Difference between revisions of "Innovation Act"

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Return to [[Innovation Policy#Patent Reform| Patent Reform]].
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Return to [[Innovation Policy#Proposed Patent Reform| Proposed Patent Reform]].
  
 
The [https://www.congress.gov/bill/114th-congress/house-bill/9| H.R.9:Innovation Act] was reintroduced on February 5, 2015, by Representative Bob Goodlatte (R-VA). The bill was referred to the House Committee on the Judiciary and Subcommittee on the Courts, Intellectual Property, and the Internet, and was placed on the Union Calendar on July 29, 2015. Currently the bill has 27 cosponsors, 15 Republicans and 12 Democrats.  
 
The [https://www.congress.gov/bill/114th-congress/house-bill/9| H.R.9:Innovation Act] was reintroduced on February 5, 2015, by Representative Bob Goodlatte (R-VA). The bill was referred to the House Committee on the Judiciary and Subcommittee on the Courts, Intellectual Property, and the Internet, and was placed on the Union Calendar on July 29, 2015. Currently the bill has 27 cosponsors, 15 Republicans and 12 Democrats.  
 
<section begin=summary />
 
<section begin=summary />
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The full title of the act is "To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes." <ref name="GovTrack" />[https://www.govtrack.us/congress/bills/114/hr9#| GovTrack] predicts that the Innovation Act has a 36% chance of being enacted. Representative Bob Goodlatte intends for the bill to cut down on abusive patent litigation and strengthen a patent holder's rights.<ref name="innovationactsummary" />  
+
The full title of the act is "To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes." <ref name="GovTrack" />[https://www.govtrack.us/congress/bills/114/hr9#| GovTrack] predicts that the Innovation Act has a 36% chance of being enacted. Representative Bob Goodlatte intends for the bill to cut down on abusive patent litigation and strengthen a patent holder's rights.<ref name="innovationactsummary" /> The Innovation Act also proposes certain reforms to the enacted [[Leahy Smith America Invents Act]].
  
 
The bill will target the following areas <ref name="innovationactsummary" />:   
 
The bill will target the following areas <ref name="innovationactsummary" />:   
  
−
*Abusive Patent Litigation.   
+
*Abusive patent litigation.   
−
*Increasing Transparency and reducing Weak Patent Infringement Claims.  
+
*Increasing transparency and reducing weak patent infringement claims.  
 
*Clarifying patent litigation procedures and practices.  
 
*Clarifying patent litigation procedures and practices.  
−
*Bolstering small businesses built upon IP.  
+
*Bolstering IP centered small businesses.  
 
*Reducing referrals to random courts for the review of patent cases.  
 
*Reducing referrals to random courts for the review of patent cases.  
 
*Weakening power of [[Innovation Policy#Patent Trolls| Patent Trolls]].  
 
*Weakening power of [[Innovation Policy#Patent Trolls| Patent Trolls]].  
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===Pleading Requirements===
 
===Pleading Requirements===
−
In efforts to diminish the Patent Troll threat by the bill sponsors, the Innovation Act has heightened pleading requirements for parties filing for patent infringement. Form 18, the form previously used to submit generalized patent infringement claims, has been eliminated by the Judicial Conference in wide-sweeping amendments. This amendment was expected to be implemented December of 2015 and was made in an effort to heighten patent claim requirements by the Judicial Conference. <ref name="patentlyo18" /> The Innovation Act also proposes Form 18's elimination by the Supreme Court to reduce patent litigation, especially litigation involving Patent Trolls or Non-Practicing Entities.<ref name="nationallawreview" /> The Supreme Court would be allowed to codify a new model for filing infringement complaints that would include notifying the accused parties of the claim and its content. <ref name ="govtracksummary" />
+
In efforts to diminish the Patent Troll threat by the bill sponsors, the Innovation Act heightens pleading requirements for parties filing for patent infringement. Form 18, the form previously used to submit generalized patent infringement claims, has been eliminated by the Judicial Conference in wide-sweeping amendments. This amendment was expected to be implemented December of 2015. <ref name="patentlyo18" /> The Innovation Act also proposes Form 18's elimination by the Supreme Court to reduce patent litigation, especially litigation involving Patent Trolls or Non-Practicing Entities.<ref name="nationallawreview" /> The Supreme Court would be allowed to codify a new model for filing infringement complaints that would include notifying the accused parties of the claim and its content. <ref name ="govtracksummary" />
  
