The Pace of Progress: The Changing Patent Landscape
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The U.S. patent system is broken, says a growing chorus of critics,
and the past year has seen significant attempts to fix it
in all three branches of the U.S. government. Although it
is impossible to predict exactly how these efforts will
play out, current trends toward reform could have profound
effects on patent practice—and patent translators.
A variety of factors have combined to produce this general
commotion. Senator Patrick Leahy, who became chairman of
the Senate Judiciary Committee after the November 2006 election,
lists patent reform as a top priority, making it more likely—though
by no means certain—that this year’s legislation
could succeed where its predecessors have failed. Representative
Howard Berman, now chairman of the House Judiciary Subcommittee
responsible for intellectual property, also supports reform
as a way to “improve patent quality, deter abusive
practices by unscrupulous patent holders, and provide meaningful,
low-cost alternatives to litigation.” On April 18,
bipartisan legislators in both the House and Senate introduced
the Patent Reform Act of 2007, which proposes a number of
Meanwhile, the Supreme Court has displayed an unusual interest
in patent law over the past two terms, issuing a series
of high-profile decisions likely to affect both patent attorneys
and their translation providers. Finally, the U.S. Patent
and Trademark Office (USPTO), staggering under a growing
backlog of applications and widespread complaints of poor
patent quality, has announced a pilot program that will
throw open the examination process to a Wikipedia-style
community of reviewers.
Congress: Lower Costs, More Predictability
Critics of the current system charge that the bar for patentability
is set too low, arguing that many patents granted by the
USPTO are invalid, and that poor patent quality has fueled
runaway litigation. They also complain that patent litigation
is too costly and unpredictable, largely because the current
system contains a number of subjective and discovery-intensive
features such as the first-to-invent rule.1 If enacted,
the Patent Reform Act of 2007 would address these concerns
through a number of significant changes, two of which are
particularly worth noting.
First to file
Under the new legislation, the U.S. would replace its first-to-invent
system, the only one of its kind in the world, with a first-to-file
paradigm. Although this represents sweeping change for the
system as a whole, its effect on translators working in
patent prosecution would probably be minimal, says Charles
Van Horn, a partner and head of Patent Prosecution at Finnegan,
Henderson, Farabow, Garrett & Dunner, the world’s
largest intellectual property-only law firm. Veteran patent
translator Nicholas Hartmann agrees. “Most of the
material I deal with has been filed in Europe and is already
nailed to a foreign priority date,” he notes.
Even for translators working in patent litigation, the adoption
of a first-to-file system may not have much impact—a
counterintuitive idea, since one reason for the change is
to reduce the scope and cost of discovery by eliminating
disputes over which party was first to invent. “The
first impression is that a first-to-file system would reduce
the need to translate [inventor’s] notebooks,”
says Anthony Hartmann, a patent litigator with Finnegan
Henderson. “However, the scope of discovery would
likely still embrace notebooks,” since they would
be essential for litigating other issues, and both parties
would still need to know what was being produced.
The Patent Reform Act of 2007 also creates a post-grant
review proceeding that would allow anyone to challenge a
patent’s validity within 12 months of issue. Proponents
argue that post-grant review would help weed out weak patents,
raising patent quality and offering a faster, less expensive
alternative to litigation—and quite possibly reducing
business for patent litigators and the translators who work
with them. Critics counter that the change would undermine
the statutory presumption of patent validity without addressing
more important problems in the examination process. The
overall impact for translators is not clear, though reexamination
proceedings offer a basis for comparison. “Most foreign
reexamination clients come with their documents already
translated into English,” notes Anthony Hartmann,
“but if time pressure is an issue, a client could
have the law firm handle translation.”
Clash of the Titans
Critics are already warning of unintended consequences,
but it remains to be seen whether the Patent Reform Act
will ever become law. With billions of dollars at stake,
the information technology (IT) and pharmaceutical industries
have already begun to square off on opposite sides of the
debate. Having invested years of research and development
in a small number of highly profitable blockbusters, pharmaceutical
companies want the strongest possible patent protection,
while the IT industry seeks greater freedom to challenge
patents and more protection against paying large damages,
especially for unintended violations.
The Supreme Court: Higher Costs,
To complicate the picture further, legislative efforts toward
change may be countered by the judicial branch. Even as
patent reform advocates in Congress work for more predictability
and lower costs, recent Supreme Court decisions may have
exactly the opposite effect.
