Fall 2013 Issue of Horizons

LIFE SCIENCES

The legislative recommendations are:

Ensure ITC has Adequate Flexibility in Hiring This recommendation is intended to assist the ITC in hiring Administrative Law Judges, helping ensure that the proper resources are in place at the ITC.

Require Patentees & Applicants to Disclose ‘Real Party-In-Interest’ This recommendation was designed to increase transparency by requiring full disclosure of ownership by parties filing law suits and issuing patent infringement demand letters. Permit More Discretion in Awarding Fees to Prevailing Parties in Patent Cases With the intention to realign incentives by shifting more of the litigation risk to the filing party, this recommendation should reduce patent trolls’ abuse of the U.S. judicial system. Expand the U.S. Patent & Trademark Office’s (PTOs) Transitional Program This is an effort to create a higher standard for business method patents (business method patents cover a process rather than an item like a machine or component part). The intention is to reduce the prevalence of overly broad business method patents that make it easy for patent trolls to cast a wide net. This recommendation may lower the incentive for patent trolls to litigate and reduce the risk of litigation against innovative entities. Protect Off-the-Shelf Use by Consumers & Businesses The intention of this recommendation is to increase the protections from litigation of consumers and businesses that purchase a product “off-the-shelf” and use it strictly for its intended use. Change the U.S. International Trade Commission (ITC) Standard for Obtaining an Injunction This change is designed to increase consistency in the standards applied at the ITC and in district courts. Use Demand Letter Transparency to Help Curb Abusive Suits This recommendation is designed to increase transparency and disclosure in patent litigation by incentivizing filing of public demand letters to make them searchable by the public.

The five executive actions are:

Making “Real Party-In-Interest” the New Default The PTO will begin a process to require patent applicants and owners to regularly update ownership information when involved in proceedings before the PTO. This action is intended to increase the transparency of entities filing litigation and give defendants a clearer picture of the entities filing claims against them. Tightening Functional Claiming The action aims to have the PTO increase the scrutiny of patent applications and reviews with the goal of reducing the prevalence of overly broad claims within a patent. By limiting overly broad claims, the ability to file abusive litigation is also limited by reducing the size of a patent troll’s potential litigation market. Empowering Downstream Users The action enables the PTO to provide education and outreach materials to product end-users (who use legitimately purchased products for intended use) who face patent litigation. The action is intended to provide these end-users with the information necessary to challenge demands from patent trolls. Expanding Dedicated Outreach & Study The action continues existing outreach efforts to ensure that more progress is made in those areas critical to U.S. innovation. Strengthen Enforcement Process of Exclusion Orders The action starts an initiative to ensure that the processes for enforcing exclusion orders (regarding imported products) is transparent, effective, and efficient. The goal of these initiatives is to reduce economically harmful litigation initiated by patent trolls while maintaining the intellectual property protections critical to innovation.

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