A PERFECT STORM IS BREWING – “PATENT REFORM”

March 25, 2006: Taking a page from the book by Wharton professor Richard Shell, “Make the Rules or Your Rivals Will,” patent attorney Gerry Elman calls attention to a “perfect storm” now brewing that could break the U.S. patent system unless the issues are thoughtfully and carefully resolved, requiring input from stakeholders such as you.

Elman says that the question of "what kind of patents are going to be granted and enforced in this country" has become a hot topic of public debate. Earlier this week, on March 22, 2006, editorial articles on the subject appeared in both the NY Times and the Wall Street Journal. One of them had a generally pro-patent tone, while the other was anti-patent. Congress has taken up the issue, under the rubric of "Patent Reform." A House subcommittee is resuming a series of hearings starting the first week in April. If your business rises or falls with intellectual property protection, he says, now is the time to make your voice heard in Washington.

In the midst of this, the relevant agency (U.S. Patent and Trademark Office “PTO”) chose in January to put forth a couple of major changes in procedure that Elman says would drastically impact the nature and cost of patent protection for innovative companies. One proposal would put a “cap” on the number of continuation patent applications that can be filed and the other would increase the complexity of patent prosecutions with a large number of different claims. The deadline for comments from the public is May 3, 2006. You can view the PTO’s proposals, as well as ongoing public comments they have received by clicking HERE.

Elman adds that on March 21, lawyers argued before the U.S. Supreme Court the case of Laboratory Corporation of America Holdings v. Metabolite Laboratories, putting into play a fundamental question as to whether and how scientific discoveries can be patented. For that decision, he says, stay tuned.