The ’698 and ’160 patents relate to improved methods of producing L-lysine (“lysine”) by cultivating Escherichia bacteria that have been genetically engineered to produce and accumulate greater quantities of lysine than naturally occurring (or wild- type) bacterial strains. Lysine is an essential amino acid, which means that most animals cannot synthesize it but must obtain it directly from their diets. Consequently, feed producers and farmers regularly add lysine as a necessary dietary supplement to low-protein grass feed for livestock. To supply lysine, the industry employs microorganisms such as Escherichia coli that can synthesize lysine from a carbon source (e.g., a sugar such as glucose) through a well- known biosynthetic pathway.

The patents involved in this case alter two mechanisms that contribute to E. coli’s limited lysine production. The first mechanism, known as “feedback inhibition,” is triggered by lysine itself. Specifically, when sufficient lysine is present to meet the organism’s needs, lysine inhibits its own production by inhibiting the activity of certain of its biosynthetic enzymes. At the same time, E. coli also employ enzymes, called lysine decarboxylases, which break down any extra lysine produced into a non-nutritious byproduct. Both mechanisms—feedback inhibition and lysine degradation—keep E. coli from accumulating excess lysine.

Scientists at Ajinomoto disrupted the lysine degradation limitation imposed on lysine production by engineering an E. coli with a mutant lysine decarboxylase gene. Specifically, the ’698 patent, entitled “Lysine Decarboxylase Gene and Method of Producing L-Lysine,” discloses the identification of the lysine decarboxylase gene ldc and the creation of an E. coli strain with mutations in ldc that reduce or eliminate lysine decarboxlyase activity. Asserted claim 15 of the ’698 patent covers a method of producing lysine by cultivating E. coli with mutant ldc and collecting the accumulated lysine:

A method for producing L-lysine, comprising:  cultivating an isolated microorganism belonging to the genus Escherichia, wherein the microorganism contains a [mutant lysine decarboxylase] in a liquid medium, thereby producing the L-lysine and accumulating the L-lysine in the liquid medium, and collecting the L-lysine produced and accumulated in step (a), wherein the microorganism belongs to the species Escherichia coli.

The’160 patent, entitled “Method of Producing L-Lysine by Fermentation,” discloses the creation of an E. coli strain with at least one of two mutations in dapA, the gene encoding the biosynthetic enzyme dihydrodipicolinate synthase (“DDPS”). The mutations release DDPS from the feedback inhibition imposed by excess lysine, and result in an E. coli strain that produces greater amounts of lysine than wild-type strains. Asserted claim 15 of the ’160 patent covers a method of producing lysine by cultivating E. coli that contain mutant dapA and collecting the accumulated lysine:

A method of producing L-lysine, comprising: cultivating a bacterium belonging [to] the genus Escherichia which is transformed with a DNA coding for a dihydrodipicolinate synthase originating from a bacterium belonging to the genus Escherichia and having mutation to desensitize feedback inhibition of L-lysine, wherein the mutation is selected from the group consisting of [a mutation to replace the alanine residue at the 81st position and/or a mutation to replace the histidine residue at the 118th position] in a suitable culture medium, producing and accumulating L- lysine in the culture thereof, and collecting L-lysine from the culture.

Both patents disclose certain E. coli host strains for practicing the claimed inventions. The ’698 patent describes a two-step process of producing a mutant ldc host strain. In contrast to the disclosure in the specification, it is undisputed that the actual strain used by the inventors had two additional genetic alterations made to it before the addition of mutant ldc. The inventors identified this strain as WC80.

Similarly, the ’160 patent discloses two host strains, B-399 and W3110(tyrA), into which the inventors introduced mutant dapA. Yet, before filing the Japanese application from which the ’160 patent claims priority, the inventors characterized a different strain, AE-70, as their best lysine producer.

After Ajinomoto filed a complaint at the ITC, the Administrative Law Judge (ALJ) found that the asserted claims were invalid for multiple violations of the best mode requirement of 35 U.S.C. § 112, first paragraph, and that both patents were unenforceable for inequitable conduct because of those best mode violations.

