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Archived updates for Monday, September 27, 2004

AIPLA Responds to NAS Patent Report

The American Intellectual Property Law Association issued a statement endorsing "the main thrust" of the National Acadamy of Scienes Report entitled “A Patent System for the 21st Century� in each of the seven areas where recommendations have been made:

  • The patent system should remain open-ended, unitary and flexible so that,
    wherever “progress in the useful arts� might lead mankind, a vigorous and
    effective patent system can follow. No changes in the existing patent law are
    needed to achieve this end. Neither the AIPLA nor the NAS Report endorses any
    changes to the patent law in this regard.
  • A core feature of the patent laws should be a set of vigorously applied criteria for
    patentability, and AIPLA agrees with the NAS Report that the non-obviousness
    standard should be vigorously applied. In this respect, however, non-obviousness
    is no different from the other patentability requirements; all must operate with
    vigor for the patent law to promote progress in the useful arts. That said, AIPLA
    does not agree that reinvigoration of the non-obviousness law is now necessary.
    Rather, what is needed is a consistent application of all the requirements for patent
    validity. Achieving this consistency depends in part upon a U.S. Patent and
    Trademark Office with sufficient resources and capabilities to guarantee that this
    can happen. The NAS Report does not recommend any statutory change to the legal standard for assessing non-obviousness and AIPLA concurs that none is
  • Decisions of patent examiners to issue patents should be subject to an open review
    process in which the public can participate. AIPLA supports the conclusion of the
    NAS Report that an effective post-grant opposition system needs to be instituted.
    However, based upon global experience with such proceedings, a post-grant
    opposition mechanism must be carefully constructed, adequately resourced by the
    U.S. Patent and Trademark Office, and appropriately constrained. It should
    achieve a balance between the interests of the patent owner in a final
    determination of patent property rights and the interests of the public in the prompt
    elimination of erroneously granted patents.
  • A predicate to the more effectively functioning patent system is a more effectively
    functioning U.S. Patent and Trademark Office. A key to a more effective Office
    lies in adequate funding levels, an improved mechanism for financing the
    operations of the Office, and a more effective business planning process. AIPLA
    wholeheartedly endorses the NAS Report recommendation that the Office’s
    capabilities must be strengthened. Doing so depends upon funding and financing
    reforms that will make possible effective business planning. Creating and
    enhancing capabilities of the Office is essential to the successful implementation
    of a new post-grant opposition procedure.
  • Scientific, research, or other experimental activities that allow a patented invention
    to be better understood, more fully developed, or further advanced should be
    exempt from patent infringement. Codifying such an exemption as recommended
    by the NAS Report, would remove the uncertainty that now exists over the manner
    in which a patented invention can be used to better understand and/or extend what
    is patented.
  • The cost of patent litigation, which itself renders many patents de facto
    unenforceable, should be addressed through statutory changes recommended by
    the NAS Report. These changes include elimination, limitation or modification of
    current provisions of the patent law as they relate to willful infringement,
    inequitable conduct, and the requirement to disclose the inventor’s contemplated
    best mode. While these changes may appear controversial to some inside and
    outside the IP community, radical changes in the patent law are needed to control
    the costs of all aspects of filing, procuring and enforcing patents.
  • Substantive U.S. patent law should be radically simplified in the manner proposed
    by the NAS Report. AIPLA supports adoption of a “best practices� approach to
    modernizing the U.S. patent system. These include adoption of a first-inventor-tofile
    system, repeal of “loss of right to patent� provisions, ending the exclusions to 18-month publication of pending patent applications, and removal of the “best mode� requirement. Such changes to U.S. patent laws would also have the salutary effect of further harmonizing U.S. patent laws with those of other advanced industrialized countries. The NAS Report makes a persuasive case for the need to change U.S. patent laws and to seek patent law harmonization internationally.
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