1. 1 “Views on the New (or Pending) Patent Reform Legislation” AIPLA Annual Meeting October 18, 2007 Gary L. Griswold President and Chief Intellectual Property Counsel 3M Innovative Properties Company Chair, Steering Committee of the Coalition for 21 st Century Patent Reform

2. 2 Patent Reform Act of 2007

3. 3 18 Industries Represented

4. 4 NAS Report (April 2004) – “A Patent System for the 21 st Century”  7 recommendations 1. Preserve Unitary, Flexible Patent System 2. Reinvigorate Non-Obviousness Standard 3. Institute Open Review (Post-Grant) Procedure 4. Strengthen USPTO Capabilities 5. Provide Research Exemption 6. Modify or Eliminate Subjective Elements of Litigation a) Inequitable Conduct b) Best Mode c) Willful Infringement 7. Foster Harmonization The Playbook

5. 5 But landscape is changing… The Supreme Court, Federal Circuit and PTO Have Jumped In Injunctions  eBay DJ Jurisdiction  MedImmune 271(f)  Microsoft Obviousness Standard  KSR Willful Infringement  Seagate PTO Claims & Continuation Rules…

6. 6 2007: Bicameral and Bipartisan H.R. 1908, S. 1145 “Patent Reform Act of 2007”  Introduced April 18, 2007  Sen. Leahy (D) and Rep. Berman (D), each with numerous original co-sponsors Chairman Leahy Senator Hatch Chairman Berman Congressman Smith

7. 7 Key Provisions HR 1908S 1145 Passed Sept. 7, 2007 220-175 Mark-Up July 19, 2007 First-Inventor-To-File Post-Grant Inequitable Conduct Best Mode Willful Infringement Damages Venue Interlocutory Appeals Substantive Rulemaking Applicant Responsibilities 3rd Party Submission of Prior Art Fee Setting Plus No Diversion Publication After 18 Months Conceptually UnacceptableAmendments NeededOK Included Not Included (NAS)

8. 8 The Players NAS Focused Coalition for 21 st Century Patent Reform Innovation Alliance Universities PhRMA BIO Defense Focused Coalition for Patent Fairness Business Software Alliance Generic Drug Industry Financial Services Roundtable

9. 9 Weighing In Chief Judge Paul Michel Administration ABA-IPL Section AIPLA IPO NAM AFL-CIO Communication Workers United Steel Workers Independent Inventors Venture Capital Medical Device Manufacturers Association

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11. 11 Message from Senators “I have friends on both sides and I always vote in support of my friends.” “Please work this out.”

12. 12 Negotiations Berman Pre Mark-Up Post-Grant Specter/Feinstein Process August to Present Damages Coalition for 21 st Century Patent Reform Innovation Alliance Coalition for Patent Fairness BIO Univ. of California Financial Services AAU Leahy/Hatch September 24, 2007 All Issues Coalition for 21 st Century Patent Reform Innovation Alliance Coalition for Patent Fairness PhRMA BIO Financial Services AAU Venture Capital InterDigital Cisco GE Intellectual Ventures Motorola IBM Microsoft

13. 13 Key Provisions HR 1908S 1145 Passed Sept. 7, 2007 220-175 Mark-Up July 19, 2007 First-Inventor-To-File Post-Grant Inequitable Conduct Best Mode Willful Infringement Damages Venue Interlocutory Appeals Substantive Rulemaking Applicant Responsibilities 3rd Party Submission of Prior Art Fee Setting Plus No Diversion Publication After 18 Months Conceptually UnacceptableAmendments NeededOK Included Not Included (NAS)

14. 14 We are the stewards of the Patent System

15. 15 Thank you

16. 16 Post-Grant [Senate Bill] Serial attacks for the life of the patent.

17. 17 Inequitable Conduct Reform [Both Bills ] This is a patent quality issue. Codifies - does not fix. The PTO Rule Changes have made Inequitable Conduct Reform even more necessary.

18. 18 Damages The wrong comparison at the wrong time. [Both Bills] “Claimed Invention’s specific contribution over the prior art.” If not marked - 2, not 6, years of past damages. [Senate Bill]

19. 19 Venue [Senate Bill] Takes away the right for traditional research, development and manufacturing companies to sue where they do those activities. Allows foreign entity infringers to forum shop.

20. 20 Applicant Responsibilities [Both Bills] Mandatory search & analysis would add an average of more than $4200 to costs of filing a patent application (AIPLA Report of the Economic Survey 2007)

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