−
Supporters hope that the act would go further in reducing generalized complaints and eliminating loopholes by requiring (with exceptions) the plaintiff to submit infringement charts with the initial complaint.<ref name="patentlyoIA" /> The purpose of the charts would be to force the plaintiff to explain the specifics of a claim, how a product or the specific use of the patented idea or process (referred to as accused instrumentalities) violates each infringed component of a patent and the scope of each component's infringement. <ref name="patentlyoIA" />
+
Supporters hope that the act would go further in reducing generalized complaints and eliminating loopholes by requiring (with exceptions) the plaintiff to submit infringement charts with the initial complaint.<ref name="patentlyoIA" /> The purpose of the charts is to force the plaintiff to explain the specifics of a claim, how a product or the specific use of the patented idea or process violates each infringed component of a patent and the scope of each component's infringement. <ref name="patentlyoIA" />
  
−
Additionally, a claim of previous commercial use may not result in a court invalidating a patent because it lacks novelty, seems to cover obvious subject matter, or due to prior art. <ref name="govtracksummary" /> Prior Art refers to evidence indicating that the technology or invention in question has already been used, discovered, or generally known. Typically, simply having previously described or created a similar process or technology at any point in time by any one constitutes prior art in patent law. <ref name="EPO" />
+
Additionally, a claim of previous commercial use may not result in a court invalidating a patent because it lacks novelty, seems to cover obvious subject matter, or due to prior art. <ref name="govtracksummary" /> Prior Art refers to evidence indicating that the technology or invention in question has already been used, discovered, or is generally known. <ref name="EPO" />
  
 
===Fees and Other Expenses===  
 
===Fees and Other Expenses===  
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Writers of the bill propose that a modified "English Rule" become the new standard in patent litigation in America to avoid frivolous lawsuits and adequately sanction patent trolls for pointless or unfounded claims. <ref name="innovationactprovisions" /> <ref name="patentlyoIA" /> The "English Rule" requires the losing party in a trial compensate the prevailing party for its attorney fees. <ref name="NYU" />  
 
Writers of the bill propose that a modified "English Rule" become the new standard in patent litigation in America to avoid frivolous lawsuits and adequately sanction patent trolls for pointless or unfounded claims. <ref name="innovationactprovisions" /> <ref name="patentlyoIA" /> The "English Rule" requires the losing party in a trial compensate the prevailing party for its attorney fees. <ref name="NYU" />  
  
−
The act requires courts to have losing parties provide for "reasonable fees and other expenses" incurred by the other party throughout litigation. The award may be waived  only if the losing party is found to have just legal and factual cause to be part of the litigation. If the losing party is unable to pay due to extraordinary circumstances, the court may ask a joined or interested party to cover the award. <ref name="innovationacttext" />
+
The act requires courts to have losing parties provide for "reasonable fees and other expenses" incurred in litigation. The award may be waived  only if the losing party is found to have just legal and factual cause to be part of the litigation. If the losing party is unable to pay due to extraordinary circumstances, the court may ask a joined or interested party to cover the award. <ref name="innovationacttext" /> Additionally, the plaintiff may have to pay attorney fees if it dismisses the claim before going to trial unless they were given the explicit right to settle without a court order. <ref name="govtracksummary" />
−
 
 
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Once a plaintiff has claimed a patent in civil action, dismissing the civil action by proposing an agreement to not sue for infringement, referred to as a covenant, makes the plaintiff liable for payment of attorney fees. Payment may not be required if the plaintiff had the right to settle with a covenant without a court order or if payment would not serve the "interests of justice." <ref name="govtracksummary" /> The "interests of justice" have been called upon previously in patent proceeding and generally determine whether a motion will best serve the outcome of a trial. <ref name="interestsofjustice" />
 
  
 
