The association, which represents about 15,000 lawyers and other IP professionals, urged Congress to “take a balanced approach that also continues to encourage innovation” when considering the bill, otherwise known as H.R. 3309.
In the letter, sent yesterday, AIPLA made suggestions including:
· Ensure that Section 3 and Section 6 do not “interfere with the traditional discretion of the courts by avoiding inflexible legislatively mandated rules.” Section 3 would require more transparency in claims and oblige patent holders making claims not “reasonably justified in law and fact” to pay the other party’s attorneys fees.
· Retain Section 9(c), which would require the USPTO to use the same claim construction standard in inter partes and post-grant review as is used by district courts. At present, the USPTO uses the “broadest reasonable interpretation” standard, which is designed to prevent overly broad claims and is less advantageous to patent holders than the standard used by the district courts.
· Rewrite Section 5, which allows courts to stay suits against customers when there is parallel litigation against a manufacturer, so that is “not so overbroad that genuine infringers receive the protection intended for the innocent.”
· Remove Section 9(a), which strikes Section 145 of the AIA. Section 145 allows patent applicants to challenge the USPTO’s refusal of a patent application in district court after appealing to the USPTO’s Patent Trial and Appeal Board (PTAB). (Other potential recourses for applicants include appealing directly to the Federal Circuit under Section 141 or filing a continuation application.)
· Retain Section 9(b), which would strike “or could reasonably have raised” from the estoppel provisions of 35 USC Section 325. AIPLA claims this would encourage those challenging patents to do so in the early stages of the patent term, “when reliance, commercialisation and related investment are likely at their minimum.”
· Give further consideration to other provisions, such as Section 9(d) on double patenting, Section 9(f) on patent term adjustment, and Section 9(g) on clarification of jurisdiction.
AIPLA also said it was disappointed the bill did not “secure full funding” for the USPTO. The organisation has been campaigning to have the USPTO exempted from budget sequestration.