STATEMENT OF
CHARLES E. VAN HORN
On Behalf of the
AMERICAN INTELLECTUAL PROPERTY LAW
ASSOCIATION
Before the
SUBCOMMITTEE ON COURTS, THE INTERNET AND
INTELLECTUAL PROPERTY
COMMITTEE ON THE JUDICIARY
UNITED STATES HOUSE OF REPRESENTATIVES
On
Patent Law and
Non-Profit Research Collaboration
Mr. Chairman:
I
am pleased to have the opportunity to present the views of the American
Intellectual Property Law Association (
35 U.S.C.
§ 103 to promote collaborative research involving non-profit organizations
including research institutes and universities.
The AIPLA is a national bar association of more than 13,000 members engaged in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property.
BACKGROUND
An amendment to 35 U.S.C. § 103, enacted as part of the Patent Law Amendments Act of 1984, allows certain types of research teams to work together, but exempts prior art under 35 U.S.C. § 102(f) or (g) from being considered when determining whether an invention that is the product of that research team meets the statutory requirement for nonobviousness for a patentable invention. The legislative history states the rationale behind this amendment was to encourage communication among members of research teams and the patenting, where appropriate, of any resulting “team research,” thereby promoting the public dissemination of the results of such collaborative activity. The American Inventors Protection Act of 1999 expanded this exemption to include prior art under 35 U.S.C. § 102(e). These amendments now appear in 35 U.S.C. § 103(c). The legislative history (“Section-By-Section Analysis of H.R. 6286, Patent Law Amendments Act of 1984,” Congressional Record of October 1, 1984 at H10525 to H10529) of 35 U.S.C. § 103(c) makes clear that “obviousness-type double patenting” principles apply where two patents would not have issued, but for the
§ 103(c) statutory exemption.[1]
The current § 103(c) exemption operates where only a “prior established assignment obligation” is in place among members of the research team:
“Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.”
The
current statute normally limits the operation of the exemption to employees of
a single legal entity, i.e., within a
university or corporation.
AMENDING SECTION
103(C)
s
to amend 35 U.S.C. § 103(c) to ensure that it would not complicate
the operation or implementation of this section and/or create traps for unwary
collaborators.
In this regard, the Association is aware of at least
one approach that would require a “prior established collaboration” as a
precondition to the application of the § 103(c) exemption. This so-called
“prior established collaboration” exemption has at least two fundamental
flaws. First, the courts would need to
establish a judicial standard for whether the requisite collaboration had been
established, and then determine whether the establishment had been completed
before or after the invention date for the claimed subject matter. Given the myriad of ways in which inventors
interact with one another, the standard is likely to take the form of a
complex, fact-dependent determination.
Moreover, under the “duty of candor and good faith,” anyone attempting
to benefit from this provision would have an uncompromising duty of candor before
the patent examiner to completely explain the nature and creation of the
collaboration, as well as its existence relative to the invention date, that it
is likely to needlessly generate issues of patent unenforceability. In addition, application of the standard
would add to the workload of the patent examiner, who would be obliged to
review these submissions and determine in the first instance if the requisite
collaboration existed or, if it did not, what would represent prior art to be
applied. We believe that placing
additional burdens on the Patent and Trademark Office, particularly at this
time and without additional resources, would not improve the patent system.
Second, the “prior established collaboration” exemption could seriously harm inventors, e.g., university inventors who disclose a basic idea or discovery under collaboration. One illustrative example of our concerns should suffice to demonstrate the gravity of the unfairness – and unworkability – for the “prior established collaboration” test.
If a basic invention is disclosed by a university professor to an employee of a collaborating corporation, a § 103(c) amended to include a “prior established collaboration” option, would permit the corporate employee to quickly file an entire series of patent applications taking the original idea and making trivial modifications or other types of obvious selections or adaptations. Because the basic idea or discovery would be disqualified as prior art, the corporation could obtain an array of patents on trivial selections and adaptations, often before the university could successfully obtain a patent for the seminal idea.
Any patent application subsequently filed by the university would be blocked by an “obviousness-type double patenting” rejection on the basis of the patents previously issued to the corporation. The university would be faced with the unattractive options that any patent it might obtain would be unenforceable unless it either acquired the corporate patents or it assigned its patent to the corporation.
Under
the Patent Law Amendments Act of 1984, Congress directed that inventions
patented as a result of § 103(c) would be subject to “obviousness-type double
patenting” and indicated that the United States Patent and Trademark Office
should amend the double patenting practices before the Office to assure that
appropriate double patenting rejections were made. By requiring the filing of terminal
disclaimers, Congress ensured that unjustified extension of patent term of
multiple patents for the same invention would be avoided, along with the
possibility of harassment of members of the public faced with separately owned
patents for the same patentable invention. This is sound policy and the same
direction to the United States Patent and Trademark Office should apply should
any amendments be made to § 103(c).
If
the Subcommittee determines that a problem exists that is most appropriately
addressed through amendment of § 103(c), we believe that at least one
approach that should be considered in fashioning an appropriate legislative
remedy is to focus on “common ownership,” not “established collaboration,”
since common ownership is essential in any event to enforceability under the
well-recognized, necessarily applicable concepts of “obviousness-type double
patenting.” In addition, if amendments
to § 103(c) are to be considered, consideration should also be given to
the point in time at which this common ownership should be required. The current language in § 103(c)
requires common ownership to exist “at the time the invention is made.” A determination of when an invention is made
can be a very complex undertaking and will often lead to the assignment of
different dates for the inventions defined in different claims in a patent
application or patent. Perhaps this
determination is unnecessarily complex to achieve the goals of § 103(c)
and a deadline such as the date a patent application is filed or a patent is
issued would be a better and simpler approach.
Finally, for the same reasons that motivated Congress in enacting the
Patent Law Amendments Act of 1984,
CONCLUSION
AIPLA is eager to work towards simplification and strengthening of the patent laws and their application. We believe that any amendment to § 103(c) must be understandable, easy to determine and apply, and work to promote simple, predictable, and justifiable outcomes.
We, again, commend you, Mr. Chairman, for your continuing leadership in striving to improve our intellectual property system. The AIPLA looks forward to working with you, the other Members of the Subcommittee, and your able staff to support you in any way we can.