♠ Posted by Emmanuel in Litigation
at 5/02/2007 02:10:00 AM
The US Patent and Trademark Office (USPTO) has been under attack for issuing patents for "inventions" that fail to meet the criteria of being useful, novel, and non-obvious. I much recommend the book Innovation and Its Discontents if you are interested in the issue of patent reform. In any event, the US Supreme Court has seemingly taken up suggestions in the book in coming to the conclusion that the USPTO has become far too generous in issuing patents that are especially "obvious." From Fortune online's Legal Pad blog:In the latest in a series of rebukes, the Court unanimously told the U.S. Court of Appeals for the Federal Circuit and, by extension, the U.S. Patent and Trademark Office, that each had been approving and enforcing patents for inventions that were just too obvious to merit the honor. The ruling came in KSR International v. Teleflex, a case involving an adjustable truck accelerator pedal. For details of the case, see earlier post here.) The Court also handed Microsoft (MSFT) an important victory in a different patent case yesterday, Microsoft v. AT&T (T), which pared back the applicability of U.S. patents to software distributed abroad. Microsoft was the defendant in that case. Microsoft general counsel Brad Smith tells the Wall Street Journal’s Jess Bravin today (click here) that the ruling will lop off about 60% of its exposure in the 45 patent cases pending against it today. For my earlier postings relating to that case, see here and here.Though these two cases were hardly noted by mainstream media, make no mistake: this is big, very big--especially for pharmaceutical firms that have been successful in extending their patents indefinitely to avoid competition from generics. It will become more difficult to obtain and defend patents Stateside:
But there wasn’t much gilding of the lily at this press conference. Robert Sterne, a patent lawyer for 29 years and the founding partner of the intellectual property firm of Sterne, Kessler, Goldstein & Fox, had this to say: The ruling will make it “harder, more costly, and more time consuming for inventors to obtain U.S. patents in all areas of technology, particularly mechanical inventions and software and methods of doing business.” He added that the pharmaceutical industry would probably be impacted, too, since drug companies try to prolong the terms of their strong patents with dubious, supplemental ones that might not measure up under the new standard...Here are the Supreme Court opinions on the KSR v. Teleflex and Microsoft v. AT&T cases.
At the same conference, Supreme Court advocate Tom Goldstein of Akin Gump Strauss Hauer & Feld, who had argued the case for Teleflex, wasn’t downplaying the significance of the loss either: “It’s fair to say that the economic consequences of the obviousness doctrine runs to the trillions of dollars. It’s the gateway to getting a patent, and intellectual property is at the heart of the American economic system.”
