Today's Date: September 2, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

Posts Tagged ‘ Patent Reform ’

A Summary of the Goodlatte Patent Bill Discussion Draft

Posted: Tuesday, Oct 1, 2013 @ 3:58 pm | Written by Manus Cooney | 9 comments
| Tags: , , , , , , , , , , , , , , , , , , ,
Posted in: Congress, Guest Contributors, IP News, IPWatchdog.com Articles, Manus Cooney, Patent Reform, Patents

EDITOR’S NOTE: What follows is a summary of the Goodlatte patent bill created by American Continental Group, which is a government affairs and strategic consulting firm in Washington, DC. Manus Cooney, a former Chief Counsel of the Senate Judiciary Committee is one of the partners at ACG, and is also frequent guest contributor on IPWatchdog.com. Cooney and his partners and associates worked to prepare this summary, which was described as a team effort. It is republished here with permission. 

___________________________

Manus Cooney, ACG

Sec. 3. Patent Infringement Actions

Pleading Requirements (p.2)

Amends Title 35 to establish heightened pleading requirements for patent infringement actions.   A party alleging infringement must include in the pleading, unless the information is not reasonably accessible, the following:

  • Each patent allegedly infringed and each claim of each patent that is allegedly infringed
  • For each claim, which product, feature, method or process are allegedly infringed, including the name or model number; where each element of the claim is fount within the accused product/method; and how the terms of the asserted claim correspond to the functionality of the accused product/method.
  • Whether each element is infringed literally or under the doctrine of equivalents
  •  A description of the direct infringement, the acts of the alleged indirect infringement that contribute to or are inducing direct infringement
  • A description of the right of the party alleging infringement to assert each patent identified and patent claim identified
  • A description of the principal business of the party alleging infringement
  • A list of each complaint filed, of which the party alleging infringement has knowledge, that asserts or asserted any of the patents identified
  • Whether each patent is subject to any licensing term or pricing commitments through any agency or standard-setting body



News & Notes for September 2013

Posted: Friday, Sep 27, 2013 @ 6:30 am | Written by Gene Quinn | Comments Off
| Tags: , , , , , , , , , , , , , , , , , ,
Posted in: Attorneys, Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Law Firms, Patent Reform, Patents

Every month there are a number of items that catch my attention. Many of these “quick news” items are worth knowing or interesting in one way or another, but won’t support a longer article, which we typically prefer to publish on IPWatchdog.com. Others are certainly interesting and deserving of attention, but there are only so many hours in the day to write.

Without further ado, here is News & Notes for September 2013.

 

  1. USPTO Extends After Final Pilot
  2. CAFC Discusses Obviousness Type Double Patenting
  3. GW Master of Patent Practice
  4. White Paper Calls for Update to Patent Examination System
  5. Goodlatte’s Second “Discussion Draft” of Patent Reform
  6. Patent Litigator Becomes Managing Partner at Kilpatrick
  7. Clouding IP Faces Inter Partes Review at the USPTO
  8. New Superconducting Wire Invented
  9. Daniel Winslow Hired as Rimini Street General Counsel
  10. Patent filed on securing player identity on Internet gaming platforms


SHIELD Act Part 2 and Other Proposals to Combat Trolls

Posted: Sunday, Jun 16, 2013 @ 7:40 am | Written by Christian Martinez | Comments Off
| Tags: , , , , , , , , , , , ,
Posted in: Congress, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patent Trolls, Patents

For more on earlier proposals to address patent trolls see A Review of the SHIELD Act.

The latest incarnation of the SHIELD Act was introduced on February 27, 2013, and changes direction as if the first iteration were waived off in disgust before it could even lower its gears.  SHIELD Act 2, scuttles the “reasonable likelihood of succeeding” idea floated and introduces a new tool aimed at walling off the troll: a bond requirement.  If the plaintiff is not an original inventor or assignee, did not make a substantial investment in practicing the invention, or is not a university, that troll must post a bond.



A Review of the Patent SHIELD Acts and Recent Proposals to Reform Patent Litigation

Posted: Saturday, Jun 15, 2013 @ 8:15 am | Written by Christian Martinez | 2 comments
| Tags: , , , , , , , ,
Posted in: Congress, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Litigation, Patent Trolls, Patents

“Patty Sue Just Won’t Go Away.”  So went a 2002 article in the San Francisco Chronicle, one of a many articles spanning several years about Patricia McColm, a vexatious litigant blacklisted since 1994.  She was the Most Vexatious Pleader of the vexatious litigants.  If she were a patent attorney, frightened examiners would give her a 100% allowance rate without amendments.  If the anti-joinder provisions of the America Invents Act (“AIA”) applied to Patricia McColm, she would have her own clerk’s office.

One draws similarities between the problems presented by firms such as Intellectual Ventures, Acacia, and Lodsys and those presented by Ms. McColm, and a flurry of proposals were recently introduced in Congress.

