Philip Brooks' Patent Infringement Updates

Cast Vote Today for Medical Research - Halfway to March 18 Goal!

The following is excerpted from an article posted at The Wistar Institute:

My name is Scott Hensley, Ph.D., and I’m an assistant professor here at The Wistar Institute. Like most academic biomedical researchers, I rely on grants from the National Institutes of Health and other agencies to fund my work. I would like to ask for your help in continuing to move our research forward.

For decades, government funding has propelled biomedical research, fostering new discoveries and creating real improvements in the lives of all Americans. Every vaccine we give our children, every lifesaving medical procedure, and every new drug that comes to the market, owes its origins to the fundamental science done in places like Wistar.

Recently, the White House has released a proposed budget for the 2013 fiscal year, which essentially flattens the NIH. This year’s budget is the same as last year’s, which effectively means a 3.5 percent cut due to inflation. This cut means that a potential cancer treatment could go untested, or that researchers might not be able to explore new avenues of research. It means a loss of jobs and impairs our ability to train young scientists.

We can all understand that these are difficult times and budgetary sacrifices must be made, but I believe we can do so without sacrificing our future in the process.

I ask you to urge President Obama to increase the NIH budget for FY2013. One of our colleagues in the research community has posted a petition on the official White House website. This petition must get 25,000 signatures by March 18 if the White House is to review it.

While a single petition does not mean much by itself, it gives impetus and ammunition to the many advocacy networks that are trying to convince the President and Congress to increase funding for the NIH on behalf of all Americans.

So I ask you to do two easy things: sign this petition, and ask your friends and family to join sign it too. It won’t take more than a few minutes of your time and it can make a real difference.

NPEs in Patent Litigation

Strafford Publications is hosting the above-titled webinar on January 17, 2012:

Patent infringement actions brought by non-practicing entities (NPEs) have dramatically risen in recent years. In such suits, the defendants face the additional challenge of not being able to apply competitive pressures. Recent developments in the legal landscape change how counsel approach NPEs.

The America Invents Act (AIA) limits an NPE’s ability to join unrelated parties. In September, an NPE could file one suit against 200 entities, but the AIA would require as many as 200 separate filings in that case. While those 200 cases could be consolidated for discovery, they could not be consolidated for trial.

Patent counsel must understand recent court decisions and new procedures in some courts, as well as patent reforms under the AIA to combat NPEs in suits.

Our panelists, including R. David Donoghue, Partner at Holland & Knight, will provide guidance to IP counsel on the significant recent developments that impact how companies deal with non-practicing entities. We will also discuss settlement and defense strategies in patent suits with NPEs.

The panel will review these and other key questions:

• What effect will the America Invents Act law have on NPEs?
• What new court procedures and decisions have developed that impact NPE litigation?
• What strategies can be employed to minimize the threat of patent litigation?

Learn more and register here.

Patent Settlement Agreements Remain a Focus in the U.S. Congress

Alan Klein, partner in the Trial Practice Group of Duane Morris LLP, wrote the above-titled article for this month's INNsight newsletter at GenericsWeb. The following is excerpted from the article:

Patent litigation settlement agreements between brand and generic drug manufacturers are receiving increased scrutiny in the United States Congress with the introduction of legislation with bipartisan support. The proposed Bills seek to curtail such agreements and get generic drugs to market faster and end what critics have complained are “pay for delay” deals benefiting both brand patent holders and generic drug company challengers. As noted below, however, there is a flip side to this controversy which the generic drug industry has highlighted in its public responses to this legislation. Opponents point to the risks of litigation and to the broader benefits accruing to consumers, health insurance companies and government third-party payors from such settlement agreements.

The Preserve Access to Affordable Generics Act, introduced last January in the current Congressional term, would establish a presumption that such patent suit settlement agreements are anticompetitive if the generic first filer receives anything of value or agrees to limit or forego research, development, manufacturing, marketing or sales of the generic drug for any period of time.

A second Bill introduced earlier this month, titled the Fair and Immediate Release of Generic Drugs Act (the “FAIR Generics Act”), would prevent brand drug companies from so-called “parked exclusivities” – providing generics which are not first-to-file with the right to market a generic equivalent of the brand drug during the first filer’s 180-day exclusivity period.

Read the full INNsight article here.

China Awakening Patent Power

The following is excerpted from a November 11, 2011 article by Jameson Berkow published by The Gazette:

Those who deride China for failing to take patent protection seriously might just be provoking a sleeping dragon.

For China, experts argue, has intentionally maintained a lax intellectual property enforcement regime for decades, waiting until its internal invention industry had become strong enough to warrant something more robust.

