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LES—A Voice For IP Policy With Legislators

Wednesday, September 6, 2017   (0 Comments)
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Brian P. O’Shaughnessy, President & Chair of the Board, LES (USA & Canada)

Brian P. O’ShaughnessyLES (USA & Canada) continues to be a voice for strong, defensible, and alienable intellectual property rights. Over the past several months, LES leadership has participated in a number of meetings and forums in support of sound IP policy in the public interest.

In June, we met with staff for U.S. Senator Chris Coons on the eve of his introduction of the STRONGER Patents Act, a bipartisan bill co-sponsored with Sens. Cotton, Durbin, and Hirono. The Bill seeks to stimulate our nation’s economic growth and resilience by a return to IP laws and policies that made our patent system the envy of the world, which much of the world has emulated, but from which we have recently deviated.

Among other things, the Bill would require that claim interpretation in Inter Partes Reviews (IPR) and Post-Grant Reviews (PGR) be performed according to the Philips standard, rather than the current “broadest reasonable interpretation” (BRI). Claim amendments in IPRs and PGRs would be more easily made, and federal court validity determinations would hold priority over PTAB determinations. The Bill would restore the exclusive nature of the patent property right by creating a presumption that ongoing infringement, if found, would cause irreparable injury, and that remedies at law would be inadequate to compensate for that injury. The Bill would also eliminate USPTO fee diversion.

We were joined in our meeting by Joe Allen, whom we can thank for shepherding the Bayh-Dole law through Congress, and who continues to be its most ardent supporter and our most informed guide for its proper implementation. Joe brought to the Senator’s attention the “integrity loophole” under current PTAB proceedings. The USPTO has no authority to award monetary damages or similar sanction against those acting in bad faith in bringing IPRs and PGRs. As such, the unfortunate victim of such a bad faith action has no recourse against the malefactor. We will continue to work with the sponsors of the STRONGER Patents Act, and other members of Congress, to address these deficiencies in our system, and to see that the interests of the IP management and licensing community are protected in this and other legislative initiatives.

LES (USA & Canada) leadership also joined an event sponsored by the Eagle Forum Education and Legal Defense Fund at the Capitol Hill Club on May 25, 2017. The event focused on the challenges facing patent owners in light of recent precedent and legislation. Many of the leading lights in the patent policy debate offered inspiring remarks extolling the importance of our patent system in fueling our nation’s economic ascendancy. We heard from Congressman Dana Rohrabacher, Congressman Thomas Massie (himself a patentee and successful entrepreneur), Congressman David Bratt, Chief Judge Paul Michel (retired), Pat Choate, Peter Harter, Kevin Kearns, Ken Blackwell, and Laurie Self. Also in attendance was James Edwards, Co-Director, the Inventor’s Project, and Paul Morinville, founder, U.S. Inventor.

The event’s speakers acknowledged the importance of recognizing and affirming the patent right as a personal property right. We find support for this in the words of our Constitution, which grants to individual authors and inventors an exclusive right to their respective writings and discoveries.

We’ll soon learn whether the U.S. Supreme Court agrees with those views when it decides Oil States vs. Greene’s Energy Group et al. There the court will address whether an Article I tribunal (e.g., PTAB) is empowered to take the patent property right from a patent owner.

This is perhaps the most significant patent case the Supreme Court will decide in recent times. The very fate of the America Invents Act (AIA), and its core component of post-grant proceedings, hangs in the balance. If a patent is a private property right, then, at least one argument goes, the Patent Trial and Appeal Board, an Article I tribunal, does not have authority to take that right from the owner. Such would be a violation of the Fifth Amendment, the Takings Clause, which provides that private property shall not be taken for public use without just compensation. It has long been held that adjudication of claims under the Takings Clause is solely the province of an Article III court. As such, an Article I tribunal (PTAB) would lack that authority, and the whole scheme of the AIA and post-grant proceedings would collapse like the walls of Jericho.

If, however, the Court finds the patent right to be a public right, conferred by the good graces of our government, and thus subject to rescission, then an Article I tribunal would, arguably, have that authority; and the post-grant proceedings of the AIA might well survive.

Given recent Supreme Court precedent, we cannot be sanguine that the rights of patent holders will come out atop this debate, nor can we rest easy that vested interests seeking to further weaken our patent system will not contort the Court’s holding, regardless the outcome. The vitality of our intellectual property system, and ultimately the health of our economy, demands our support and attention. LES will continue to lend its voice to these debates, and to work collectively and cooperatively toward a U.S. IP regime that encourages innovation and serves the public interest. We thank you, our members, for your support and assistance in this worthy effort.

Very best regards,


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