===Joinder of Interested Parties===
 
===Joinder of Interested Parties===
  
−
As part of the Fees and Other Expenses provisions, an interested party or parties may be required to cover attorney's fees and other expenses in the case that the nonprevailing party cannot. The purpose of this provision is to prevent Patent Trolls from claiming the inability to pay fees by shuffling accounts between all of their companies. <ref name="innovationactprovisions" /> A joinder of interested parties may be called upon only if the prevailing party proves that the nonprevailing party has simply claimed patent infringement and has no other substantial interest in the issue. Parties that have invented or invested in the disputed patents may be considered to have substantial interest. Parties that commercially practice or perform R&D in the same field as the patented technology or subject matter may also be considered to have substantial interest by the act. <ref name="govtracksummary" />
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As part of the Fees and Other Expenses provisions, an interested party or parties may be required to cover attorney's fees and other expenses in the case that the nonprevailing party cannot. Sponsors of the bill hope to prevent Patent Trolls from claiming the inability to pay fees by shuffling accounts between all of their companies by including this provision. <ref name="innovationactprovisions" /> Interested parties may include parties that have invented or invested in the disputed patents or that commercially practice or perform R&D in the same field. <ref name="govtracksummary" />
  
 
===Discovery Stay===  
 
===Discovery Stay===  
  
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The act establishes that a claim construction ruling must occur prior to discovery. <ref name="patentlyoIA" /> Discovery is a process that occurs pre-trial in a civil action, a conflict between two private parties, and is defined by the federal government as any party's right to obtain relevant information for the trial. A claim construction ruling is a critical step in ruling on the validity of a patent and whether infringement has occurred. Claim construction defines exactly what a patent includes and the extent to which a patent holder can protect the subject matter. <ref name="claimconstruction" /> The provisions also specify that claim construction previously agreed upon in another court must hold when a patent claim is reviewed by the USPTO. <ref name="patentlyoIA" />
+
The act establishes that a claim construction ruling must occur prior to discovery. <ref name="patentlyoIA" /> Discovery is a process that occurs pre-trial in a civil action, a conflict between two private parties, and is defined by the federal government as any party's right to obtain relevant information for the trial. Claim construction defines exactly what a patent includes and the extent to which a patent holder can protect the subject matter. <ref name="claimconstruction" /> The act  also specifies that claim construction previously agreed upon in another court must hold when a patent claim is reviewed by the USPTO or in a new trial. <ref name="patentlyoIA" />
  
−
Courts do not have to stay, or suspend, discovery pending preliminary motion if both parties consent, the patent holder is awarded a preliminary injunction, or the case is transferred, dismissed, severed, or a party drops out of the case. <ref name="govtracksummary" /> A preliminary injunction forces a party to stop the actions supposedly infringing the patent prior to the court's finally ruling. Severing a lawsuit means separating the lawsuit into several parts or deciding a case on an individual basis if there are multiple defendants. Drugs and biological products may also be subject to exemption.<ref name="govtracksummary" />
+
Discovery of additional or non "core" documents is not allowed unless the party requesting them covers the costs of discovery and all parties consent to discovery. <ref name="patentlyoIA" /> By enabling courts to limit discovery, sponsors hope to reduce litigation costs and target patent trolls intending to settle a case quickly using information revealed in discovery. <ref name="innovationactsummary" />
−
 
 
−
Additional documents may not be disclosed unless the party requesting them covers the costs of discovery and all parties consent to discovery. <ref name="patentlyoIA" /> By enabling courts to limit discovery, the act intends to reduce litigation costs and targets patent trolls intending to settle a case quickly and early on by making use of information revealed in discovery. <ref name="innovationactsummary" />
 
  
 
===Demand Letters===
 
===Demand Letters===
  
 +
To protect small businesses, the act requires that the patent owner explain the reason for the lawsuit and how the infringement has occurred to the accused party or parties. <ref name="innovationactprovisions" /> A demand letter sent prior to the lawsuit cannot be used as evidence of willful infringement unless the demand letter specifies which patent is being infringed, what is infringing the patent, the parent company that owns the patent, and how one or more claims in the patent are being violated. <ref name="patentlyoIA" /> Anyone found violating these requirements would be forced to pay additional damages. <ref name= "sectionsummary" />
  