For most of the past 25 years, the Court of Appeals for
the Federal Circuit was the final arbiter for patent matters,
but over the past two terms, the U.S. Supreme Court has
displayed an unusual interest in intellectual property.
In 2006, the justices decided or agreed to hear no fewer
than seven patent cases, making it the busiest year for
patent law since the mid-1900s; and the high court’s
interest in patents continued in the first half of 2007.
Two cases in particular are worth noting.
Goodbye, Automatic Injunction
The Supreme Court’s ruling in eBay Inc. v. MercExchange,
handed down in May of 2006, could have a significant
impact for both attorneys and translators. Prior to this
decision, a plaintiff that prevailed at trial could virtually
count on getting a permanent injunction forcing the defendant
to stop making and selling the infringing product. Under
eBay, however, the plaintiff must now show that
it meets a traditional four-factor test to obtain injunctive
Translators who work in patent litigation
are accustomed to regular peaks and troughs in demand over
the life of a case: demand is high during discovery, usually
peaks again during depositions and shortly before trial,
and then disappears unless there is an appeal. However,
a session at an American Bar Association (ABA) conference
in April featured a mock argument, complete with a district
court judge and four attorneys, showing how the four-factor
test prescribed by eBay could be argued during
a post-verdict hearing. While the long-term impact of eBay
is not yet clear, the ABA panelists saw potential for
a whole new round of discovery, expert testimony, and even
depositions after trial. This in turn could create
a new area of demand for translation and interpreting in
cases involving foreign-language documents. At the very
least, the eBay decision adds a whole new variable
to patent litigation, and the net effect for patent holders
seems likely to be higher costs and more unpredictability,
at least in the short term.
So Long, TSM
In KSR International Co. v. Teleflex Inc., issued
in May of this year, the Supreme Court added another dollop
of unpredictability by rejecting a test for obviousness
that had been used by the Federal Circuit for most of its
25-year history. Under the teaching-suggestion-motivation
(TSM) test, a patent could only be rejected as obvious if
a challenger showed that the prior art contained a teaching,
suggestion, or motivation that would have prompted a person
skilled in the art to combine existing products. In KSR,
however, the Supreme Court found the TSM test to be too
rigid and narrow and adopted a new, more flexible standard
Observers quoted in Legal Times4 said that the
case-by-case approach endorsed by the high court could “increase
litigation and the cost of obtaining a patent in the first
place,” since examiners would now have a freer hand
to reject applications as obvious, and that the more flexible
standard could “impair the value of previously issued
U.S. patents, since it is easier to challenge them in litigation,
and to ask the patent office to reconsider the decision
to issue.” It is still too early to say exactly how
KSR will affect translators and their attorney
clients, but once again higher costs and more unpredictability
The USPTO: Wikipedia-style
In yet another move toward reform, the USPTO has announced
plans for the Peer to Patent project, an experimental effort
to improve patent quality by creating a global community
of Wikipedia-style reviewers to help patent examiners
focus their search for relevant prior art. At press time,
the pilot was slated to launch in mid-June and run for 12
to 18 months.
A number of companies—including such
heavy hitters as Microsoft, Intel, Hewlett-Packard, Oracle
and IBM—have already volunteered to have some 250
patent applications reviewed by the Peer to Patent community.
According to Rahan Uddin, project manager for Peer to Patent,
anyone with expertise in the area of the invention can comment
on the applications and upload relevant prior art to an
online forum. These postings can then be reviewed by other
visitors, who can rate them for relevance and reliability
and post their own comments and information. Ultimately,
the top 10 items for each application will be forwarded
to the examiner at the USPTO, who will make the final decision
Peer to Patent proponents say that it will improve patent
quality by giving examiners a manageable amount of relevant
information that they cannot easily find under the present
regime. Skeptics counter that the review process will depend
largely on volunteers. Though reviewers will be eligible
for prizes and other incentives, they will receive no monetary
compensation: their real reward, says Uddin, will be opportunities
to network, exchange ideas with their peers, and win notice
for their own expertise.
But How Will They Talk to Each Other?
With the review process open to anyone in the world, The
ATA Chronicle naturally wondered what provision had
been made for translation, and contacted Beth Noveck, a
New York Law School professor and one of the chief architects
of the project, to find out. “The software is configured
to handle multiple character sets,” she said. “However,
we do not have any technical capacity at present to handle
translation. We are going to rely on the community of users
to assist with translation during the pilot stage.”
