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Focusing the Patent Debate on What Most Needs Fixing

A fair, balanced and effective patent system is indispensible in promoting investment in research and development, job creation, global competitiveness and economic growth — goals that lawmakers from across the ideological spectrum can support. Yet US patent law has not been comprehensively modernized in more than 50 years.

Led by Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) and Ranking Member Chuck Grassley (R-Iowa), the full Senate is now slated to consider the Patent Reform Act of 2011 (S.23). This debate presents an opportunity to forge a new consensus on a reform bill that addresses the most pressing problems with the US patent system as it stands today.

The legal landscape has changed since the Senate took up the patent debate six years ago. Since then, the Supreme Court and Court of Appeals for the Federal Circuit have, through a series of important decisions, provided greater clarity in the law. This has helped curb abuses, rendering some provisions of the current bill unnecessary at this time.

After significant debate among a broad range of stakeholders, BSA believes consensus — and true benefits for inventors of all sizes, across all sectors of the economy — can be now secured by carefully crafting a bill to tackle six key issues:

1.) Funding the US Patent and Trademark Office (USPTO)
The USPTO needs the freedom to set its own fees in order to reduce the time in which patent applications remain pending, enhance patent quality and improve the overall efficiency of the Office’s operations. These user fees, paid by innovators to fund the essential services the USPTO provides, should not be diverted for other government purposes.

2.) “Weeding out” bad patents
A post-grant review system for patents should be established to provide an early opportunity to challenge newly issued patents and thereby improve overall patent quality. Also, the inter partes reexamination process should be made more effective by removing existing disincentives and avoiding new barriers to instituting a reexamination.

3.) Allowing third parties to submit prior art
Third parties should be allowed to submit prior art for the Patent Office to consider in connection with published patent applications that are pending. This opportunity would enlist the public as a partner with the USPTO in promoting patent quality.

4.) Putting an end to the cottage industry of “false-marking” litigation
There has been a rise in aggressive litigation alleging “false marking” of products containing patented inventions. The damages regime for these false-marking cases should be changed to prevent outsized awards where no one has suffered any actual harm. 

5.) Adopting a “first-inventor-to-file” system
The US should join the rest of the world and adopt a “first-inventor-to-file” system.

6.) Non-discrimination between types of inventions
Innovators in the United States increasingly face attempts by foreign governments to restrict the availability of patents in key areas of technology. For many years, US officials have fought against such initiatives, recognizing their impact on US competitiveness. Accordingly, the Senate should reject provisions written so broadly as to ban patenting of any product that contains, for example, a tax-planning feature. Such an exclusion from patentability would invite ill-advised carve-outs from patent protection that would ultimately harm US innovation and competitiveness in the global marketplace.

Much has changed in the last 50 years. It’s time for US patent law to catch up. These six elements can form the basis for much-needed reform.

Robert Holleyman


As President and CEO of BSA | The Software Alliance from 1990 until April 2013, Robert Holleyman long served as the chief advocate for the global software industry. Before leaving BSA to start his own venture, Cloud4Growth, Holleyman led the most successful anti-piracy program in the history of any industry, driving down software piracy rates in markets around the world.

Named one of the 50 most influential people in the intellectual property world, he was instrumental in putting into place the global policy framework that today protects software under copyright law. A widely respected champion for open markets, Holleyman also was appointed by President Barack Obama to serve on the President’s Advisory Committee for Trade Policy and Negotiations, the principal advisory committee for the US government on trade matters.

Holleyman was a leader in industry efforts to establish the legal framework necessary for cloud-computing technologies to flourish. He was an early proponent for policies that promote deployment of security technologies to build public trust and confidence in cyberspace. And he created a highly regarded series of forums for industry executives and policymakers to exchange points of view and forge agreements on the best ways to spur technology advances and promote economic growth.

Before heading BSA, Holleyman was a counselor and legislative adviser in the United States Senate, an attorney in private practice, and a judicial clerk in US District Court. He holds a bachelor’s degree from Trinity University in San Antonio, Texas, a J.D. from Louisiana State University, and has completed the Stanford Executive Program at the Stanford Graduate School of Business.

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