 +
===Venue===
  
−
“The bill precludes a plaintiff from relying on pre-suit demand letters to establish willful infringement if the letters do not specify the asserted patent, the accused product, the plaintiff’s ultimate parent entity, and the grounds for the alleged infringement” [http://www.mofo.com/~/media/Files/ClientAlert/2015/05/150507ProposedPatentReformLegislation.pdf]
+
The act requires that patent infringement suits only be heard in judicial districts with reasonable connection to the conflict. <ref name="sectionsummary" />
  
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===Venue===
+
A judicial district in which the following have occurred is considered to have reasonable connection to the dispute: <ref name="govtracksummary" />
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Amends the federal judicial code to restrict the venues where patent actions may be brought to judicial districts where:
+
* the defendant is headquartered or incorporated.
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the defendant has its principal place of business or is incorporated, has committed an act of infringement and has a regular and established physical facility that gives rise to the act of infringement, or has agreed or consented to be sued in the instant action; an inventor named on the patent conducted research or development; or a party has a regular and established physical facility and has managed significant research and development for the invention claimed in the patent, has manufactured a tangible product alleged to embody that invention, or has implemented a manufacturing process for a tangible good in which the process is alleged to embody the invention.[https://www.govtrack.us/congress/bills/114/hr9/summary]
+
* the defendant infringed the patent.
 +
* the defendant's facility where the patent continues to be infringed.
 +
* the defendant was informed and agreed to the suit.
 +
* an inventor of the patent led R&D.
 +
* either party runs R&D for the patented invention.
 +
* either party manufactures a physical product that violates the patent's claims.
 +
* either party runs a process using the patented invention.
  
 
===Disclosure of Ownership===
 
===Disclosure of Ownership===
  
−
An initial complaint must disclose specifics about the patent including who originally owned the patent ("ultimate parent entity of the assignee") and any party with a financial interest in the patent. <ref name="sectionsummary" /> Any change in patent ownership must be provided to the UPSTO. If the information is not provided, then the court will award attorney fees to the defendant, not the patentee. <ref name="patentloIA" />
+
An initial complaint must disclose specifics about the patent including the parent company of the patent and any party with a financial interest in the patent. <ref name="sectionsummary" /> Any change in patent ownership must be provided to the UPSTO. If the information is not provided or updated when changes occur, then the court will make the patentee cover the defendant's attorney fees. <ref name="patentlyoIA" />
  
 
===Double Patenting===
 
===Double Patenting===
  
−
===Rights of the Manufacturer===
+
Within the Innovation Act, several reforms are suggested to the Leahy-Smith America Invents Act. One of these reforms concerns codifying double patenting. <ref name="govtracksummary" /> Double patenting is when two patents are awarded for the same invention to one patent holder. The first-to-file (FTF) system was introduced in the American Invents Act and put into effect in March of 2013. In the FTF system, the first inventor to file for a patent has priority in protecting the idea. <ref name="entrepreneur" /> The Innovation Act applies the FTF system to double patenting restrictions. If a patent claim is filed on the same day or before a similar second patent, then the first patent will be deemed prior art to the second patent. Thus, double patenting would be prevented unless nonobvious subject matter can be proven. <ref name="govtracksummary" />
−
===Small Businesses===
 
  
−
==Why it Hasn't been passed==
+
===Manufacturers===
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The House Innovation Act and Senate Patent Act are very similar; both acts address abusive litigation through “increased transparency, more limited discovery, heightened pleading standards, and ‘loser pays’ fee shifting”.  However, there has been a delay in the passing of the bills because of controversy surrounding the shifting of attorney fees. Fee shifting was originally suggested as a way to incentivize small firms and businesses that were being unfairly accused of patent infringement to bring the case to court, so that they would not have to pay their attorney fees. However, there have been arguments stating that fee shifting would actually increase the settlement rate of small businesses being accused of patent infringement, because they don’t want to take the risk of losing and paying for the winner’s attorneys’ fees, in addition to their own. [http://www.bna.com/debate-patent-reform-n17179934625/ (Bloomberg BNA)]
 
