By Dennis Crouch
Congress began its "lame duck" session this week and the session can potentially last until January 3, 2013 when the new Congress is sworn in. The primary focus of this session will be resolving budget issues and the pending "fiscal cliff" that would significantly reduce government spending (including USPTO spending). We can also expect that some patent reforms will be pushed in the session. Traditionally, Congress has used mega-bills (such the expected fiscal cliff fix) as carriers for small but potentially controversial rider bills. This approach is especially effective in a lame duck session such as this because of the time pressure and lack of accountability over some of the members of Congress who are permanently leaving town. Most governments have created rules that largely limit the effectiveness of riders. However, the U.S. Government has not taken that approach.
There are several patent issues that are likely to make their way into the lame duck session. The most likely is implementation of two patent law treaties.
Patent Law Treaties Implementation Act of 2012: Earlier this year, the Senate passed the Patent Law Treaties Implementation Act by unanimous consent. S. 3486. The House version (H.R. 6432) is jointly sponsored by the bipartisan leaders of the House Judiciary Committee, including Representative Lamar Smith who chairs that important committee. The USPTO has lobbied for passage of this bill and provided the original draft legislation. The bill has two main parts: (1) implementation of the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) and (2) implementation of the provisions of the procedural Patent Law Treaty. These treaties have both been signed by a president and ratified by the Senate. However, both require implementation legislation in order to become effective. The idea behind both of these agreements is to streamline the filing of international applications.
On the industrial design front, the two the most substantive elements of the changed law would be (1) an extension of the design patent term by an additional year with the resulting term being fifteen years from issuance; and (2) allowing applicants to include up to 100 different design inventions within a single international design application. About 45 countries, including virtually all of Europe have signed-on to the Hague Agreement (Geneva Act).
The major change with regard to the patent law treaty is that the law would now allow for revival of unintentionally abandoned international applications.
Foley's Hal Wegner has written on the bill with relation to design patents and explains his view that US Design law is in violation of the TRIPS agreement that mandates protection for industrial designs based upon novelty alone. Wegner writes:
Enactment of the new law will have two major consequences for the United States intellectual property community:
First, of immediate interest, once the Geneva Act becomes effective, American industry will be better able to attack knockoff products at their source in overseas producing countries of Asia while also being able to attack such knockoffs in the upper end consumer countries such as Japan, Korea and China and the several states of the European Union.
Second, the apparent violation of the TRIPS coupled with the inadequacies of the design protection law in the United States will refocus domestic debate on the question whether it is time for the United States to implement a better system to protect industrial designs.
Read Wegner's Paper "The New Industrial Design Law, a TRIPS Trap?" Download Wegner industrial designs nov12
Technical Amendment to the AIA: A second likely push in the lame duck session will be a "technical amendment" to the AIA. There are currently no official proposed texts and neither the USPTO, the IPO, nor the AIPLA were willing to provide any draft language of what is being discussed. Topics being discussed are (1) reducing the estoppel associated with PGR filings; (2) expanding the scope of prior-user rights to include prior non-commercial users; (3) defining the meaning of "otherwise publicly available" and "disclosure" in redefined Section 102; and (4) allowing IPR during the first-nine-months after issuance for pre-AIA patents. The USPTO does not appear to be pushing for any of these reforms, but other parties are doing so.
USPTO Spending: Assuming that the "fiscal cliff" debate results in across-the-board spending cuts, the USPTO would look to be treated as an exceptional case because it is fully user-fee funded rather than taxpayer funded.
Other Potential Patent Reforms: Fee shifting in software and computer hardware lawsuits (H.R. 6245); Protecting Consumer Access to Generic Drugs (H.R. 3995); Infringement exception for automotive repair parts (H.R. 3889); Research Works Act allowing publication of federally funded research (H.R. 3699); Enhanced Penalties for Counterfeit Drugs (H.R. 3468); Design Rights for Fashion under the copyright laws (S. 3523); Federal civil cause of action for trade secret theft involving interstate or international commerce (S. 3389).