Jon Dudas, Undersecretary of Commerce for Intellectual Property and director of the U.S. Patent and Trademark Office (USPTO) will host an open forum March 27 at UNLV from 2:30-4:00 p.m. Topics will include:
- Intellectual property in the U.S. and global economy
- USPTO perspective on patent reform legislation
Special guest is Mike Castellano, Counsel & Senior Policy Advisor, Office of U.S. Senator Harry Reid. The event is sponsored by the UNLV Office of the Vice President for Research, Dean of the Graduate College and UNLV Office of General Counsel.
LOCATION: UNLV Stan Fulton Bldg., Salon 130A, 801 E. Flamingo Rd. in Las Vegas. RSVP to Elda Sidhu: elda.sidhu@unlv.edu.
Technorati Tags: Jon Dudas, U.S. Patent and Trademark Office, UNLV, Mike Castellano, U.S. Senator Harry Reid
As a small inventor I might concur that our patent system is in need of some reform, but I am very concerned that the bill in its present form picks winners and losers among industries with different business models in a way that has never before been attempted in patent law or practice.
Sen. Jeff Sessions (R-Ala.) has sponsored an unusual provision at the urging of the nation’s banks granting them immunity against an active patent lawsuit, potentially saving them billions of dollars. The amendment would prevent a small Texas company called DataTreasury from collecting damages from banks for infringing on its patented method for digitally scanning, sending and archiving checks. The provision introduced by Sessions did not name DataTreasury but was carefully tailored to apply to that company and its “check collection” system. The patents were upheld last summer by the U.S. Patent and Trademark Office after they were thoroughly challenged.
Justification of the Sessions Amendment seems to be that the Check 21 Act forced the banks to adopt new check processing procedures with the innocent banks (who were merely complying with government regulation) thereby finding themselves opportunistically and indiscriminately sued for infringement by a“patent troll.” This view, however, fails to recognize that:
1). The (Data Treasury) patents in question were filed years before the Check 21 Act.
The Data Treasury patents have withstood the best legal challenges the banks could buy, and that some of the more responsible banks have admitted the validity of the patents by licensing them. And every entity that has been sued almost surely had opportunity to negotiate a license before being sued.
2). The Check 21 Act legalized “Check Imaging” and does not force Banks to comply with its usage. Banks remain free to process checks the old way or themselves invent a non-infringing new way or license use of the Data Treasury roadmap for a modest portion of the savings it offers. Nothing in the Check 21 Act requires banks infringe the Data Treasury patents.
3). Check 21 made it possible for the banks to dramatically reduce check clearance costs, relative to then current processes. Check 21 was opportunity, not burden!!
4). Immunity would be secured through government compensation to DataTreasury, which would in effect force taxpayers to finance the cost of patent infringement on behalf of banks, to the tune of approximately $1 billion +, according to the Congressional Budget Office. Scarcely any plausible justification has been given.
Any idea that the Sessions Amendment is justified as “relief” is simply preposterous. It is no more or less than the financial lobby buying a “Get out of Jail Free” card from congress and appears to be far less like meaningful reform and much more like a license for infringers to steal.
Overall, this bill with this Amendment is a great disservice to the small technology companies and independent inventors that drive American innovation. Reforms are needed. But this Bill, with or without Sessions, should go back to committee in a Congress with an enlightened heart.