Eric E. Bensen on the Patent Reform Act of 2009

Eric E. Bensen on the Patent Reform Act of 2009

The Patent Reform Act of 2009 (PRA) is Congress’ most recent attempt to put its stamp on the Patent Reform Era. The Act may be seen as a setback for patentees. However, for some, the PRA might prove in practice to be less of a setback than expected. In this Analysis, Eric Bensen, co-author of Milgrim on Trade Secrets and Milgrim on Licensing, examines the PRA’s history and discusses the PRA’s major provisions. He writes:
 
     Perhaps not surprisingly, given the concerns that gave rise to it, i.e., the questionable quality of many patents and the proliferation of patent litigation, the PRA is distinctly pro-defendant and, naturally, has received much opposition from patent holders, most notably, the ethical pharmaceutical companies (Branded Pharma). What may come as a surprise is that it has also found strong support among other patent holders, most notably, technology companies (the Tech Industry).
 
     . . . .
 
     Proposed revisions to, primarily, 35 U.S.C. § 102 (Conditions for patentability) and § 135 (Interferences)) would accomplish the following.
 
a. Provide, with limited exceptions, that a patent may not be obtained on an invention patented, described in a patent or printed publication, including a published patent application, in public use or otherwise available to the public before the effective date of the patent application other than through disclosures made by the applicant within one year of the effective date of the application of by the application.
 
     . . . .
 
     The House bill takes a serious stab at reforming patent damages law and, if enacted, would likely to succeed in certain respects. For instance, it underscores that application of the EMVR, which is practically assumed in many cases, is a discrete issue that needs to be separately addressed by courts. It also underscores the flip-side of the EMVR [entire market value rule], which is often ignored: where the entire market value of a product is not attributable to the patentable feature, the burden is on the patentee to show what portion of the value of the product is attributable to the patented feature with that portion of the value serving as the basis for the royalty calculation.
 
(citations omitted)