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Congress may have its eye on some aspects of patent law, but don’t expect the most controversial proposals by the Federal Trade Commission to reform the patent system to be taken up any time soon. In fact, if history is any guide, it may take several years for major patent legislation to wind its way through Congress. “The implementation of any patent legislation I’ve found is very, very slow,” says Margaret Boulware, head of Jenkens & Gilchrist’s IP department and former chair of the U.S. Patent and Trademark Office’s patent advisory committee. “It’s not impact legislation like 9/11. It’s going to be a slower history than the FTC would expect.” The FTC issued a 315-page report Oct. 28 with 10 recommendations on how to improve patent quality through legislation or regulatory measures. While most expect Congress to maintain its glacial pace on the more controversial proposals, a few pieces of the FTC program could be implemented within the next year, members of the patent bar say. “The most imminent is H.R. 1561,” the bill to increase funding for the U.S. Patent and Trademark Office, says Q. Todd Dickinson, the former head of the patent agency. The legislation cleared the House Judiciary Committee in July. Dickinson says several of the FTC’s recommendations are included in the patent office’s 21st Century Strategic Plan, including a procedure for further review of patents after they have been granted. And other proposals would refine provisions of the 1999 law that overhauled the patent system. That law, the American Inventors Protection Act, took about five years to clear the House and Senate. One provision required patent applications to be published 18 months after filing if an application was pending in a foreign country. The FTC calls for extending that notification to applications that are pending solely in the United States. Another FTC proposal to limit the award of treble damages for willful infringement is already being addressed by the U.S. Court of Appeals for the Federal Circuit. The court is reviewing its previous policy that effectively requires parties to waive attorney-client privilege to defend against claims of willful infringement. Herbert Wamsley, head of the Intellectual Property Owners Association based in Washington, D.C., says PTO funding, post-grant review procedures, publication of patent applications, and willful infringement reform could be tackled immediately by Congress. “I hope they could be passed before the end of 2004,” he says. The FTC’s most significant and controversial proposal, patent lawyers say, calls for legislation to ease the burden of proof required to invalidate a patent from a “clear and convincing evidence” standard to a “preponderance of the evidence.” And that may be the least likely to win a congressional sponsor. “That would be perceived by the patent community as a hot-button issue, and I think there would be a big, old, bloody fight over that,” says Mark Janis, an intellectual property professor at the University of Iowa College of Law. Janis says that battle took place 20 years ago when legislation creating the Federal Circuit U.S. Court of Appeals was enacted. The court, which handles all patent appeals, was intended to bring uniformity to patent law. And one area at issue was the presumption of a patent’s validity. “The subtext of the past debate was that people wanted a strong application of the presumption of validity,” Janis says. “That was a problem in the 1960s, 1970s, and early 1980s.” — Brenda Sandburg

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