Soon more patents will be filed in Beijing each year than in Washington D.C. and Chinese entrepreneurs are stealing the attentions of Silicon Valley pundits and investors. Many believe the Chinese patent dragon is beginning to show signs of stirring. Once that happens, experts say, foreign firms looking to do business there will need to worry less about losing IP to China's infamous underground economy and more about losing an IP infringement case in a Chinese courtroom.

"So what they did was have a regime in place where they were free to copy, to steal ideas from other countries."

Nearly three decades later, the result is a Chinese version of every major western invention that exists everywhere else: Weibo is China's Twitter and Baidu is China's Google, both are protected under Chinese patent law.

"In Canada, you have maybe 60 patent infringement cases filed per year, maybe 80, and in the United States there are 3,000," said Mr. Elmer. "China now has more than 3,000 ... probably closer to 4,000 now."

Read the full article here.

Patent Reform: 5 Ways You Can Expect Patent Litigation to Change

I was alerted by Larry Bodine (Editor in Chief of Lawyers.com at LexisNexis) via LinkedIn to this November 4, 2011 JD Supra Small Business Support post:

“The signing into law of the [America Invents] Act marks a new era of patent litigation. The Act presents a host of opportunities for companies, especially those defending patent infringement actions, provided they act quickly – given that several of the provisions have immediate prospective and in some cases even retroactive effect.” (From Patent Reform Act Will Change the Face of Patent Litigation by Morrison & Foerster LLP)

One key objective of the Leahy-Smith America Invents Act is reducing costly legal battles for inventors, entrepreneurs and small businesses with limited resources for litigating disputes. From lawyers and law firms on JD Supra, here’s a look at five ways the Act will do that:

1) False marking lawsuits are effectively finished…
2) There’s a new post-grant review in town…
3) Deadlines for third party submission of art are extended…
4) “Best mode” is no longer a basis for patent invalidity…
5) “Prior Use” defense is significantly expanded…

Read the details for all five here.

Europe's Landmark Decision on Stem Cell Patents

The following is excerpted from an October 27, 2011 Jones Day Commentary by Niklas Piening, Christian Paul and Martin Weber:

In a landmark decision on October 18, 2011, the highest court of the European Union—the Court of Justice—decided on the patentability of stem-cell-related inventions (case number C-34/10). The dispute arose around the definition of the term "human embryo" in the European Biotechnology Directive. Based upon this decision, the Court will now apply a very broad definition, which will result in nonpatentability and invalidity of many stem-cell-related inventions in Europe. The impact on biotechnology and life sciences innovator companies will be significant.

According to the Court, the definition shall include the fertilized human ovum. Reaching even further, the term shall also include artificial cell types including the ones obtained by cell nucleus transfer from a mature human cell into a nonfertilized human ovum. This technology was used to obtain the clone sheep "Dolly," for instance.

The Court of Justice further ruled that not only is any such—broadly defined—human embryo unpatentable, but also that every invention that requires the prior destruction of a human embryo shall not be the subject of a patent. This also applies to inventions using stem cell lines that resulted from the destruction of a human embryo long before the cell line was employed for the invention.

Read the full commentary here.

Patent Bar Review

Practising Law Institute's exam-focus Patent Bar Review chaired by John White offers:

> Coverage of the new materials being tested in texts, lectures and practice questions;
> Our course is reimagined and improved from day one to provide you a greater foundation in patent law and more feedback; and
> Lectures and questions software are now online for 24/7 convenience and new Web-connected features.

Patent Reform is in the news! But luckily, it’s not on the Exam….yet! But it will be before you know it. If you don’t pass the Exam by next summer, you’ll be in serious danger of having to learn (and remember!) almost twice as much information as currently, plus a dizzying array of effective dates for the various new provisions. So, there’s no time like the present. And this time it’s not just a figure of speech.

They won’t be testing ANY of the new law before early 2012, so if you can pass the Exam before then, you’d be well-advised to do so. (Students: we suggest you study casually throughout the fall, and then plan on spending your Winter Break really focusing on it, and taking the Exam as early in 2012 as possible.)

Even if you don’t get it done by winter, it shouldn’t be a major problem. The pieces of the new law that are effective immediately, and testable probably in the spring of 2012 are relatively small, discreet changes. We’ll get our takers a short supplement covering those new materials, and maybe some practice questions and supplemental lectures, if necessary. Not to worry.

