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A Patent On Problems

Publication Date: 
March 01, 2010
ABA Journal
Terry Carter

Professor Mark Lemley, an expert in intellectual property law, is quoted on solving problems in patent law through the court system rather than patent reform litigation.Terry Carter of ABA Journal reports:

When David Kappos was sworn in as director of the U.S. Patent and Trademark Office in August, he must have felt like a pilot brought in midflight to take the controls of an airplane in a tailspin. He said as much not long after.

“The nose of this airplane is pointed down,” he bluntly told a gathering of corporate counsel.


Some of the problems with patent law were created in the courts through the common law, and some believe the courts should fix them rather than have the legislature do so. Chief Judge Paul Michel of the Federal Circuit has been calling on lawyers to bring the thorniest cases before the court even when they believe the law is settled.

The judge gets an agreeing nod from Mark Lemley, the Stanford Law School professor who with Dan L. Burk wrote The Patent Crisis and How the Courts Can Solve It. Their key point is that different industries (e.g., pharma and high-tech) innovate differently, and the patent system needs to accommodate that.

“If you look at the patent reform legislation as first introduced in 2005 and where we are now,” Lemley says, “virtually all the difficult, controversial issues being tackled back then concerning litigation abuse of patents have either been solved or seem in the process of being solved by the courts while Congress was thinking about what to do about it.”

He ticks off several examples, such as limiting injunctions to stop abuse by “patent trolls” with no real interest in the patent, changing the standards for obviousness in determining whether a patent is unique, making it easier to challenge patents through declaratory judgments, changing the rules for willful infringement, and making it easier to remove cases from jurisdictions favored by forum shoppers.

“And most recently the Federal Circuit has come out with a strong opinion on damages,” Lemley says. That opinion calls for district court judges to be more diligent gatekeepers, as does a current legislative proposal.