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“Views on the New (or Pending) Patent Reform Legislation”

AIPLA Annual MeetingOctober 18, 2007

Gary L. GriswoldPresident and Chief Intellectual Property

Counsel3M Innovative Properties Company

Chair, Steering Committee of the Coalition for 21st Century Patent Reform

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Patent Reform Act of 2007

318 Industries Represented

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NAS Report (April 2004) – “A Patent System for the 21st Century” 7 recommendations

1. Preserve Unitary, Flexible Patent System2. Reinvigorate Non-Obviousness Standard3. Institute Open Review (Post-Grant) Procedure4. Strengthen USPTO Capabilities5. Provide Research Exemption6. Modify or Eliminate Subjective Elements of

Litigationa) Inequitable Conductb) Best Modec) Willful Infringement

7. Foster Harmonization

The Playbook

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But landscape is changing…

The Supreme Court, Federal Circuit and PTO Have Jumped In

Injunctions eBay

DJ Jurisdiction MedImmune

271(f) Microsoft

Obviousness Standard KSR

Willful Infringement Seagate

PTO Claims & Continuation Rules…

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2007: Bicameral and Bipartisan

H.R. 1908, S. 1145 “Patent Reform Act of 2007” Introduced April 18, 2007 Sen. Leahy (D) and Rep. Berman (D),

each with numerous original co-sponsors

Chairman Leahy

Senator Hatch

Chairman BermanCongressman Smith

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Key Provisions

HR 1908 S 1145

Passed Sept. 7, 2007

220-175

Mark-Up July 19, 2007

First-Inventor-To-File

Post-Grant

Inequitable Conduct

Best Mode

Willful Infringement

Damages

Venue

Interlocutory Appeals

Substantive Rulemaking

Applicant Responsibilities

3rd Party Submission of Prior Art

Fee Setting Plus No Diversion

Publication After 18 Months Conceptually Unacceptable

Amendments Needed

OKIncluded

Not Included

(NAS)

(NAS)

(NAS)

(NAS)

(NAS)

(NAS)

(NAS)

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The Players

NAS Focused Coalition for 21st

Century Patent Reform

Innovation Alliance Universities PhRMA BIO

Defense Focused Coalition for Patent

Fairness Business Software

Alliance Generic Drug Industry Financial Services

Roundtable

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Weighing In Chief Judge Paul Michel Administration ABA-IPL Section AIPLA IPO NAM AFL-CIO Communication Workers United Steel Workers Independent Inventors Venture Capital Medical Device Manufacturers Association

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Message from Senators

“I have friends on both sides and I always vote in support of my friends.”

“Please work this out.”

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Negotiations

BermanPre Mark-Up Post-Grant

Specter/Feinstein Process August to Present

Damages Coalition for 21st

Century Patent Reform Innovation Alliance Coalition for Patent

Fairness BIO Univ. of California Financial Services AAU

Leahy/HatchSeptember 24, 2007

All Issues Coalition for 21st Century

Patent Reform Innovation Alliance Coalition for Patent Fairness PhRMA BIO Financial Services AAU Venture Capital InterDigital Cisco GE Intellectual Ventures Motorola IBM Microsoft

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Key Provisions

HR 1908 S 1145

Passed Sept. 7, 2007

220-175

Mark-Up July 19, 2007

First-Inventor-To-File

Post-Grant

Inequitable Conduct

Best Mode

Willful Infringement

Damages

Venue

Interlocutory Appeals

Substantive Rulemaking

Applicant Responsibilities

3rd Party Submission of Prior Art

Fee Setting Plus No Diversion

Publication After 18 Months Conceptually Unacceptable

Amendments Needed

OKIncluded

Not Included

(NAS)

(NAS)

(NAS)

(NAS)

(NAS)

(NAS)

(NAS)

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We are the stewards of the Patent System

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Thank you

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Post-Grant [Senate Bill]

Serial attacks for the life of the patent.

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Inequitable Conduct Reform[Both Bills] This is a patent quality issue. Codifies - does not fix. The PTO Rule Changes have made

Inequitable Conduct Reform even more necessary.

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Damages The wrong comparison at the wrong time.[Both Bills]

“Claimed Invention’s specific contribution over the prior art.”

If not marked - 2, not 6, years of past damages.[Senate Bill]

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Venue [Senate Bill]

Takes away the right for traditional research, development and manufacturing companies to sue where they do those activities.

Allows foreign entity infringers to forum shop.

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Applicant Responsibilities[Both Bills] Mandatory search & analysis would

add an average of more than $4200 to costs of filing a patent application (AIPLA Report of the Economic Survey 2007)

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