STRONG Act – or to give its full title, the
Technology and Research for Our Nation’s Growth
Patents Act –
introduced by Senator
Chris Coons (right) this
week has quickly divided
organisations including the BIO and the Association of American
Universities praised the bill. But those that have long
advocated broad reform were dismayed.
example, criticism was quick to come from United for Patent
Reform ("provisions of the legislation will actually worsen the
current inequities in the patent litigation system that allows
patent trolls to thrive and victimize American businesses large
and small") and
the Consumer Electronics Association ("appears less like
real patent reform and more like a patent troll-led effort to
draft a 'fig-leaf’ bill for senators to sign on to
so they can pretend they are supporting patent reform, while
shielding the legalized extortion of the patent trolls").
Perhaps more importantly, the introduction of the STRONG Act
suggests it will be no easy task to get reform passed this
Scott McKeown noted on the PatentsPostGrant blog that Hill
chatter had suggested the House support of the Goodlatte bill
had dwindled since it was passed in 2013. He said the
introduction of the STRONG Act suggested an even greater threat
to further patent reform being passed this
if you expected the Goodlatte Bill to
sail through the House for swift passage through the Senate,
forget about it," McKeown
said in a blog
response has been swift and damning among those
advocating sweeping patent reform. Not only is this bill not
what they want, it is the opposite of what they
STRONG Act proposes clamping down on demand letters. The goal
of this is hard to argue with whatever side of the debate on
which you stand, although those advocating for broader reform
would not want to settle for just this. The bill also removes
the fee shifting provision in the Goodlatte Bill, and key part
of the bill for reform supporters. This is a much bigger bone
of contention. These two areas are common talking points on
proposed patent reform.
Taking aim at the
out of leftfield, however, the STRONG Act also proposes a
radical overhaul of Patent Trial and Appeal Board (PTAB)
noted: "More importantly, the Senate Bill adds a multitude of
proposed changes to AIA trial proceedings that will have patent
abusers dancing in the streets – the Bill is more
aptly titled the 'Support Trolls & Reverse Our Nation's
Progress under the AIA Act of 2015’."
added: "While this legislative grenade may not have much chance
ever seeing the light of day, it is surprising that such
misguided proposals would be seriously offered in the first
the PTAB changes, the bill appears to propose that the first
amendment be granted as a matter of right.
would eliminate the broadest reasonable interpretation standard
for claim construction. A Philips claim construction would be
applied in AIA trials along with a presumption of validity to
issued claims, and a clear and convincing evidentiary standard
is, the PTAB will be applying two separate standards of
patentability at the same time," said McKeown. "Yes, you heard
me right. Philips construction, presumption of validity, clear
and convincing evidence. Sound familiar?"
addition, preliminary responses are proposed to include
evidence, with the petitioner able to respond with a reply.
This would increase the burden on the already-stretched Board.
To make matters even worse, the bill also mandates different
panels be used for the institution determination and the actual
and this is my favorite, if a reissue or reexamination is
pending (where none of the heightened standards above would
apply), there can be no IPR/PGR," said McKeown. "So, if you are
a patent troll, you simply file a Tanaka reissue before every
licensing campaign. For the cost of a few thousand dollars a
year you can effectively keep your patent out of the PTAB.
What's not to like about that type of legislative
said the bill is basically the entire patent
trolls’ wishlist. "These proposals would
eviscerate 2+ years of progress under the AIA," he said. He
noted that the proposals come at a time when the PTAB is likely
to make some amendments to its practices anyway.
are worried about the bill’s effect on the PTAB as
well. The Electronic Frontier Foundation (EFF) objected to the
bill barring groups like itself from challenging patents at the
PTAB, labelling it a "prime example of weak reform".
bill states patents can only be challenged by companies that
have been sued or "charged with infringement".
ability for public interest groups like us to do so is critical
– patent owners could otherwise craft their demands to
make it less worthwhile or feasible for any one accused party
to challenge a patent," said
the EFF in a blog
post. "Affected individuals – podcasters,
for example – simply don't have the resources to
dispute the patents themselves."
everyone was unhappy at the suggested PTAB changes, however.
Pro-patent group the
Innovation Alliance said the
bill would "maintain
the low-cost and expeditious nature of post-grant proceedings
at the US Patent and Trademark Office (USPTO)". The Alliance’s
members include Dolby, InterDigital and
STRONG Act pulls off the impressive feat of scaring some of
those who are opposed to the Goodlatte bill.
summed up: "There
is much wrong with the over-reaching of the Goodlatte Bill.
But, if the Senate is trying to prove that it can come up with
the most ill conceived ideas....game, set and match!"