The ALJ concluded that the inventors had violated the best mode requirement by (1) concealing their preferred and only host strain, WC80-1 96S, via a misrepresentation of the steps actually performed to create a mutant ldc host strain; (2) concealing sucrose as their preferred carbon source, which materially affects achieving the claimed invention; and (3) submitting data associated with fictitious host strains in support of the best mode. Similarly, with regard to claim 15 of the ’160 patent, the ALJ concluded that the inventors had violated the best mode requirement by (1) concealing their preferred host strain, AE-70, and (2) submitting fictitious data in support of the best mode.

Section 112 of the Patent Act provides that the patent specification “shall set forth the best mode contemplated by the inventor of carrying out his invention.” Known as the best mode requirement, it comprises part of the quid pro quo of the patent grant, prohibiting inventors from receiving the benefit of the right to exclude while at the same time concealing from the public preferred embodiments of their inventions. To satisfy the best mode requirement, an inventor must disclose the preferred embodiment of his invention as well as preferences that materially affect the properties of the invention.

Determining compliance with the best mode requirement is a two-prong inquiry. First, the court must determine whether, at the time the patent application was filed, the inventor possessed a best mode of practicing the claimed invention. Second, if the inventor has a subjective preference for one mode over all others, the court must then determine whether the inventor “concealed” the preferred mode from the public.

The Federal Circuit held:

By defining the invention to include the host strains, we do not read the Commission’s decision as requiring the disclosure of any and all preferences related to the production of lysine, as Ajinomoto claims. The Commission simply defined the scope of the claimed invention to include “cultivating a bacterium” as recited by the asserted claims. Also, the Commission did not, as Ajinomoto asserts, require the disclosure of all subject matter having to do with the claim term “bacterium.” The Commission simply required the disclosure of the preferred and, for the ’698 patent, only bacterial strain that the inventors used to practice the claimed invention.

…

[W]e disagree with Ajinomoto’s interpretation of the Commission’s opinion and the law. First, the Commission’s opinion did not, as Ajinomoto contends, find that the inventors concealed the method of creating the host strain into which they later introduced an ldc mutation. Rather, the Commission found that the inventors concealed the identity of the preferred host strain, and specifically that other genetic alterations, including a lysC variant and sucrose utilization genes, had been introduced (by whatever method) into the only host strain used to practice the claimed invention. Cf. Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1347 (Fed. Cir. 2000) (finding no best mode violation when one of skill in the art would know that the identified preferred host strain contained another genetic alteration).

Second, the best mode requirement cannot be satisfied by the deposit of a non- preferred strain. It is undisputed that the host strain deposited by Ajinomoto lacked the sucrose utilization genes and thus was not the host strain into which the inventors inserted an ldc mutation. Furthermore, while the deposited strain contained the lysC variant, the specification contains no disclosure of that fact, and one of skill in the art would not know that the strain had such an alteration. As such, the deposit failed to enable one of skill in the art to practice the inventors’ preferred embodiment and thus concealed the best mode.

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The bill directs the Small Business Administration’s Office of Advocacy to conduct a study in consultation with the U.S. PTO to analyze how changes to the current system will impact the ability of small businesses to obtain patents, whether the change would create barriers, and how it will impact the costs and benefits to small businesses overall.

S. 3089

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. STUDY AND REPORT OF PATENT LAW CHANGES.

(a) Definitions.—In this section—

1. the term “Chief Counsel” means the Chief Counsel for Advocacy of the Small Business Administration; and
2. the term “small business concern” has the meaning given that term under section 3 of the Small Business Act (15 U.S.C. 632).

(b) Study.—

1. IN GENERAL.—The Chief Counsel, in consultation with the Director of the United States Patent and Trademark Office, shall conduct a study of the effects of changing from a first-to-invent to a first-to-file invention priority system under patent law under title 35 of the United States Code.
2. AREAS OF STUDY.—The study conducted under paragraph (1) shall include examination of the effects of changing from a first-to-invent to a first-to-file invention priority system, including examining—

(A) how the change would affect the ability of small business concerns to obtain patents;
(B) whether the change would create or exacerbate any disadvantage for applicants for patents that are small business concerns relative to applicants for patents that are not small business concerns; and
(C) the costs and benefits to small business concerns of the change.