If you don’t get this done by early summer, you may have to worry. They could start testing the BIG changes (first to file and post-grant review) as early as Fall 2012. We’ll of course get our takers all of the necessary supplemental materials, questions and lectures. Don’t worry about that. What you DO need to worry about is that, for probably two years after that, they will be testing BOTH sets of rules (the “old” rules that still apply to applications already in process, and the new rules that apply to applications filed after the effective date of the various provisions). So, once they start testing this, the Exam will likely get significantly more difficult in progressive steps.

Upcoming Live Courses

• Washington, DC: Jan. 11 - 15, 2012
• Chicago, IL: Mar. 14 - 18, 2012
• New York, NY: May. 16 - 20, 2012
• San Francisco, CA: Jun. 19 - 23, 2012

Learn more and register here.

Patents Defended

The following is excerpted from an article by Michael M. Rosen appearing in the September 12, 2011 issue of The American (The Journal of the American Enterprise Institute):

On September 8, Congress at long last passed the “America Invents Act,” the first overhaul of our patent system in decades. Yet not everyone has cheered the new law, or how it came about.

The U.S. patent regime has always been a careful balancing act between encouraging innovation, enforcing the rights of inventors, and ensuring the public interest. Yet in two recent reports—one on National Public Radio’s “This American Life” and one in the New York Times—critics have argued that that equipoise is in grave danger.

Yet, like all complex issues presented by the mass media—even (especially?) by outlets as sophisticated as NPR and the Times—the ins and outs and what-have-yous of our patent system are far more nuanced, and the players far more difficult to cabin into bad guy and good guy roles, than NPR’s Ira Glass and company would have you believe.

Read here the analysis by Mr. Rosen of these two reports.

Information Forum on Pending U.S Patent Law Overhaul

The above-titled Forum is sponsored by the National Small Business Association and the Washington, D.C., Northern Virginia and Baltimore Sections of the Institute of Electrical and Electronics Engineers (IEEE). The Forum will focus on the impact on patenting practice, patent protection, and on science and engineering jobs.

The following is excerpted from the Angel Venture Forum's email invitation to this event:

As major changes in U.S. patent law are adopted, a radical shift in the landscape for the process of seeking and obtaining patent protection for innovations is taking place.

Recent mega-acquisitions of patent portfolios with unprecedented valuations by large multinational corporations underscore a trend wherein a growing share of U.S. patents are owned by a few large multinational corporations.

On March 8, 2011, the Senate overwhelmingly passed the S. 23 that would make fundamental adverse changes to a 220 year old patent system that has made the United States the world leader in generating new inventions and fueling start-up companies that historically have been the greatest engines of job creation. On April 14, 2011, the House Judiciary Committee sent a version of H.R. 1249 to the House which mirrors S. 23 and it passed the House in June, 2011.

This legislation, touted as exemplars of "patent reform" and "harmonization" was passed with with little to no input from small business and individual inventors and a lot of input from large multinational corporations.

H.R. 1249 is scheduled for a vote in the the Senate in early September. Please take the time to learn how this will change the landscape for start-ups thinking they can rely on patents.

SPEAKERS & PANELISTS:

Paul Michel, Chief Judge (retired) of the U.S. Court of Appeals for the Federal Circuit which is the highest court specializing in patent law and from an official from the U.S. Patent and Trademark Office.

John Duffy, University of Virginia School of Law

Valerie Gaydos, Angel Investor, Angel Venture Forum

Ron Hira, Rochester Institute of Technology, co-author of "Outsourcing America"

Ron Katznelson, Entrepreneur-inventor and President of Bi-Level Technologies

Henry Nothhaft, Serial Entrepreneur and Author of "Great Again"

Herbert Schwartz, Patent litigator and author of "Patent Law and Practice," a book used by all federal judges.

DATE & TIME: Monday, August 29, 2011; 1:00 PM - 4:30 PM

LOCATION:

UC Washington Center
1608 Rhode Island Ave. NW
Washington, D.C. 20036

There is no cost to attend this forum. Registration deadline is August 26. Register here.

Proposed U.S. Patent Reform Legislation Undermines American Competitiveness, Coalition of Nine Inventor Organizations Says in Letter to Congress

The following is an April 6, 2011 press release provided by Edge Communications:

In a sharply-worded letter to leaders of both houses of Congress, a coalition of start-up entrepreneurs, faculty and independent inventors and technical professionals has called on lawmakers to reject or substantially modify the America Invents Act, now pending in the House of Representatives as H.R. 1249, addressing reform of the U.S. patent system.

