Patents: First AIA oversight hearing sparks controversy in Congress



30 May 2012


Members of Congress voiced concerns last month about the transitional business methods programme mandated by the America Invents Act, calling it "gross unfairness" and special interest legislation. The first oversight hearing on implementation of the AIA included testimony by USPTO director David Kappos, intense questioning by members of the House and a panel of stakeholders representing various sectors. To date, seven provisions of the AIA are already in effect, and notices of rulemaking have been published for nine others. Some congress members voiced concern about the business methods review programme, which would allow business methods meeting certain criteria to be challenged and reviewed by the USPTO under a special process. The intent is to weed out weak patents in this area, which many say are common. But Congresswoman Maxine Waters of California, who voted to strike the section relating to covered business methods from the bill, said that the provision blatantly favours the financial services industry at the expense of innovation. She and others fear that the provision is so broad as to put all financial-related inventions at risk, discouraging innovation in the area and disproportionately benefiting financial services companies, who will avoid having to license the technology.

Japan

Key patent reforms take effect. Practitioners have welcomed changes to Japan's patent laws. Key changes include limiting the effects of parallel proceedings in District Court and the Patent Office; simplifying procedures for rights owners by allowing unregistered licensing agreements to remain valid if the licensor transfers ownership of the patent; and barring defendants from recovering licensing fees they have already paid if a patent is invalidated.

Germany

Motorola wins injunction in Germany. A court in Mannheim has granted Motorola an injunction against Microsoft's Windows 7 and Xbox 360. Microsoft says its business in Germany will continue as usual since Motorola cannot yet act on the decision. Microsoft will be able to prevent the enforcement of the injunction if it can convince the Karlsruhe court of the merits of its case in litigation awaiting decisions in its home city of Seattle.

US

Facebook and Microsoft strike patent deal. Facebook and Microsoft have concluded a deal in which the social network will pay Microsoft $550 million in cash for a portion of its recently purchased patent portfolio from AOL. Under the agreement, Facebook will own about 650 AOL patents and patent applications that will then be licensed to Microsoft. Microsoft will keep about 300 AOL patents and patent applications, and a licence to the 300 patents AOL did not sell.

EU

New industry group launched. Ideas Matter, a new industry association that aims to improve awareness and counter the negative view of IP, was launched last month in Brussels. The group has 18 members so far, including Microsoft, NBC, SAP and INTA. It has no direct members from the pharmaceutical industry, but includes the International Chamber of Commerce's BASCAP initiative, which has pharma and consumer retail members.

The US Federal Circuit last month affirmed the denial of a preliminary injunction against Samsung for products relating to three Apple patents, but remanded a decision on Apple's design patent on the iPad.

The ITC in late April ruled that Apple violated a Motorola patent found in iPods and iPhones.

Bayer has appealed a decision by India's Controller of Patents to grant a compulsory licence over its cancer treatment drug sorafenib.

The US Supreme Court has ruled that generic manufacturer Caraco Pharmaceutical Laboratories may bring a counterclaim to correct brand manufacturer Novo Nordisk's use code with the FDA.

A court in Zhejiang province has upheld a decision against a Chinese company infringing Dyson's design patent for a bladeless fan.

In counter-counterclaims filed last month, Yahoo! took issue with eight of the 10 patents Facebook asserted in counterclaims on the grounds that they came from non-practising entities.

In Kappos v Hyatt, the US Supreme Court said there are no limits beyond those specified for all litigation on a patent applicant's ability to introduce new evidence when appealing a USPTO decision in a civil appeal.


More from the Managing IP blog


June 2013

The Madrid Protocol comes of age

India’s accession means the Madrid Protocol now covers more than two-thirds of the world’s population. Is this the tipping-point for the international trade mark system, and what reforms are needed? Emma Barraclough, James Nurton and Alli Pyrah report



Most read articles

Poll

Following the US Apple v Samsung trial, do you think juries should play a role in patent cases?







Supplements

Change font size: Switch to default font size Switch to medium font size Switch to large font size
Back to top

The material on this site is for financial institutions, professional investors and their professional advisers. It is for information only. Please read our Terms and Conditions and Privacy Policy before using the site. All material subject to strictly enforced copyright laws. © 2013 Euromoney Institutional Investor PLC. For help please see our FAQ.