(c) Report.—Not later than 18 months after the date of enactment of this Act, the Chief Counsel shall submit to the Committee on Small Business and Entrepreneurship and the Committee on the Judiciary of the Senate and the Committee on Small Business and the Committee on the Judiciary of the House of Representatives a report regarding the results of the study under subsection (b).

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Almost everybody in this part of the world- irrespective of whether they are hiking enthusiasts/outdoor buffs or not, is familiar with North Face Apparels. In December 2009, North Face filed a complaint in the U.S. District Court for the Eastern District of Missouri for trademark infringement and dilution. South Butt is owned and operated by Missouri University student James Winkelmann who started this apparel line in 2007 to mock North Face.

Early on, upon being threatened by North Face with an infringement suit, Winkelmann offered to sell his enterprise for US $ 1 million. But with the impending lawsuit, the sales for South Butt soared and subsequently Winkelmann withdrew his offer.

This lawsuit in addition to addressing trademark infringement, dilution and unfair competition under the Trademark Act of 1946, 15 U.S.C. §§ 1051 (also known as the Lanham Act), also has an interesting aspect of trade dress infringement.

Often times, litigators are so focused upon the “popular” intellectual property like patents, trademarks, copyrights that lesser known, but equally important intellectual property like trade dress gets the step-daughterly treatment. One does not often come across trade dress cases. But two cases where the United States Supreme Court granted certiorari are the Two Pesos case and the Qualitex case.

Section 43(a) of the Lanham Act states inter alia the following:

“Any person who in connection with any goods or services uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or .in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.”

While the Lanham Act does not explicitly define trade dress, a perusal of the above definition makes it obvious that trade dress should be protected. (“in connection with goods or services”…”uses any…symbol or device”).

Drawing parallels between trademark and real property, where does the boundary of a trademark end? How does a second comer in the market get saddled with the label of an infringer? What does trade dress encompass? One looks to the precedents in order to shed some light on these and other related issues.

Two Pesos v. Taco Cabana

This was the first of the two precedents and the facts are as follows.

Respondents are the owners of a fast food chain in Texas and own six such restaurants in San Antonio.  In their words Taco Cabana has the following trade dress:

“a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.”

Two Pesos opened up their restaurant in Houston and adopted an ambiance similar to that of Taco Cabana’s but did not deign to open one in San Antonio. Taco Cabana expanded their market by opening up restaurants in cities where Two Pesos was open and sued Two Pesos for trade dress infringement in 1987 under § 43(a) of the Lanham Act.

Section 43(a) does not mention either trademarks or trade dress. Neither does it mention anything about secondary meaning. Therefore a trade dress need not have secondary meaning in order to be protected. Secondary meaning is only required for descriptive marks.

Trade dress then can be defined as the overall appearance or image of the business in question.

In Qualitex v Jacobson, (this was briefly discussed in my earlier blog post of non traditional trademarks) Qualitex sought protection over the green gold colour of their cleansing pads.

The Federal Court judgment held that no trademark protection can be conferred for mere color. The Federal Circuit at that point of time, was undecided over the issue of trademark protection for color.

There are a few other related cases which are summarized for the benefit of the readers.

• NutraSweet Co. v. Stadt Corp.: absolute prohibition against protection of color alone;
• In re Owens-Corning Fiberglas Corp.: allowed registration of color pink for fiberglass insulation; and
• Master Distributors, Inc. v. Pako Corp.: declined to establish per se prohibition against protecting color alone as a trademark.

The Supreme Court put to rest all debates on this issue by holding that color can be protected under the Lanham Act. Even though color by itself is not fanciful or arbitrary or suggestive, however, over time consumers can come to associate a product with the color on its label. (Think yellow “M” for McDonald, red and white label for Coca-Cola for example).

