By Donald Zuhn —

The Intellectual Property Owners Association (IPO) announced today that IPO President Marc Adler has written a letter to Senator Patrick Leahy (at right), urging the Chairman of the Committee on the Judiciary to delete a provision from the Senate Patent Reform Act (S.1145) that would require applicants to submit "a search report and other information and analysis relevant to patentability."  The IPO President informed Chairman Leahy that IPO members have found this provision to be "particularly problematic."  While conceding that the Applicant
Quality Submissions required under the bill’s provision are supported by the Bush Administration, Mr. Adler noted that such submissions "have attracted little or no support from IPO members and have raised significant opposition."

According to Mr. Adler, the quality submissions provision, if passed into law, would lead to an increase in the number of inequitable conduct charges, which in turn would result in an increase in litigation costs, thereby "deterring innovators from using the patent system to protect new technology."  Mr. Adler added that the Senate bill’s provision codifying the "important to a reasonable patent examiner" standard for materiality in inequitable conduct cases would not resolve the problems raised by the quality submissions provision.

In his letter, Mr. Adler (at right) outlined the IPO’s position that the quality submissions provision would "require applicants to search the prior art in every case before filing their applications."  Mr. Adler explained that while many IPO members perform routine pre-filing searches, such searches "should not be required by law."  In addition, because of the "highly subjective" nature of searches, the manner in which applicants conducted their searches would raise inequitable conduct charges in "nearly every case" if the quality submissions provision were passed.  The IPO President concluded his letter by arguing that the provision’s requirement to characterize prior art identified in mandated pre-filing searches would "force the applicant to act as a patent examiner for his own invention" and "create an even more fertile ground for inequitable conduct charges."

For additional information on this topic, please see:

• "Senate May Act on Patent ‘Reform’ Bill in the New Year," December 2, 2007
• "The Wall Street Journal Gets It Half Right," November 5, 2007
• "BIO CEO Provides Briefing on Follow-On Biologics and Patent Reform," September 18, 2007
• "Patent ‘Reform’ Bill Passes House of Representatives," September 9, 2007
• "San Francisco Chronicle Opines on Patent Reform," August 6, 2007
• "Patent Reform Bill to Be Delayed?" June 12, 2007
• "Senate Judiciary Committee Holds Hearing on Patent Reform," June 10, 2007