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New Congress to tackle old problem: patent reform

The new Republican majority in the House of Representatives likely won’t have any affect on patent reform legislation, San Diego intellectual property attorneys say.

The two real parties involved in any patent reform debate continue to be those in the biotech sector, along with small inventors, and those in the software industry.

“Patent reform isn’t really a partisan issue,” said Michael Rosen, a principal in the San Diego office of Fish & Richardson, adding, “Given this is now an odd-numbered year with no election campaigns going on, the prospects for passage are higher than they were last year.”

San Diego’s Joe Mallon, a patent attorney with Knobbe Martens Olson & Bear, agreed that patent reform doesn’t follow party lines.

Instead, for guidance on how likely patent reform legislation will be passed, he looks at “who are the people involved now, and what have they pushed in the past.”

Rep. Lamar Smith, R-Texas, is the new chairman of the House Judiciary Committee. He has pushed for patent reform in the past, and in an opinion piece for the blog Politico, Smith emphasized the need to move forward with legislation this year.

“We need to improve our patent system to better protect intellectual property and help ensure that good patents are approved quickly,” he wrote. “There is bipartisan support for needed revisions to our patent system, which has not been significantly updated in more than a half-century.”

One change that could be attributed to the House’s change in parties is the re-establishment of the subcommittee on intellectual property, competition and the Internet in the House. Democrats disbanded the committee in 2008, according to Mallon.

Bob Goodlatte, R-Va., will be chairing the subcommittee with Howard Coble, R-N.C., serving as vice chair.

“They’re more in line with the high-tech side of patent reform,” Mallon said.

For years now, lawmakers have been trying to past sweeping changes to the U.S. patent system. In order to be successful, however, some pundits suggest the 112th Congress will need to narrow its focus.

“The major impact I see of this new Congress is that rather than getting a broad bill that deals with multiple aspects of the patent system all at once, what we’ll see are targeted pieces of legislation that deal with individual aspects of the patent system that are perceived as being broken,” said Jim Mullen, a patent attorney and San Diego partner of Morrison & Foerster.

One area legislators can find common ground on is fee structure. Currently, a sizable chunk of money the patent office generates through user fees is diverted to the federal government’s general fund.

“Almost all the people who have an interest in the operation of the patent office, all the stakeholders, want to have a patent office that can be completely self-funded,” said Mintz Levin Cohn Ferris Glovsky and Popeo patent attorney Carl Kukkonen.

“There’s a sense that we really need more funding for the patent office and end fee diversion,” agreed Mallon of Knobbe Marten. “In the past, people have said those two need to go together. I think that’s an example of something that could be passed separately.”

One of the major questions facing lawmakers is what form post-grant review will take. Fish’s Rosen said they are considering ways that a third-part could invalidate an issued patent without having to go to court. It simply would be challenged at the patent office.

On the litigation side, there are several contentious issues, including willful infringement, transfer of venue, false marking and how to calculate damages.

These matters all were part of the 2010 legislation that ended up stalling, and they continue to attract controversy.

“For the bulk of patent reform legislation being contemplated, if it goes through it’ll go through in an omnibus form that will constitute a sort of grand bargain between the various interest groups,” Rosen said.

Mullen, the attorney with Morrison & Foerster, said another difficult aspect is the issue of harmonization with the rest of the world. One of the elements lawmakers are considering is having the United States change from a “first to invent” system to “first to file” one.

Mullen said any change could involve getting agreement from the rest of the patent world to adopt the United States’ grace period for prior art.

“You can publish your own work and then get a year grace period before your own prior art gets used against you,” he said. “Ideally, we’d become a first to file country in exchange for a grace period.”

Some patent reform already is taking place. Earlier this year, President Obama signed a bill that establishes a 10-year pilot program in federal court that allows judges to enhance their patent expertise.

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