Coming back to the North Face-South Butt debate, it is obvious that South Butt was started as a joke, a parody if you will. The products of the two companies are the same (sports gear); the logo of South Butt is a mere rearrangement of that of North Face’s logo. South Butt may get off lightly on the offensiveness of the name (FCUK got off with no rap on their knuckles) but trade dress infringement definitely exists.

To small timers, the idea of pulling off a joke on major companies may seem like a lark. However, doing so results in a criminal wastage of time and resources which could be spent in developing newer technologies (in this case apparel!). More importantly, if not settled out of court, it is a burden on the justice system and speedy disposal and adjudication of more relevant and pertinent cases is prevented.

However, at this point of time there exists no major deterrent for such cases and one hopes future small time infringers will pay heed to precedents and perhaps abstain from petty infringements.

Today’s post is by Guest Barista Shalini Menezes of ::O.bi:t.er: D:ic.t:um.

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The Amendment to S. 515 seems to meet the goal of establishing a simpler, objectively-based, transparent patent system that can eliminate patents that should not have issued and speed the processing of patents that should be issued.

The new patent law would includes a number of improvements to the patent laws such as provisions to update and improve the patent marking statute. S. 515 now includes:

First-Inventor-to-File

Adoption of a first-inventor-to-file system by the United States will promote the growth of American jobs. By eliminating the arcane and subjective rules associated with the current first-to-invent system, the Amendment to S. 515 will make it easier and less costly to obtain patent protection in the United States which will stimulate investment in new technologies. Today, when two inventors seek a patent on the same invention, the patent is awarded to the inventor who can prove that he or she was the first to make the invention and had not “abandoned, suppressed, or concealed” the invention. Other concepts such as “conception,” “reduction to practice” and “reasonable diligence” can also come into play. These concepts are not only expensive to prove, they make the results of such contests unpredictable. These contests are especially harmful for independent inventors. Studies show that independent inventors lose rights to patents under the existing first-to-invent system of priority that they would have won in a first-inventor-to-file system of priority.

Moreover, while all inventors will continue to benefit from a one-year grace period in which to file a U.S. patent application after publicly disclosing their inventions, the incentive of the first-inventor-to-file system to file applications promptly will redound to their benefit in obtaining patents in our major trading partners. Inventors who delay filing their U.S. applications (on the tenuous assumption that they will be able to obtain a U.S. patent by proving that they were first to make the invention) run the risk of being second-to-file in the rest of the world where patents are awarded to the first inventor to file. Facilitating patent protection outside the United States for American technology will stimulate the export of American products produced by American workers.

Enhanced Patent Quality

The Amendment to S. 515 will strengthen patents granted in the United States by allowing the public to participate in the patent granting process and by strengthening the administrative procedures in the USPTO for reviewing patents after grant.

Pre-grant submission of prior art

The bill will expand the opportunity for the public to submit information to patent examiners working on individual patent applications, together with concise descriptions of its relevance. This will help ensure that all relevant information will be considered during the examination process, allowing the USPTO to conduct a quality examination before a patent is granted, reducing the need to rely on post-grant clean-up procedures. The public and patent applicants alike will benefit from the grant of more reliable patents that are based on more thorough and complete examination that this procedure will offer.

Administrative post-grant review of patents

The Amendment to S. 515 will provide a robust, new post-grant review that must be requested within 9 months after patent grant and, if initiated, be completed within one year. In the new post-grant review procedure, patents could be challenged on all issues of patentability.

After the initial 9-month period from patent grant, all patents (including those granted prior to 1999) would be subject to inter partes reexamination, but only for patentability issues based upon prior patents and printed publications, taking into account certain written admissions of the patentee. As with post-grant review, inter partes proceedings will also be required to be completed within one year.

Ex parte reexamination will continue to be available as an inexpensive procedure to both patent owners and third partes to review patents on the basis of patents and printed publications, also taking into account certain written admissions of the patentee.