To start, on August 2, 2012, a “bipartisan” bill was introduced in the House aimed to fix the perceived problems caused by patent trolls, or Non-Practicing Entities (“NPE”), entitled the “Saving High-Tech Innovators from Egregious Legal Disputes Act of 2012,” or the SHIELD Act.  The main point of the bill was to make patent holders pay the fees of those they allege infringe to (1) invalidate the patent or (2) defend an infringement action.[i]



Lame Duck Patent Reform: AIA Technical Corrections

Posted: Sunday, Dec 2, 2012 @ 9:30 am | Written by Manus Cooney | 3 comments
| Tags: , , , , , , , , , , , , ,
Posted in: Congress, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Reform, Patents

For a better part of the past year, there has been talk about the possibility of Congress moving a technical corrections bill to fix some “errors” within the America Invents Act (AIA).  The AIA was signed into law on September 16, 2011 and contains, as most major pieces of legislation do, some minor drafting errors.  On Friday, November, 30, 2012, a bill making technical changes to the AIA was introduced in the House of Representatives.  The bill number is HR 6621.  The proposed AIA package does NOT include a so-called “fix” to post-grant review that some considered to be substantive and not technical.

To rewind: Earlier this year, there had been some behind the scenes discussions on Capitol Hill about possibly modifying the AIA’s PGR estoppel provisions in a way that would have been problematic to patent owners.  The discussed change would have removed from the AIA the “could have raised” estoppel standard.  Concerns about weakening the PGR estoppels provisions as part of a ‘technical” package were communicated by members of the Innovation Alliance, university, inventor, and venture capital communities.

Fast forward to today:  The bill does not contain the troubling PGR “fix.” Key staff on the Hill believe the measure to be non-controversial. House passage of the measure could take place before year’s end.  What follows is the text of a draft section-by-section analysis of what was expected to be in the introduced AIA package of fixes.



Manus Cooney Part II – The Future of Patent Reform

Posted: Sunday, Sep 30, 2012 @ 7:30 am | Written by Gene Quinn | 2 comments
| Tags: , , , , , , , , , , , , , , ,
Posted in: America Invents Act, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents

Manus Cooney, former Chief Counsel to the Senate Judiciary Committee and a prominent DC lobbyist.

Last week I published part 1 of my conversation with Manus Cooney, who is one of the preeminent intellectual property lobbyists in Washington, D.C. Cooney, a former Chief Counsel to the Senate Judiciary Committee, is currently a partner with American Continental Group and was intimately involved in lobbying Congress relative to the America Invents Act (AIA), primarily on behalf of his client Tessera Technologies, who aligned themselves with the Innovation Alliance.

In part 1 we discussed lobbying in general, shining some light on the process as a whole and explaining why it is unrealistic to expect you can enter the debate near the end and have any hope of affecting change. In part 2, which is reproduced below, we discuss the specifics of lobbying the AIA, as well as the fight against further erosion of patent rights. And you thought that patent reform was over. Sadly, the fight continues.

COONEY: Going back to the AIA, when it comes to passing legislation, it’s important to know how each of the Congressional bodies work. It may be an oversimplification but it is usually the case that whatever the House Majority Leadership wants to pass, it usually gets done. In the Senate, however, it’s different because of its rules. There, whatever the Majority wants to pass has a shot at getting done. In other words, if the House Leadership, the Republicans in this case today, and the Chairman of the Committee want to see a particular measure passed, more often than not, particularly on an issue as esoteric and complex as patent law, the party members of the majority party are going to adhere or defer to the wishes of Leadership, And as a result, you’re trying to either create a situation in advance of the House measure coming to the floor where you have the support of the Leadership or you have created an environment where it’s less certain to the House Leadership and the Chairman that they will in fact be able to prevail, and thereby create an environment where they have to negotiate. Oftentimes in the House, your laying the foundation for a fight in the Senate where there is less deference to the Leadership. The rules are such that, in theory, any Senator can offer an amendment to any bill at any time, and you have a better shot at winning on the merits, so to speak. That has a way of forcing consensus. So realizing that those tend to be the ground rules, the landscape you’re dealing with, you develop a strategy for your clients.



Historic Patent Reform Implemented by USPTO

Posted: Monday, Sep 17, 2012 @ 5:19 pm | Written by U.S.P.T.O. | 7 comments
| Tags: , , , , , , , , , , ,
Posted in: America Invents Act, IP News, IPWatchdog.com Articles, Patent Reform, Patents, USPTO

Washington – The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.

Some of the new rules are as follows:

  • Three new administrative trial provisions — inter partes review, post-grant review, and the transitional program for covered business method patents—will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent. Additional information on third party submissions can be found here.
  • The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
  • The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
  • The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.


New Patent Reform Takes Swing at Patent Trolls

Posted: Friday, Aug 3, 2012 @ 7:25 am | Written by Gene Quinn | 10 comments
| Tags: , , , , , , , , , ,
Posted in: Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Litigation, Patent Troll Basics, Patent Trolls, Patents

Congressmen DeFazio (left) and Chaffetz (right) take on the problem of Patent Trolls.

Yesterday Congressman Peter DeFazio (D-OR) and Congressman Jason Chaffetz (R-UT) introduced the Saving High-tech Innovators from Egregious Legal Disputes Act, or SHIELD Act for short.  If ever passed into law the SHIELD Act would ostensibly adopt a variation on the English Rule, where the losing patent owner pays the legal fees of the victorious patent defendant when there was no “reasonable likelihood” that the patentee would prevail in the litigation.

The SHIELD Act is very short and is only directed at computer and software patents, which makes absolutely no sense if you ask me.  The seminal provision of the Act states:

Notwithstanding section 285, in an action disputing the validity or alleging the infringement of a computer hardware or software patent, upon making a determination that the party alleging the infringement of the patent did not have a reasonable likelihood of succeeding, the court may award the recovery of full costs to the prevailing party, including reasonable attorney’s fees, other than the United States.