“The bill contains troubling provisions pertaining to matters that are critical to small businesses,” the coalition wrote.  “The current proposals will inflict substantial harm on our members, who need strong reliable patents to build our businesses and create jobs.  The proposed Act has several features that will increase our costs sharply and reduce our access to the patent system, increase the Patent Office’s delay and backlog, and decrease our ability to enforce our patents. By making patents less certain, and adding costs and delay, the bill impairs our members’ ability to raise capital.”

The nine members of the coalition include: American Innovators for Patent Reform (http://www.aminn.org/patent-legislation); CONNECT (www.connect.org); IEEE-USA (http://www.ieeeusa.org/policy/policy/2011/021511a.pdf); IP Advocate (www.ipadvocate.org); the National Association of Patent Practitioners  (https://www.napp.org/resources/NAPP-PartialOppTo2009SenateBill.pdf); the National Congress of Inventor Organizations (http://www.nationalcongressofinventororganizations.org); the National Small Business Association (http://www.nsba.biz/docs/patent_reform.pdf); the Professional Inventors Alliance USA (www.piausa.org, http://truereform.piausa.org); and the U.S. Business and Industry Council (www.americaneconomicalert.org).

“America’s patent system has always focused on the needs of inventors, integrating the patent application process within their normal course of research and development,” the group said.  “For nearly two centuries, it has demonstrated its singular ability to foster and grow the country’s small-business inventors, to help America achieve its status as the global leader in technological innovation and job creation.  Changing U.S. patent law to be like the less-successful patent systems of the rest of the world cannot be regarded as positive ‘reform.’”

Among the coalition’s key concerns:

• The weakening of the grace period, as part of the “first inventor to file” section of the bill, raises risk of loss of patent rights by its constituencies, as it impedes the important process of incubating and vetting inventions.  This provision is mismatched to the American startup and venture capital process, and will impair the ability of inventors to create the startups that are responsible for all net job growth for the last 30 years.
• Increased filings driven by the Act’s “use it or lose it” grace period rules and by post-grant review will further burden the U.S. Patent & Trademark Office (PTO) at a time when its backlogs are unacceptable.
• So-called post-grant review.  By making patent rights less secure, and allowing infringers multiple bites at the apple, this provision will hamper startups’ access to capital, and their ability to create companies and jobs.
• Rehabilitation of the Patent Office by ending “the tax on innovation,” the diversion into the general fund of patent application user fees … is an essential step in bringing down the huge backlog of unexamined applications, in which new jobs are buried.  The group urges Congress to shift its attention away from the broad and technically difficult America Invents Act, and instead pass a streamlined, targeted bill that focuses only on long-term PTO funding.

Reconsideration of the Act Deemed Vital to Startups

As Bruce E. Hayden, chair of the IEEE-USA Intellectual Property Committee, noted in a separate letter to Sen. Patrick Leahy (D-VT), “two recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau tell us that ‘startups aren’t everything when it comes to job growth. They’re the only thing.’  Startups are responsible for all net job creation since 1977 and the U.S. patent system is key to startup formation.  Investors depend on strong patent protection for assurance that ‘the next big thing’ will generate profits for the innovator who turns a raw idea into a marketable product, and that large competitors will not appropriate those ideas.”

Writing to California Sens. Boxer and Feinstein, prolific inventor and patent-holder Steve Perlman, President and CEO, OnLive, Inc., took strenuous exception to [the bill’s] disposal of “First-to-Invent” provisions.  “S.23 [the Senate version of H.R. 1249] proposes the U.S. switch to an obtuse ‘First-Inventor-To-File’ concept which is ‘First-to-File’ muddled with an immensely complex set of priority rules unlike any patent priority system ever used before in any country,” he noted.  “It is far worse for small entities than conventional ‘First-to-File’ because of the highly complex and obscure priority rules.  Switching to ‘First-to-File’ would be bad enough… but switching to a completely different system introduces immense complexity and risk… and the overwhelming consensus [among legal scholars] is that changing U.S. law to ‘First-(Inventor)-to-File’ is unconstitutional.”

Venture capitalist and inventor Gary Lauder, addressing the issue, put it this way:  “When I talk with fellow Silicon Valley entrepreneurs, inventors and investors about patent reform, the universal response is ‘What's that?’ They are unaware that the patent landscape -- which has helped make the USA into the most innovative country on the planet -- is about to tilt in favor of the large companies that have representation in Washington.

“It is extremely hard to succeed as an inventor and entrepreneur, but America has created the most fertile ground in the world for doing so,” Lauder observed.  “Maintaining that fertility enables Schumpeter's ‘creative destruction’ to reshape our world for the better.  Patents confer power to the otherwise powerless... We should do all we can to increase the chances of their success. All of the companies that are advocating for patent reform were once start-ups.”