While both the initial post-grant review and the revised inter partes reexamination proceedings will contribute to ensuring that only valid patents will survive, both procedures also contain safeguards to prevent harassment of patent owners. For example, third parties will be required to present a stronger case to initiate a post-grant review or an inter partes reexamination proceeding than they are currently required to under the existing inter partes reexamination threshold of “substantial new question of patentability.

To initiate a post-grant review, the Director must determine that the information presented, if not rebutted, demonstrates that it is more likely than not that at least one claim is unpatentable. The new threshold for initiating an inter partes reexamination will be a “reasonable likelihood” that, in light of the information submitted by a third party and the response from the patentee, the third party “will prevail with respect to a claim” of the patent. These higher thresholds will serve to minimize the initiation of unwarranted proceedings.

Both procedures will be handled by a panel of Administrative Law Judges. Currently, inter partes reexaminations are handled by patent examiners who do not have the experience and expertise of APJs in promptly and efficiently conducting contested cases.

In addition, the estoppel effects of final decisions in post-grant review proceedings and in inter partes reexamination proceedings will protect patentees against successive, harassing attacks by the same challenger. The challenger in a post-grant review proceeding is estopped from requesting or maintaining a subsequent inter partes reexamination proceeding with respect to a claim on any ground that the challenger “raised or reasonably could have raised” during the post-grant review. In later civil actions or ITC proceedings, the challenger is estopped from asserting the invalidity of a claim on any ground that was “raised” during the post-grant review.

The challenger in an inter partes reexamination proceeding is estopped from requesting or maintaining a subsequent inter partes reexamination proceeding, or from asserting invalidity in a later civil action or ITC proceeding, with respect to a claim on any ground that the challenger “raised or reasonably could have raised” during the earlier inter partes review.

Importantly, patent owners who promptly file suit after patent grant will be assured that the court will not automatically stay its consideration of the patent owner’s motion for a preliminary injunction on the basis that a petition requesting a post-grant review has been filed or that such a proceeding has been instituted.

Litigation Reforms

The Amendment to S. 515 would address a number of litigation reforms, some initially recommended by the NAS, and others, some quite controversial, urged by various special interests. With the further development of the law by the Federal Circuit and the accommodation of these developments by the Senate Judiciary Committee, the bill offers a number of desirable litigation reforms.

Best Mode

The Amendment to S. 515 addresses the recommendation of the NAS to modify or remove the subjective elements of patent infringement litigation that depend on the assessment of a party’s state of mind and increase the cost and decrease the predictability of such litigation. Current patent law requires that a patent application “set forth the best mode contemplated by the inventor of carrying out his invention” and failure to comply can result in a patent being held invalid. Under the bill, “failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”

Since the patent law already requires a “written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use” the invention, the added requirement for disclosing the “best mode” serves only as a costly weapon for defendants to use in attacking patents, requiring time-consuming, expensive, and ultimately subjective pretrial discovery. The public is fully informed of the patented technology by the requirement for a complete written description and enabling details to permit the complete scope of the claimed invention to be used. The added requirement to also disclose the “best mode” is both unnecessary and provides no benefits to the public.

Inequitable Conduct

Another of the subjective elements of patent infringement litigation that unnecessarily increases the costs for both obtaining patents and litigating them is the doctrine of “inequitable conduct” – whether an inventor or patent attorney intentionally misled the USPTO in prosecuting the original patent. Because the sanction for inequitable conduct is unenforceability, “[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague.” (Burlington Industries, v. Dayco Corp., 849 F.2d 1418 at 1422 (Fed. Cir. 1988)

While the Amendment to S. 515 does not go as far as modifying or removing the doctrine as recommended by the NAS, it does provide a remedial avenue for patent owners to bring to the attention of the Office information which might affect the scope of their patents. The bill allows patent owners to request, prior to the institution of litigation, “supplemental examination” to consider any information believed to be relevant to the patent. Any patent surviving such reexamination will not be held unenforceable on the basis that such information had not been considered or was incorrect in the initial examination process.

Importantly, supplemental reexamination would not allow a patent owner to avoid sanctions based upon violations of criminal or antitrust laws nor would it allow those responsible for any misconduct in proceedings before the Office to avoid disciplinary sanctions.