  
−
==Summary==
+
To protect manufacturing investments and patent owners, the act prohibits foreign courts from eliminating a company's US IP licenses in bankruptcy, in accordance with US law. <ref name="sectionsummary" /> On the other hand, the act pushes for plaintiffs to deal with manufacturers instead of the retailers or end users that have purchased the manufacturer's products. <ref name="patentlyoIA" /> Courts may stay customer suits while litigation with manufacturers accused of infringing the same patent is ongoing. <ref name="govtracksummary" />
−
 
 
−
===Heightened pleading requirements===
 
−
The Innovation Act requires patent owners to show how each limitation of each asserted claim in each asserted patent is found within each alleged infringement.
 
−
 
 
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===Presumption of attorney fees===
 
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The act encourages judges to make a party pay attorney fees if the lawsuit or claim is deemed frivolous.
 
−
 
 
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===Transparency of ownership===
 
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The Innovation Act requires plaintiffs to disclose the owner of the patent in question so the identity of the real parties behind the litigation is clear.  This will ensure that patent trolls cannot hide behind a web of shell companies to avoid accountability for bringing frivolous litigation.
 
−
 
 
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===Discovery limits===
 
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The act would limit discovery in litigation until after a claim construction ruling. This provision is aimed at reducing the costs of litigation.
 
−
 
 
−
==Analysis Notes (not organized yet)==
 
−
 
 
−
Before: The court may conclude that the patent claim is not valid if it is shown that the claimed invention was disclosed in a prior patent or patents, a book, a magazine, a newspaper, a television show or movie, a webpage or other published work before the date of the claimed invention.
 
−
 
 
−
After: Innovation Act removes a provision that prohibits a patent from being deemed invalid based on novelty, prior art, or nonobvious subject matter solely because a defense is raised or established based on prior commercial use.
 
−
 
 
−
'''Findings from Katznelson Study''' [http://poseidon01.ssrn.com/delivery.php?ID=343101100066123115123030102069064070118044003044069029011021030023117116127093101102018016059122121033039091077119112065111125116011031037081086111123082086020094071083084027120105093116082106100121110075118106014075071122118023002022027125120031067&EXT=pdf]
 
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Historically, as a fraction of issued patents, reported litigation rates in the first part of the 19th century exceeded that of the last two decades by about a factor of five.
 
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Patent litigation intensities in recent years had not exceeded those experienced during the 20th century. Rather , patent litigation surges are consistent with major shifts in technological developments, which introduce novel terms and uncertainty in patent claims and require infrimgement analysis of novel and less understood products.
 
−
 
 
−
'''NPEs vs PAEs'''
 
−
[https://www.justice.gov/sites/default/files/atr/legacy/2012/12/10/290073.pdf]
 
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We need to make a distinction between NPEs and PAEs (otherwise known as patent trolls). These terms are often used interchangeably but universities and startups are included under the definition of a non-practicing entity. If you define a Practicing Assertion Entity (PAE) as a company that asserts patents on existing products as a business model, then you separate universities and startups from PAEs, inventor monetizers, and special purpose patent monetizers.
 
−
 
 
−
 
 
−
 
 
−
 
 
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Issues/cricism of the innovation act [http://www.ipwatchdog.com/2015/05/20/study-should-pause-patent-reform/id=57946/]:
 
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*Apparent automatic fee-shifting in lawsuits
 
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*Heightened pleading standard
 
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*Discovery stay
 
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*Broad ‘customer stay’ provision could shield retailers/importers from infringement claims
 
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*Pierce corporate veil with “ownership transparency”
 
−
 
 
−
Indirect infringement:
 
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*Someone who has contributed to the infringement of a patent is liable
 
−
*Can only arise when the indirect infringer has some knowledge and intent regarding the patent and infringement
 
−
*ex. someone who actively induces infringement of patent by encouraging, aiding, or causing another person to infringe a patent. Inducer must be aware of patent and intend for their actions to result in third party infringing that patent
 
