By Dennis Fernandez, Esq.,
Fernandez & Associates, LLP. 

Feb. 4, 2008 | In light of recent court decisions and proposed policy changes affecting U.S. patent law, U.S. patents may no longer provide patentees with the worthwhile protection originally afforded to inventors under the legal system as an incentive and in exchange for time and resources invested in innovation.

1.   There is no longer any guarantee of exclusive patent protection. 
 
According to the U.S. Supreme Court in the recent eBay v. MercExchange case (involving eBay's infringement of MercExchange's patented technologies for both online auctions and a direct-buy system), there is no longer any assurance that rightful owners of valid U.S. patents have any legal right to prevent unlawful trespassers from infringing their patents.  In particular, the eBay case specifically held that mere patent owners (e.g. non-practicing inventors or university researchers) cannot automatically assume they have any legal power to litigate against proven infringers to seek injunctive relief to block unlawful trespass.
 
2.   There is no longer current assurance of reliable patent licensing.
 
Recently, again according to the U.S. Supreme Court in the MedImmune v. Genentech case (in which MedImmune, a licensee of a drug patent owned by Genentech, was able to bring a declaratory judgment action challenging Genentech's patent without exposing itself to liability by breaching the license agreement), a patent owner who licenses his or her patents via legally-binding patent license agreements can no longer prevent the licensees of these valid patent license agreements from then suing the patent owner to challenge the validity of the patents; and in the meantime, these licensees can still receive the benefit of the licensed patent rights.
 
3.  An inventor cannot seek patent protection for "merely a combination of old elements."
 
And, more recently, according to the U.S. Supreme Court in the KSR International v. Teleflex case (in which the court overturned a 24-year precedent and held that Teleflex's gas pedal patent should be invalidated because the combination of two features of the invention is obvious), despite many years of legal practice well settled to the contrary by the U.S. Patent Office and the federal courts, one can no longer expect to obtain a U.S. patent for an invention that is "merely a combination of old elements" even if the Patent Office cannot show after substantive examination of the patent application that there is no teaching, suggestion or motivation in the prior art to make such inventive combination of elements.
 

4.  Increased damages are now extremely difficult to sanction against willful infringers.
 
In the recent In re Seagate Technology, LLC case (which reduced the likelihood of finding willful infringers by easing alleged infringers' affirmative duty to exercise due care in determining whether they were infringing once they had notice of a patent owner's rights), infringers who receive prior written notice to warn them against their continued willful trespass of one's patent rights are no longer held liable for paying multiple damages, unless the patent owner can meet the difficult standard of showing clear and convincing evidence that the infringer exhibited "objective recklessness."
 
5.  The situation is only getting worse for patent proponents.
 
The U.S. Patent Office is now seeking to dramatically limit the ability of patent applicants to continue to prosecute related patent applications via continuation application practice, and to substantially limit the number of patent claims that patent applicants could previously rightfully include together in a single patent application.   Furthermore, Congress is working hard to reform the U.S. patent laws to significantly reduce the reasonable royalties that a patent owner may recover as minimum remedies from guilty trespassers.
 
All the above recent changes to U.S. patent law have undermined patent owners' ability to derive value from their patents, severely weakening a system that previously encouraged inventors to innovate and publicly disclose their inventions. Without adequate reform returning rights to patent owners, the practice of applying for U.S. patents may soon no longer be worthwhile.

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