Bringing Patent Law Overhaul Back to the Future: Three Key Considerations to Avoid Downgrading Our Nation's Patent Laws

On the surface, heady days for American innovation appear at hand. For the first time in 30 years, the U.S. Supreme Court will denote the patentable distinction between applied and abstract ideas. And Congress appears poised to pass a comprehensive patent reform bill. Yet on substance, the Senate Compromise bill is a step backwards from the current status quo. In this Analysis, John Squires examines the bill and discusses changes to be considered. He writes:

1. Where's the Consensus?

     Any patent statute aiming to fill the big shoes of the 1952 Patent Act, should have broad industry sector backing. The compromise bill has not garnered any significant support over last April's bill, and, in fact, some stakeholders have gone missing.

     Lack of consensus is likely not a result of any one particular affirmative bill provision, but rather what the bill fails to do in toto. On each hot button issue, ranging from damages (how much are patent rights worth), to willfulness (willful disregard of others rights, leading to enhanced, often treble damages) to venue (where defendants can be haled into court), to inequitable conduct (by what criteria must information be disclosed), no transparency exist as to what standard rationale economic actors must meet in ordering their conduct. This lack of transparency hurts the major stakeholder groups -- the tech sector, industries mature to patent issues (the manufacturing and branded pharmaceutical sectors) and the independent inventor groups alike. However, understanding how each is disaffected may produce a bridge between them and allow substantive provisions to emerge to salvage a meaningful reform framework.

     . . . .

Where the Progress?

     Finally drilling into the issues, the compromise bill provisions are a step back from the 1952 Act and decisional law that has developed since. Several provisions represent severe downgrades to where decisional law now stands interpreting the 1952 Act.

     Willfulness: In 2007, the Federal Circuit recalibrated the standard for determining willful behavior to 'objective reckless.' The compromise bill threatens to give back these gains by failing to require concrete notice provision, allowing any and all facts in addition to knowledge of a patent to suffice as a trigger and including a 'close case' standard that will be overly porous as compared to current law.

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