Patent Reform 2.0 – The Next Round of Patent Reform

By Gene Quinn
April 27, 2015

On Monday, May 11, 2015, IPWatchdog will a co-sponsor a roundtable discussion on patent reform. This event will take place at the law offices of McDermott Will & Emery, which is located directly across the street from the U.S. Capitol. Bernie Knight, a partner with McDermott and a former General Counsel to the United States Patent and Trademark Office, will co-moderate the event along with me. We hope you can join us for this discussion.

Confirmed participants for this roundtable discussion on the pros and cons of the alternate versions of patent reform legislation include:

  • Chief Judge Paul Redmond Michel, CAFC (retired)
  • Herbert C. Wamsley, Executive Director, Intellectual Property Owners Association
  • Louis Foreman, Founder and CEO, Enventys
  • John M. Whealan, Dean for IP Law Studies, George Washington Law School
  • John R. Thomas, Professor, Georgetown University Law Center
  • David Ruschke, Chief Patent Counsel, Medtronic CardioVascular
  • Phil Hartstein, President and CEO, Finjan
  • Hans Sauer, Deputy General Counsel for Intellectual Property, BIO

While there are numerous pending bills relating to various aspects of patent law and procedure, the conversation on May 11 will focus on the major legislative proposals – the Innovation Act, the STRONG Patents Act, and the TROL Act. Senator Chuck Grassley (R-IA) and Senator Patrick Leahy (D-VT) are reportedly currently working on draft legislation that would be similar to the Innovation Act, although not identical. It is expected that this Senate companion to the Innovation Act will be introduced within the next week or two. If that happens as expected this roundtable event will also address that piece of legislation as well.

 

Date: Monday, May 11, 2015
Time: 8:30 – 9:00 am EDT – Continental Breakfast and Registration
9:00 – 10:30 am EDT – Program
Venue: McDermott Will & Emery
The McDermott Building
500 North Capitol Street, N.W.
Washington, D.C. 20001
View map | Directions
Registration: CLICK HERE to REGISTER
For more information, please contact Paul Lazdowski.

McDermott has the right to restrict attendance and may limit participation in this event.

 

What follows is a summary of the major patent reform bills currently pending.

Innovation Act

On February 5, 2015, House Judiciary Committee Chairman Congressman Bob Goodlatte (R-VA) bypassed the IP Subcommittee and reintroduced the Innovation Act, which passed in the House during the 113th Congress but then failed in the Senate. Among those also reintroducing Innovation Act were Congressman Jerrold Nadler and Congresswoman Zoe Lofgren, both members of the House IP Subcommittee. The Innovation Act includes fee-shifting provisions, which provide that the loser of patent infringement litigation would have to pay the attorneys fees of the winner unless the loser’s positions were objectively reasonable. The Innovation Act also includes the so-called “customer-stay provision,” which seeks to customers from patent litigation lawsuits more appropriately brought against the manufacturer of the allegedly infringing product. The Innovation Act also contains provisions that would heighten pleading standards on patent plaintiffs beyond what is necessary to institute a patent infringement lawsuit. For more information please see the Innovation Act on IPWatchdog.com.

It is anticipated that the Innovation Act will be most similar to whatever bill is ultimately introduced by Senators Grassley and Leahy, who are reportedly working closely with Senator John Cornyn (R-TX) and Senator Chuck Schumer (D-NY).

STRONG Patents Act

Senators Chris Coons (D-DE), along with co-sponsors Dick Durbin (D-IL) and Mazie Hirono (D-HI) submitted The Support Technology and Research for Our Nations Growth Patents Act, or the STRONG Patents Act, on March 3, 2015. The STRONG Patents Act would make a variety of changes to post grant administrative proceedings that the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), including requiring the PTAB to abandon the broadest reasonable interpretation standard (BRI) and mandating that claims be presumed valid. The Act would also eliminate fee diversion, make it easier to obtain willful damages, make divided infringement actionable even if not all steps are practiced by a single entity, and give the Federal Trade Commission (FTC) greater ability to go after those who send fraudulent or misleading demand letters, but creates a good faith defense. The STRONG Patents Act is supported by the Biotechnology Industry Organization (BIO), the Innovation Alliance, and at least several major university groups. For more information on this bill please see STRONG Patents Act Introduced in Senate and Senator Coons – Patents are about the American Dream.

It is worth noting that the STRONG Patents Act is similar to several other pending pieces of legislation in the House of Representatives. More specifically, the Innovation Protection Act reintroduced by Congressman John Conyers (D-MI) would similarly put an end to fee diversion. The TROL Act (discussed below) also seeks to target fraudulent and abusive demand letters.

TROL Act

The Targeting Rogue and Opaque Letters Act, more commonly referred to as the TROL Act, was introduced during the 113th Congress and passed the House Commerce Subcommittee with bipartisan support. The TROL Act addresses the sending bad faith patent demand letters, clarifying that such activity may violate the Federal Trade Commission Act. The Act defines bad faith as either applying to false or misleading statements or omissions, whether knowingly false, made with reckless indifference to the truth, or made with an awareness of a high probability that the statements or omissions would deceive the sender intentionally. The TROL Act also further authorizes the FTC and state attorneys general to bring actions to stop the abusive behavior, but also provides a good faith affirmative defense. The Act would further preempt any state law or regulation expressly relating to the transmission or contents of communications relating to the assertion of patent rights.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments.

  1. Paul Morinville May 4, 2015 8:47 am

    In the PATENT Act, if a suit is filed under 271(e), it is exempt from lower-pay, joinder and “certification”. I’m not a lawyer, but this looks to me like pharma and bio have been carved out of loser-pay portions in addition to universities.

    Am I correct? If I am, what’s left to carve out? Just independent inventors and small patent-based businesses?

  2. Mark May 8, 2015 5:04 am

    Paul,

    That’s ridiculous. But it is the way politics is done right?

  3. Paul Morinville May 8, 2015 8:15 am

    Mark, It is the way politics is done becasue not enough people object. If you don’t like it call your Senator in their Washington office or go meet the staff in the local office. There are a lot of inventors doing that now. The more we get on the phone, the better chance we have of killing this bill. Once killed, if we keep up the pressure, they will have to deal fairly on the next one.