−
*Contributory infringement: seller provides part of component that itself does not infringe on a patent, but has a particular use as a part of some other machine that is covered by a patent
 
−
 
 
−
===Detailed Summary of the Bill===
 
  
 +
===Small Businesses===
  
 +
In addition to reducing costs and curbing patent troll abuses, the act requires the USPTO to create and distribute educational materials for small businesses involved in aggressive patent litigation. Working outreach programs would be modified to include information on patent litigation practices that are threatening the success of small businesses. This information would also be disseminated through the Small Business Administration and the Minority Business Development Agency. The act directs the USPTO to have public records online about when a patent claim is brought to court along with other specifics regarding the patent's ownership to increase transparency. <ref name="govtracksummary" />
  
 
==References==
 
==References==
Line 128: Line 88:
 
<ref name="interestsofjustice"> [https://www.wilmerhale.com/uploadedFiles/WilmerHale_Shared_Content/Files/PDFs/how-PTAB-applies-interests-of-justice-discovery-standard.pdf] 'How PTAB Applies 'Interests of Justice' Discovery Standard', "Law360", Portfolio Media, Inc. (New York, New York). </ref>
 
<ref name="interestsofjustice"> [https://www.wilmerhale.com/uploadedFiles/WilmerHale_Shared_Content/Files/PDFs/how-PTAB-applies-interests-of-justice-discovery-standard.pdf] 'How PTAB Applies 'Interests of Justice' Discovery Standard', "Law360", Portfolio Media, Inc. (New York, New York). </ref>
 
<ref name="claimconstruction"> [http://patentlyo.com/patent/2009/09/claim-construction-a-structured-framework-1.html] Peter S. Menell, Matthew Powers, and Steven Carlson, 'Claim Construction: A Structured Framework', "PatentlyO". </ref>
 
<ref name="claimconstruction"> [http://patentlyo.com/patent/2009/09/claim-construction-a-structured-framework-1.html] Peter S. Menell, Matthew Powers, and Steven Carlson, 'Claim Construction: A Structured Framework', "PatentlyO". </ref>
 +
<ref name="sectionsummary" > [https://judiciary.house.gov/wp-content/uploads/2016/02/072015-Section-by-Section-of-HR-9-Innovation-Act.pdf] 'H.R.9, The "Innovation Act": Section-by-Section Summary", 'Judiciary Committee', (July 2015). </ref>
 +
<ref name="entrepreneur"> [https://www.entrepreneur.com/article/231884] Kirby Drake,'How to Take Advantage of the First-to-File Patent System', Entrepreneur Media, Inc. </ref>
 +
 +
[[Category: Public]]
 +
[[Public Classification::Legislation| ]]

Latest revision as of 14:07, 2 September 2016

Return to Proposed Patent Reform.

The H.R.9:Innovation Act was reintroduced on February 5, 2015, by Representative Bob Goodlatte (R-VA). The bill was referred to the House Committee on the Judiciary and Subcommittee on the Courts, Intellectual Property, and the Internet, and was placed on the Union Calendar on July 29, 2015. Currently the bill has 27 cosponsors, 15 Republicans and 12 Democrats.

The full title of the act is "To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes." [1]GovTrack predicts that the Innovation Act has a 36% chance of being enacted. Representative Bob Goodlatte intends for the bill to cut down on abusive patent litigation and strengthen a patent holder's rights.[2] The Innovation Act also proposes certain reforms to the enacted Leahy Smith America Invents Act.

The bill will target the following areas [2]:

  • Abusive patent litigation.
  • Increasing transparency and reducing weak patent infringement claims.
  • Clarifying patent litigation procedures and practices.
  • Bolstering IP centered small businesses.
  • Reducing referrals to random courts for the review of patent cases.
  • Weakening power of Patent Trolls.

Provisions

The provisions of the Innovation Act encompass all of the areas of reform currently in consideration by Congress.

