From Intellectual Property Watch:
“IPW recently had the opportunity to interview Judge Michel on prospects for substantive patent reform in the US, the effect on future cases involving domestic and foreign patents, likely constitutional challenges, and the ‘non-problem’ of non-practicing entities.
Chief Judge Paul R. Michel (Ret.), of the U.S. Court of Appeals for the Federal Circuit, saw hundreds of patent cases during his distinguished career and has a unique position from which to view and offer advice on efforts in the US Senate and House of Representatives to agree on changes to domestic patent law.”
Questions (selected) asked during the interview:
- Do you favor the House (HR 1249) and/ or Senate-passed (S 23) versions of the patent reform bill?
- How might the bill affect future court rulings or even existing ones?
- Does the bill favor big business over small inventors?
- Will the bill address the problem of non-practicing entities [so-called “patent trolls”]?
READ FULL INTERVIEW [web]
In one fell and incomprehensible swoop, the “first to file” regime of the AIA may have washed away, or at least severely undermined, what has been a significant benefit for almost thirty years to those subject to and compliant with these Bayh-Dole obligations.
From IP Watchdog:
“In going from the current “first to invent” to the new “first to file” regime mandated by the America Invents Act (AIA), much attention has been focused on the amorphous “grace period” provision provided to patent applicants for certain activities undertaken by them prior to filing for a U.S. patent. Much less attention was paid to the amendments made to sections 203(c)(2) and 203(c)(3) of the Bayh-Dole compliance obligations which were directly impacted by this change in definition from the old “statutory bar” provision (based on publication, on sale, or public use of the invention caused by the patent applicant), to this new “grace period” provision. But even more astounding (and unsettling) are the unrecognized consequences caused by the AIA in “realistically” meeting certain Bayh-Dole compliance obligations by going from the current “first to invent” to the new “first to file” regime.”
READ FULL ARTICLE [web]
From The Hill:
“The House on Thursday rejected several key amendments to a controversial patent bill, including one that sought to strip what is arguably the primary purpose the bill, which is to move the U.S. to a first-inventor-to-file system.
Several members have warned that this change would violate the Constitution, which empowers Congress to reward inventors with patents. They say the addition of a timely filing requirement violates that language, and Rep. Jim Sensenbrenner (R-Wis.) warned that failure to strip this language through his amendment would result in a legal challenge to the bill…”
READ FULL ARTICLE [web]
The ruling hinged at least in part on the language used in Mark Holidniy’s patent assignment agreement with Stanford.
“The U.S. Supreme Court, in a ruling that limits the patent rights of research universities, threw out Stanford University’s suit against a Roche Holding AG (ROG) unit over methods for testing the effectiveness of AIDS treatments.
Voting 7-2, the justices upheld a lower court’s conclusion that a scientist working at Stanford in Palo Alto, California, transferred his rights to the discoveries to a company whose line of business Roche later bought…”
The reform proposed in this legislation includes the most significant changes to the U.S. patent law in over a century — and they are not good changes.
From Kevin Noonan of the Patent Docs blog:
“The reform proposed in this legislation [H.R. 1249] includes the most significant changes to the U.S. patent law in over a century — and they are not good changes. There are five major changes proposed which individually and in concert weaken patents and make it more difficult and expensive for universities to obtain, maintain, license and enforce patents…”