the legislation when it comes up for a vote in the chamber today.
In addition to Mr. Kamen, participants in the call included: Dr. Greg Raleigh, Ph.D, CEO & Chairman of ItsOn Inc.; Dr. Gary Michelson, M.D., Board Certified Orthopedic Surgeon and Hall of Fame Inventor; and Louis Foreman, Product Development & Innovation Expert, Producer of Everyday Edisons.
“These are real inventors – in the trenches, every day, trying to come up with the next best thing and the only way they are able to protect their rights to what they invent is through strong patent rights. We wanted to hear from them and what they think HR 3309 will do to their ability to enforce those rights,” said Brian Pomper, Executive Director of Innovation Alliance, who moderated the call.
Below are quotes from the inventors during the call:
My 2013 ethics series continues, today looking at several final orders in disciplinary proceedings resolved in April 2013.
These, together with the other orders from the Office of Enrollment and Discipline from our 2013 ethics series, will be at the core of my ethics presentation on February 4, 2014, at the 8th Annual Patent Law Institute in New York City. The event will be live and webcast, and then reprised on March 18, 2013, in San Francisco.
This case relates to Leonard Tachner of Irvine, California. Tachner was suspended from practice before the Office in patent, trademark, and non-patent matters for five years for severely neglecting his patent practice to the detriment of his clients, but with a provision that would allow him to apply for reinstatement after serving four years of the suspension. This action is the result of a settlement agreement between Tachner and the OED Director pursuant to the provisions of35 U.S.C. §§ 2(b)(2)(D) and 32 and 37 C.F.R. §§ 11.19, 11.26, and 11.59.
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