Pleading Requirements

In efforts to diminish the Patent Troll threat by the bill sponsors, the Innovation Act heightens pleading requirements for parties filing for patent infringement. Form 18, the form previously used to submit generalized patent infringement claims, has been eliminated by the Judicial Conference in wide-sweeping amendments. This amendment was expected to be implemented December of 2015. [3] The Innovation Act also proposes Form 18's elimination by the Supreme Court to reduce patent litigation, especially litigation involving Patent Trolls or Non-Practicing Entities.[4] The Supreme Court would be allowed to codify a new model for filing infringement complaints that would include notifying the accused parties of the claim and its content. [5]

Supporters hope that the act would go further in reducing generalized complaints and eliminating loopholes by requiring (with exceptions) the plaintiff to submit infringement charts with the initial complaint.[6] The purpose of the charts is to force the plaintiff to explain the specifics of a claim, how a product or the specific use of the patented idea or process violates each infringed component of a patent and the scope of each component's infringement. [6]

Additionally, a claim of previous commercial use may not result in a court invalidating a patent because it lacks novelty, seems to cover obvious subject matter, or due to prior art. [5] Prior Art refers to evidence indicating that the technology or invention in question has already been used, discovered, or is generally known. [7]

Fees and Other Expenses

Writers of the bill propose that a modified "English Rule" become the new standard in patent litigation in America to avoid frivolous lawsuits and adequately sanction patent trolls for pointless or unfounded claims. [8] [6] The "English Rule" requires the losing party in a trial compensate the prevailing party for its attorney fees. [9]

The act requires courts to have losing parties provide for "reasonable fees and other expenses" incurred in litigation. The award may be waived only if the losing party is found to have just legal and factual cause to be part of the litigation. If the losing party is unable to pay due to extraordinary circumstances, the court may ask a joined or interested party to cover the award. [10] Additionally, the plaintiff may have to pay attorney fees if it dismisses the claim before going to trial unless they were given the explicit right to settle without a court order. [5]

Joinder of Interested Parties

As part of the Fees and Other Expenses provisions, an interested party or parties may be required to cover attorney's fees and other expenses in the case that the nonprevailing party cannot. Sponsors of the bill hope to prevent Patent Trolls from claiming the inability to pay fees by shuffling accounts between all of their companies by including this provision. [8] Interested parties may include parties that have invented or invested in the disputed patents or that commercially practice or perform R&D in the same field. [5]

Discovery Stay

The act establishes that a claim construction ruling must occur prior to discovery. [6] Discovery is a process that occurs pre-trial in a civil action, a conflict between two private parties, and is defined by the federal government as any party's right to obtain relevant information for the trial. Claim construction defines exactly what a patent includes and the extent to which a patent holder can protect the subject matter. [11] The act also specifies that claim construction previously agreed upon in another court must hold when a patent claim is reviewed by the USPTO or in a new trial. [6]

Discovery of additional or non "core" documents is not allowed unless the party requesting them covers the costs of discovery and all parties consent to discovery. [6] By enabling courts to limit discovery, sponsors hope to reduce litigation costs and target patent trolls intending to settle a case quickly using information revealed in discovery. [2]

Demand Letters

To protect small businesses, the act requires that the patent owner explain the reason for the lawsuit and how the infringement has occurred to the accused party or parties. [8] A demand letter sent prior to the lawsuit cannot be used as evidence of willful infringement unless the demand letter specifies which patent is being infringed, what is infringing the patent, the parent company that owns the patent, and how one or more claims in the patent are being violated. [6] Anyone found violating these requirements would be forced to pay additional damages. [12]

Venue

The act requires that patent infringement suits only be heard in judicial districts with reasonable connection to the conflict. [12]

A judicial district in which the following have occurred is considered to have reasonable connection to the dispute: [5]

  • the defendant is headquartered or incorporated.
  • the defendant infringed the patent.
  • the defendant's facility where the patent continues to be infringed.
  • the defendant was informed and agreed to the suit.
  • an inventor of the patent led R&D.
  • either party runs R&D for the patented invention.
  • either party manufactures a physical product that violates the patent's claims.
  • either party runs a process using the patented invention.

