The U.S. House of Representatives Judiciary Subcommittee on Intellectual Property, Competition and the Internet has held a hearing focused on recent patent-law decisions in the courts. The March 10, 2011, hearing came in the wake of the Senate’s recent approval of the America Invents Act, the first major overhaul of the U.S. patent system in more than 50 years.
Those testifying included law professors Dan Burk of the University of California, Irvine, and Dennis Crouch of the University of Missouri School of Law. Contending that patent reform is “nearing a turning point,” Crouch noted that the courts have assumed a more active role in shaping patent policy. He identified elements of prior patent reform measures that were addressed by the courts and those that have not and are ripe for legislation. The latter include (i) “Easing the USPTO’s [U.S. Patent & Trademark Office’s] ability to set fees for its services and to retain all fees collected”; (ii) “Moving from a ‘firstto- invent’ system to a ‘first-to-file’ system”; (iii) “Expanding prior-user rights”; (iv) “Requiring that all patent applications be published by the USPTO”; (v) “Allowing pre-issuance protests (or prior art submissions) by third parties”; (vii) “Eliminating the ‘best mode’ requirement”; (vi) “Expanding the scope of post-grant reexamination or adding an additional post-grant opposition proceeding”; and (viii) “Easing the rules for assignee submission of patent filings without the inventor’s express permission.”
Burk referred to patent reform as “an ongoing, dynamic process” and called for flexible legislation to allow the process to work. According to Burk, flexibility allows the courts to address “new economic and technological situations as they arise.” He concluded, “Recent judicial decisions addressing the issues driving patent reform demonstrate that this process is working as it should.”