Damages

The Amendment to S. 515 maintains the compromise reached in the Senate Judiciary Committee that fully responds to the allegations of inconsistency and unfairness in awards of reasonable royalty patent damages. It rejects the proposals calculated to reduce inventors’ recoveries by narrowing claimed inventions through the use of definitional devices Ð such as by limiting the claimed invention for damages purposes to “its inventive contribution,” its “patentable features,” or “the patent’s specific contribution over the prior art.”

Instead, the bill sets forth a “gatekeeper” approach which ensures that courts or juries consider only those damages contentions that are cognizable at law and supported by substantial evidence. The provision reinforces the message from the Federal Circuit Court of Appeals in a series of recent cases (Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008) and Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009); see also Cornell University v. Hewlett- Packard Company, 609 F. Supp. 2d 279 (N.D.N.Y. 2009). This approach ensures that patentees will receive appropriate compensatory damages for the unauthorized use of their patented inventions, while at the same time fully responding to the allegations of runaway jury awards.

Willful Infringement

The third subjective element in patent litigation addressed by the NAS is “willful infringement” under which a court may increase damages up to three times if the court or jury determines that the accused infringer willfully infringed a patent. During the period when the NAS reviewed this doctrine, there was no effective threshold test for alleging willful infringement, therefore the required level of pre-filing investigation by the plaintiff was relatively modest and willfulness was asserted in most cases.

NAS found that the doctrine of enhancing damages against defendants, who knew of patents that they were later found to infringe and who were found to not have complied with the Federal Circuit’s judicially created doctrine to exercise “duty of care” to avoid such patents, resulted in unforeseen and wasteful consequences. The fact that a defense to a claim of willful infringement was good-faith reliance on an opinion by counsel that the patent was invalid or not infringed resulted in a cottage industry of lawyers providing such opinions at cost reaching $100,000 or more. Worse, NAS found that in some business sectors, exposure to claims of willful infringement led to a practice of deliberately avoiding learning about issued patents, thereby undermining the Framers’ desire that patents promote the sciences and useful arts. NAS recommended the doctrine of willful infringement be eliminated.

During the Congressional consideration of how to respond to the NAS recommendation, however, the issue was overtaken by the Federal Circuit’s en banc decision in In re Seagate Tech., LLC, 497 F.3d 1360 (2007). In Seagate, the Court found the “duty of care” rule which it created in 1983 was inconsistent with the Supreme Court’s view that, to be willful, some level of “objective recklessness” must be involved.

The Amendment to S. 515 adopts Seagate’s “objective recklessness” standard. While not as far-reaching as the NAS’s recommendation to eliminate willfulness entirely, the Seagate standard has been widely viewed as an important step toward curtailing unfounded charges of willful infringement.

Venue

In response to a growing number of patent infringement cases filed by patentees in perceived pro-plaintiff venues with little or no connection to the parties in the case or the locations of their operations, witnesses or documents, proposals were made to essentially restrict patent suits to the jurisdiction where the infringer had its principal operation. This draconian rule would have denied manufacturing patentees the opportunity of bringing suit against infringers in the district where the patentee was located and had its witnesses and evidence.

However, in 2009, the Fifth Circuit issued a writ of mandamus in a personal injury case directing the transfer of a case because the trial court, in denying a motion to transfer venue, “gave undue weight to plaintiffs’ choice of venue, ignored [] precedents, misapplied the law, and misapprehended the relevant facts” In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008). The Federal Circuit followed suit in a patent case, In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) granting a writ of mandamus and holding that same court clearly abused its discretion in denying a motion to transfer venue.

The Amendment to S. 515 incorporates the Volkswagen/TS Tech Corp approach and provides a very measured and salutary approach to reigning-in undesirable forum shopping. It requires the court to transfer a patent infringement action “upon a showing that the transferee venue is clearly more convenient than the venue in which the civil action is pending.”