In short, foreign-language material will be translated by
bilingual volunteers who may or may not have translation
credentials or expertise.
This raises a number of questions. How will reviewers judge
the quality of translations posted to the forum? Will they
evaluate the quality of translated material before the examiner
considers it? Will the USPTO have translated material vetted
by its in-house translators before the examiner uses it
to decide on patentability? Have the developers made any
effort to guard against malicious or deliberately distorted
“These are excellent questions, and this is the first
time anyone has raised them,” Noveck replied. Although
the developers considered using translation software, they
decided to keep the pilot simple and address translation
later. Noveck adds that she expects to explore both human
and machine translation options as the project scales up,
and that she hopes to involve the translation community
as the project develops.
The Right Part of the Haystack
Noveck seems realistic about the limitations of the system.
“We’ll get some poor input, but the goal is
to get material that’s good enough to identify the
right area of prior art,” she says. “Even gisting
or summary of foreign material would be useful” if
it steers the examiner’s search toward the most relevant
part of a huge universe of information.
As with Congress and the Supreme Court, it is difficult
to know exactly how the USPTO’s reform effort will
play out, but it seems certain that over the next year or
two there will be no shortage of entertainment for anyone
interested in patents. Stay tuned.
1. Most countries award patents using the first-to-file
principle, i.e., the first person who files a patent application
on a given innovation is entitled to the patent, even if
someone else invented it first, but got to the patent office
later. The U.S. currently has a first-to-invent system,
which awards the patent to the earlier inventor even if
she filed her application later.
2. “According to well-established
principles of equity, a plaintiff seeking a permanent injunction
must satisfy a four-factor test before a court may grant
such relief. A plaintiff must demonstrate: 1) that it has
suffered an irreparable injury; 2) that remedies available
at law, such as monetary damages, are inadequate to compensate
for that injury; 3) that, considering the balance of hardships
between the plaintiff and defendant, a remedy in equity
is warranted; and 4) that the public interest would not
be disserved by a permanent injunction.” eBay
Inc. v. MercExchange L.L.C., 126 S. Ct. 1837, 1839
(2006). For the full opinion, visit www.supremecourtus.gov/opinions/05pdf/05-130.pdf.
3. For the full text of KSR Int’l
Co. v. Teleflex Inc., visit www.supremecourtus.gov/opinions/06pdf/04-1350.pdf.
4. For the full text of the Legal Times
article, visit www.law.com/jsp/dc/PubArticleDC.jsp?id=1177936771033.
For More Information
If you would like to follow developments in patent law for
yourself, the sources below are a good start.
American Bar Association (ABA)
Anyone interested in law can join the ABA as an associate
member. Membership benefits include a subscription to the
ABA Journal, discounts on conference registrations,
and an optional subscription to an electronic newsletter.
ABA also has a Section of Intellectual Property Law (ABA-IPL).
ABA-IPL has its own newsletter and conferences targeted
to patent, trademark, and copyright issues. Conference fees
are discounted for IPL Section members. For the 2007-2008
membership year, ABA’s annual associate dues are $175,
and membership in ABA-IPL is $75. Both ABA membership and
attendance at ABA conferences are eligible for credit under
ATA’s Continuing Education program.
to sign up for law.com’s Daily Legal Newswire,
a free digest of news and feature stories from the legal
press delivered every day to subscribers via e-mail. News
items range from noteworthy appellate and Supreme Court
decisions to trends in the legal market to high-profile
trials and scandals, and coverage includes significant developments
in intellectual property (IP) law. A newswire service targeted
specifically to IP law is also available for a fee ($129
a year as of May 2007).
The New York Times (www.nytimes.com),
The Washington Post (www.washingtonpost.com),
and The Wall Street Journal (http://online.wsj.com/public/us)
occasionally provide excellent in-depth coverage of patent
There are a number of law blogs (or “blawgs”)
that focus specifically on IP and patents. Many are hosted
by law firms, and a little Internet surfing will turn up
IP blogs with a variety of perspectives. One interesting
site is www.patentlyo.com.
You can also visit The Wall Street Journal’s law
blog at http://blogs.wsj.com/law
and use the search function to narrow the field to IP topics.
U.S. Patent and Trademark Office
Lillian Clementi is a partner in LinguaLegal, a
translation consultancy based in Arlington, Virginia. She
has worked in patent litigation for 10 years. Contact: lillian[at]lingualegal.com.
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