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EDITORIAL: Protect innovation: Legislation being debated by the Senate would weaken the value of patents, which could be harmful to Wisconsin's...
[April 14, 2008]

EDITORIAL: Protect innovation: Legislation being debated by the Senate would weaken the value of patents, which could be harmful to Wisconsin's...

(Milwaukee Journal Sentinel, The (KRT) Via Thomson Dialog NewsEdge) Apr. 14--The idea of protecting American innovation is so central to our national ideals that the authors of the Constitution charged Congress with "securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

But lately, that ideal has run into a logjam at the Patent and Trademark Office. At the end of last year, the office had a backlog of more than 760,000 submissions amid concerns over the quality of some of those submissions.

But a flawed bill under consideration in the Senate is not the answer. Under the guise of "reforming" the patent process, Senate Bill 1145 sides with large technology companies such as Microsoft, Cisco Systems and Apple at the expense of small innovators and academic researchers at institutions such as the University of Wisconsin.

We urge senators to either repair this legislation or table it. The House passed its own version of the bill last fall.

The bill weakens the value of a patent by opening up new avenues for challenge after issuance. While a limited post-grant challenge may make sense, additional kicks at the cat do not.

The bill also would limit the damages that could be collected after infringement, which could encourage theft.

"They might as well infringe and hope you don't sue," says Carl E. Gulbrandsen, managing director of the Wisconsin Alumni Research Foundation, which manages intellectual property for UW-Madison.

WARF also objects to a provision that would require applicants to submit search reports and other information that the Congressional Budget Office estimates would increase the cost of filing for a patent by $5,000 to $10,000.

The bill also would bring the U.S. system in line with international practice by granting patents to the "first to file," instead of the "first to invent." That change may streamline the process by reducing bickering about who had the idea first, but is it consistent with the original intent of protecting intellectual property? The current version of the bill does include a 12-month grace period, which would allow universities, for example, to patent inventions if professors had published information about them before filing for a patent. The bill also would limit "venue shopping" by plaintiffs, which seems reasonable.

But the bill does not address the problem of resources for the patent office. Congress has diverted millions of dollars in patent and trademark application fees from the office in recent years. Sen. Orrin Hatch (R-Utah), who has condemned the diversions, estimates that $750 million was diverted from the office between 1992 and 2004. The first and best thing Congress could do is demand that the cash-starved patent office keep its application fees.

The Senate should send this bill back for a rewrite.

Should the patents and trademark laws be overhauled? If so, how? Send a letter to the Journal Sentinel editorial department

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