Pilot Program for District Courts

The Amendment to S. 515 would create a 10-year pilot program in certain district courts to hone judicial expertise in patent protection cases. The bill would provide for the professional development of district judges and the hiring of law clerks with expertise in such cases. The pilot should lead to a reduction in the reversal rate of claim construction determinations in patent cases and improve the efficiency of courts in their handling of such cases.

Patent Fee Setting Authority and Ending Diversion

One of the most critical problems facing the USPTO is the lack of resources to address its quality, pendency, and IT issues. With the recent economic downturn, the USPTO is experiencing a significant reduction in fee income and has no ability to adjust fees to offset this loss, resulting in its inability to fill the positions of examiners leaving the Office. The problem was recently exacerbated when, prior to passing the USPTO’s FY 2010 appropriation, Congress removed a provision that would have allowed the USPTO to retain and use up to $100 million in fee revenues above the level appropriated. The removal of this proviso guarantees that, as the economy recovers and greater fee revenues are received, all fee revenue in excess of the amount set by Congress will be deposited in the general Treasury and used for purposes other than those for which they were paid – the prompt and complete examination of patent applications and issuance of patents.

In its present form, the Amendment to S. 515 would address only half of this problem. It would authorize the Office to adjust its fees to recover the costs of examining and granting patents and registering trademarks, but it would not guarantee that all of the fee revenue collected would be used for these purposes.

An amendment is likely to be offered to allow the Office to retain all of the fees paid for the filing, examination, grant, and maintenance of patents and to use them for these purposes. Adoption of this amendment is critical to the success of the efforts of the Office to promptly issue quality patents and should be strongly supported.

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Perhaps this lack of charisma is why the debate over patent reform has not been played out in the public arena. It’s a little esoteric for the layman, I’ll grant you that. Or has it been intentionally whisked along, fast-tracked as much as the legislative process can be, in the shadows of more popular issues such as health-care reform and climate change?

And where are the pundits? Do we take their silence as complicity? I hesitate to believe that Limbaugh, Stewart, Carville, Begala, Stephanopoulos – even Colbert – are of one mind on this issue. They’re banging on about health care and climate change – much sexier issues – much easier to find an eye-catching graphic to place strategically by the talking head – but where is the discussion around proposed legislation that will weaken the US Patent System irretrievably.

True, the tattered edge of a patent application isn’t as evocative as the image of a sick child or a baby seal stranded on a floating slab of melted polar ice cap. But still, the loud voices on the left and right should sally forth and mention this critical issue to heat up a little widespread debate before this critical piece of legislation passes gently one good night while no one is watching.

If the pundits aren’t interested – which they appear not to be – perhaps opponents to patent reform need a pop-culture spokesperson. Let’s start at the top – quick, someone call Brad and Angie – maybe they’ll adopt all of us and help us battle back S. 515. No? How about Clooney then? He got excited about Darfur when no one else was – maybe he’ll take pity on our cause too. Doubtful.

At this point, I might settle for the rambling musings of Lindsay Lohan or the dimming wattage of celebrity known as Jessica Simpson to drum up some attention to the cause. Perhaps PETA would loan us Pam Anderson to pose in the buff under a banner reading “I’d Rather Go Naked than Support Expanded Inter Partes Reexamination.”

Come on folks – this is America! We’ve got pundits willing to rant about anything, so what is it going to take to get them to crank up the volume about patent reform before it’s too late and our patent system is crippled even further and takes our marginally recovering economy with it?

Glenn Beck – you’re an idiot if you don’t talk about patent reform!

Are you there John Stewart? It’s me, patent reform.

FOX News – if you don’t report, we can’t decide.

Rachel Maddow – talk me down from this one.

Before we allow this special interest influenced, big-business slanted piece of ill-conceived legislation to waltz its way into law unchecked, can we at least talk about it? Otherwise, as patent attorney John Connors so aptly phrased it, it will “turn commercializing an invention into a sport of kings.”

Today’s tongue-in-cheek post is by Guest Barista Rachel Stamper, Senior Writer/Editor, IPAdvocate.org.

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3. The Patent Reform Act of 2010: A Substitute S. 515 Here comes the Patent Reform Act of 2010 in the...

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