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Eleventh Annual Los Angeles Intellectual Property Law Association (LAIPLA) “Washington in the West ”Conference January

Eleventh Annual Los Angeles Intellectual Property Law Association (LAIPLA) “Washington in the West ”Conference January 30, 2008 – Los Angeles Robert Clarke, Director Office of Patent Legal Administration (OPLA). S. 1145 PATENT REFORM ACT OF 2007.

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Eleventh Annual Los Angeles Intellectual Property Law Association (LAIPLA) “Washington in the West ”Conference January

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  1. Eleventh Annual Los Angeles Intellectual Property Law Association (LAIPLA) “Washington in the West”Conference January 30, 2008 – Los Angeles Robert Clarke, Director Office of Patent Legal Administration (OPLA)

  2. S. 1145 PATENT REFORM ACT OF 2007

  3. Patent ReformWhere the Issues Fit in the Patent Process

  4. Patent ReformApplicant Quality Submission (AQS) Question:Should applicants explain what they file at the USPTO? Issues: • 25% of applicants provide no evidence or supporting information with their patent applications. Another 15% provide lots of documents (sometimes thousands), usually with no explanation • Lack of information and too much undigested information greatly hamper patent examiners’ review • Practitioners reluctant to provide data/make statements for fear of “inequitable conduct” attacks Our thoughts: • Inequitable conduct must be fixed, so applicants/practitioners are encouraged to be forthcoming with the USPTO. • Clear statements, providing prior art and explaining its relevance, will provide clarity, improve the quality of patents, and promote timely examination by the USPTO.

  5. WHY WE NEEDAPPLICANT QUALITY SUBMISSIONS

  6. Patent ReformINEQUITABLE CONDUCT (IC) Question:How should “inequitable conduct” be reformed? Issues: • “Inequitable conduct” = Accusation of lying to the USPTO • Widespread agreement that judge-madedoctrine needs fixing • Right now – harsh results (loss of patent rights), even where misstatements are inadvertent. Discourages full disclosure. Our thoughts: • Easy fixes: - Correct the standard & - Correct the impact when IC is found

  7. PATENT REFORMDAMAGES & REMEDIES Question:How much does an infringer (party found to have violated a patent) owe? Issues: • Patent owners want compensation • Infringers believe courts are over-compensating owners • Standard for compensation is “no less than a reasonable royalty” Our thoughts: • Current system is fundamentally fair. • Parties want certainty – Need to know what is a “reasonable royalty”? • Courts could benefit from guidance, which is easy to provide and won’t ruin a fundamentally fair system.

  8. Patent ReformPOST GRANT REVIEW Question:Fast-track, lower-cost way to challenge a patent? Issues: • Is there an alternative, fair system for reviewing patents? • Input reflects widespread support for a USPTO-run review Our thoughts: • The USPTO has developed a rigorous, streamlined, transparent post-grant review proceeding. • Implementation requires statutory authority. • Only real remaining issue = When can challengers request review? (USPTO has a proposal).

  9. Patent ReformVENUE • Question: Where should a patentee or patent challenger be permitted to sue? • Issue: Should venue be restricted to defendant’s principal locations to avoid forum shopping? • Our thoughts: • Present law subjects many companies to suits in every district • Forum shopping should be discouraged while providing reasonable forum selection to plaintiffs

  10. Patent ReformFIRST-INVENTOR-TO-FILE Question: First-inventor-to-file (FITF) vs. first-to-invent? Issues: • Predictability –2 inventors - - who gets the patent? • Administration – Who determines novelty, resolves conflicts between two (or more) parties asserting priority? • Harmonization - First-to-Invent (U.S.) vs. the rest of the world? Our thoughts: • FITF is more predictable, easier to administer, and would facilitate global patent protection for U.S. innovators • Unilateral move to FITF could compromise USG negotiating leverage to obtain an internationally harmonized grace period for U.S. inventors.   • Grace period = Period of time before filing the application when an inventor can disclose the invention without losing patent rights.  • Some trading partners lack a U.S.-style grace period, putting American inventors’ rights at risk in the global marketplace.

  11. Patent ReformFEE-SETTING AUTHORITY Question: Should the USPTO have authority to set fees? Issues: • General concerns about any Federal agency setting fees • Questions about what fees the USPTO would change Our thoughts: • USPTO would like ability to eliminate fees, lower fees, consolidate fees, raise fees if necessary – all to accurately capture the cost of providing services. • Oversight – Important, necessary, and sought by USPTO. Fee changes (including lowering & eliminating fees) merit transparent review.

  12. Contact Information • Robert Clarke, Director Office of Patent Legal Administration e-mail: Robert.Clarke@uspto.gov Phone: (571) 272-7735

  13. Thank you.

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