By
Donald Zuhn —

On
Monday, a group of 56 companies sent a letter to Secretary of Commerce Gary
Locke (below) urging the Secretary "to push for improvements" to the
post-grant and inter partes examination
provisions of patent reform legislation currently before Congress.  The Seattle PI's Microsoft blog published a copy of the letter
on Wednesday in an article entitled "Tech cos. protest patent reform in
letter to Locke."

In
the letter, the group acknowledges that "some versions of the legislation
have been improved this Congress," but asserts that "additional
improvements are in order to ensure that the end product avoids serious
unintended consequences." 
According to the signatories, the "two most contentious issues in
the patent reform debate relate to patent damages and the expansion of
administrative challenges to patent validity."  With respect to the first issue, the letter commends the
Senate for resolving the patent damages issue by introducing a
"gatekeeper" provision, and urges Secretary Locke to support that
approach (see "Senate Judiciary Committee Holds Hearing on Patent Reform"
and "Senate 'Patent Reform' Bill (S. 515) Voted out of Judiciary Committee").  The group states that "[a]ny
effort to go back to previous [damages] proposals will, in our view, endanger
the entire patent reform effort."

With respect to the second issue, however, the group predicts that post-grant review and
inter partes examination provisions
in the current legislation "will have serious negative consequences which
must be considered."  The
letter notes that these provisions will put additional strain on an already
burdened Patent Office, and contends that "[a]dding new obligations to the
agency at this time seems extraordinarily unwise."  If the current provisions are passed
into law, the group foresees "longer patent pendency and lower patent
quality."  In addition, the
signatories contend that such provisions would be "vulnerable to a high
level of abuse" by "allow[ing] infringers to subject valid patents to
lengthy and repeat challenges." 
In support of its contentions, the group cites a November 2007 article co-authored by Yongshun Cheng (former Senior Judge and Deputy Presiding Judge of
the Intellectual Property Division of Beijing High People's Court) and Li Lin,
which concluded that the patent reform bill passed by the House in September
2007 "is friendlier to the infringers than to the patentees in general as
it will make [U.S.] patent[s] less reliable, easier to be challenged and
cheaper to be infringed" (see
"Chinese IP Judge Discusses Implications of U.S. Patent Reform Bill and
Two Congressmen Heed Warning").

The
group contends that abuse of the post-grant review and inter partes examination provisions "will be harmful to
American innovators who rely on strong patents," and therefore, urges
Secretary Locke "to push for improvements to these provisions which will
limit the ability of infringers to undermine the very system the legislation
attempts to strengthen."

The 56 signatories to the letter include:  Abbott Medical Optics Inc.; Acclarent, Inc.; Acorn
Cardiovascular, Inc.; Allergan Inc.; Applied Medical; ARCH Venture Partners; Ardian,
Inc.; Asthmatx, Inc.; ATS Medical; Aware, Inc.; Biomerix Corporation; Calibra
Medical; Carticept Medical, Inc.; Conceptus, Inc.; Corning Inc.; Cryptography
Research, Inc.; Cummins-Allison; Cyberonics; Digimarc Corp.; Dolby Laboratories;
Dynatronics Corp.; Elemé Medical Inc.; Evalve, Inc.; ExploraMed Development,
LLC; Fallbrook Technologies Inc.; The Foundry, LLC; ForSight; ForSight VISION3;
ForSight VISION4; GeneEx, Inc.; Ikaria Holdings, Inc.; InterDigital, Inc.; Intermolecular;
Medigroup Inc.; Miramar Labs, Inc.; Mohr Davidow Ventures; Monsanto; Moximed,
Inc.; NeoTract, Inc.; NeoVista, Inc.; Neuro Resource Group, Inc.; NeuroPace,
Inc.; Nims, Inc.; Novasys Medical; Optimum Performance Solutions LLC; OsteoMed;
Paracor Medical, Inc.; PolyRemedy, Inc.; Qualcomm Inc.; Streamline; Tessera; TherOx;
Transonic Systems Inc.; Urovalve Inc.; U.S. Venture Partners; Venture Investors;
The Vertical Group; Vibrynt, Inc.; and Viryd Technologies Inc.