A comprehensive bill that would overhaul U.S. patent law has ignited the passions of many, from the individual inventor to big corporations.
Perhaps the most controversial aspect the Patent Reform Act of 2005 is the provision that would make it much more difficult for parties to seek injunctive relief.
Currently, a patent owners can force a product off the market if they can prove they'll be irreparably harmed if the infringement continues. If a patent is found to be valid and infringed upon, then the presumption is the patent owner is being irreparably harmed.
In one of the new proposals, the courts would be barred from presuming the existence of irreparable harm.
San Diego's Stephen Korniczky, chair of the global intellectual property practice for Paul, Hastings, Janofsky & Walker LLP, believes this is the biggest problem with the bill.
"The heart of the patent right is the ability to obtain an injunction against infringers -- that is, the ability to stop others from making, using or selling the invention you worked so hard to develop," he said. "What you have are a bunch of politicians that have focused on certain abuses in the patent system, and in their attempt to fix those abuses, they would shatter the rights of all those other patentees that are working within the patent system the way it was intended."
The proposed change has pitted the biotech and pharmaceutical industries, which want the ability to seek injunctive relief, against the software field.
Korniczky said the new provision, if passed, could even increase litigation.
"Infringers will be more willing to risk litigation if the only thing they need to worry about is paying a license fee or damage award after the fact in contrast to an injunction, which would knock them out of the market completely," he said.
Another draft was released earlier this week in which the language regarding injunctive relief was omitted.
The legislation also loosens claims of willful infringement. Simple knowledge of a patent would not automatically trigger willful infringement.
Patent owners would have to notify in writing the offending party of possible infringement. The notice also has to make it clear that a lawsuit will be filed, and identify specifically each claim of the patent and each product that infringes the patent.
"If someone in your company happens to read a patent, willful infringement doesn't start until the patent owner actually sends the letter," said Mitchell Brook, an IP attorney with Luce, Forward, Hamilton, Scripps LLP.
Under current law, according to Don Martens of Knobbe, Martens, Olson & Bear LLP, companies have instructed their employees not to look at other patents for fear they could accidentally be liable for willful infringement.
"The new provision should enable companies to say to their engineers, 'Go ahead and learn all you can from patented technology,' but at the same time feel safe that they're not creating willful infringement liability without knowing it," Martens said.
"One of the fundamental purposes of the patent system is to disseminate technical information. The current willful infringement law is hampering that."
Martens said the idea is for innovators to look for a way to improve existing technology in a manner that is unique for the betterment of the public.
"That function is not working very well if the engineers are told, 'Don't look at any patents.'"
The bill also seeks to eliminate the "best mode" requirement, which currently forces applicants to describe the best way the invention is intended to work. America is the only country with this requirement.
"It means you disclose a lot of specific details of how you practice the invention," Martens said. "Other countries just have to disclose enough so that people can read it and understand how they can practice the invention.
"What happens is people in other countries read our papers to get detailed technology of a company, but we can't read their patents to get detailed technology."
The switch could be useful especially if the United States switches to the "first to file" system because "you're going to be required to file an application earlier in the product development process," Brook said. "So you may not even fully understand what the best mode is at that point in time.
"It will also reduce some litigation because it's never very clear what the best mode is."
One of the leading groups opposing the Patent Reform Act of 2005 is the Washington D.C.-based Professional Inventors Alliance, which helped stop the last round of proposed changes in the 1990s.
"This legislation is not about patent reform," said PIA president Ronald Riley. "It's about shifting the balance of power so (big corporations) can take other people's property with impunity, and that's what it was about the last time.
"Inventors like myself spend years, sometimes decades, defending our rights against well-heeled companies who are predatory. They try to capture property without compensation, not unlike stealing cars, but the scale is much larger."
Riley said every aspect of the legislation is about lowering the liabilities and making it harder for people to assert their patents.
Korniczky isn't necessarily in favor of the proposed legislation either.
"It's the wrong solution to a legitimate problem," he said. "You don't need broad over-reaching reforms to fix the problems of a few patent abusers. In effect, you're punishing the masses for the wrongs of a few."
Editor's note: This is the last of a three-part series looking at the Patent Reform Act of 2005.
Bill proposes sweeping changes to patent law (Aug. 23, 2005)