Disclosure of Ownership

An initial complaint must disclose specifics about the patent including the parent company of the patent and any party with a financial interest in the patent. [12] Any change in patent ownership must be provided to the UPSTO. If the information is not provided or updated when changes occur, then the court will make the patentee cover the defendant's attorney fees. [6]

Double Patenting

Within the Innovation Act, several reforms are suggested to the Leahy-Smith America Invents Act. One of these reforms concerns codifying double patenting. [5] Double patenting is when two patents are awarded for the same invention to one patent holder. The first-to-file (FTF) system was introduced in the American Invents Act and put into effect in March of 2013. In the FTF system, the first inventor to file for a patent has priority in protecting the idea. [13] The Innovation Act applies the FTF system to double patenting restrictions. If a patent claim is filed on the same day or before a similar second patent, then the first patent will be deemed prior art to the second patent. Thus, double patenting would be prevented unless nonobvious subject matter can be proven. [5]

Manufacturers

To protect manufacturing investments and patent owners, the act prohibits foreign courts from eliminating a company's US IP licenses in bankruptcy, in accordance with US law. [12] On the other hand, the act pushes for plaintiffs to deal with manufacturers instead of the retailers or end users that have purchased the manufacturer's products. [6] Courts may stay customer suits while litigation with manufacturers accused of infringing the same patent is ongoing. [5]

Small Businesses

In addition to reducing costs and curbing patent troll abuses, the act requires the USPTO to create and distribute educational materials for small businesses involved in aggressive patent litigation. Working outreach programs would be modified to include information on patent litigation practices that are threatening the success of small businesses. This information would also be disseminated through the Small Business Administration and the Minority Business Development Agency. The act directs the USPTO to have public records online about when a patent claim is brought to court along with other specifics regarding the patent's ownership to increase transparency. [5]

References

[1] [2] [3] [4] [6] [8] [9] [10] [7] [5] [14] [11] [12] [13]

  1. ↑ 1.0 1.1 [1] 'H.R.9:Innovation Act', govtrack.us.
  2. ↑ 2.0 2.1 2.2 2.3 [2] 'The Innovation Act', Judiciary Committee: Chairman Bob Goodlatte, (Washington, D.C.).
  3. ↑ 3.0 3.1 [3] L. Morad and A.J. Bramhall, 'An Early Review of the Impact of Form 18's Elimination on Pleading Direct Infringement',PatentlyO.
  4. ↑ 4.0 4.1 [4] Jura Zibas and Gregory Brescia, 'Supreme Court Adopts Amendments to Federal Rules', The National Law Review, (Western Springs, IL).
  5. ↑ 5.0 5.1 5.2 5.3 5.4 5.5 5.6 5.7 5.8 5.9 [5] 'Summaries for the Innovation Act', "govtrack.us".
  6. ↑ 6.0 6.1 6.2 6.3 6.4 6.5 6.6 6.7 6.8 6.9 [6] Dennis Crouch, 'Patent Reform: Innovation Act of 2015', PatentlyO.
  7. ↑ 7.0 7.1 [7] 'What is prior art?', "European Patent Office: Inventors' Handbook", (Munich, Germany).
  8. ↑ 8.0 8.1 8.2 8.3 [8] 'The Innovation Act: Key Provisions', Judiciary Committee: Chairman Bob Goodlatte, (Washington, D.C.).
  9. ↑ 9.0 9.1 [9] Theodore Eisenberg and Geoffrey P. Miller, 'The English vs. the American Rule on Attorneys Fees', New York University Law and Economics Working Papers.
  10. ↑ 10.0 10.1 [10] 'Summary: H.R.9-114th Congress', congress.gov.
  11. ↑ 11.0 11.1 [11] Peter S. Menell, Matthew Powers, and Steven Carlson, 'Claim Construction: A Structured Framework', "PatentlyO".
  12. ↑ 12.0 12.1 12.2 12.3 12.4 [12] 'H.R.9, The "Innovation Act": Section-by-Section Summary", 'Judiciary Committee', (July 2015).
  13. ↑ 13.0 13.1 [13] Kirby Drake,'How to Take Advantage of the First-to-File Patent System', Entrepreneur Media, Inc.
  14. ↑ [14] 'How PTAB Applies 'Interests of Justice' Discovery Standard', "Law360", Portfolio Media, Inc. (New York, New York).
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