WASHINGTON, May 1 /PRNewswire-USNewswire/ -- The president of the
Licensing Executives Society (LES) today warned that the U.S. Supreme Court
rulings yesterday regarding patent laws "may end up watering down the
patent system to the point where it no longer serves the function intended
to appropriately award innovation."
    Allen Baum, the president of LES, which represents intellectual
property licensing professionals, added, "Right now we have Congress, the
Supreme Court, and the Patent Office all making changes to patent law in
response to intense pressure from those who believe that patents have
become too strong. The problem is there is no real coordination of efforts.
With all of this change occurring simultaneously, we run the risk that the
pendulum will swing too far and that instead of 'tweaking' the system, we
will destroy the incentive for innovation."
    For example, he noted that patent laws don't distinguish between
scientific categories of inventions. "The same obviousness test is used for
drugs and software," Baum explained. "Will we inadvertently destroy the
incentive to develop new medications in an effort to ensure inexpensive
access to internet phone calls?"
    In its ruling, the Supreme Court addressed the leap from what is known
to what is patentable -- what would have been obvious from the prior work
of others. In recognizing the challenge, the Court stated "In many fields
there may be little discussion of obvious techniques or combinations and
market demand, rather than scientific literature, may often drive design
trends."
    The Court also provided new grounds for finding patent applications and
issued patents obvious while observing the level of innovation necessary
for obtaining patents.
    "We build and create by bringing to the tangible and palpable reality
around us new works based on instinct, simple logic, ordinary inferences,
and extraordinary ideas, and sometimes even genius," the Court said. "These
advances, once part of our shared knowledge, define a new threshold from
which innovation starts once more. And as progress beginning from higher
levels of achievement is expected in the normal course, the results of
ordinary innovation are not the subject of exclusive rights under the
patent laws."
    In an extreme departure from prior law applied by the Patent Office,
the Supreme Court stated that " ...the fact that a combination was obvious
to try might show that it was [not entitled to patent protection]..." The
Court also commented that "Granting patent protection to advances that
would occur in the ordinary course without real innovation retards progress
and may, in the case of patents combining previously known elements,
deprive prior inventions of their value or utility."
    This decision comes at a time when Congress recently introduced patent
reform legislation in the House and Senate providing for post-grant
opposition of patents as well as limitations on damages. The Supreme Court
also recently issued decisions limiting the availability of injunctions in
patent cases as well as giving patent licensees the ability to challenge
patents while continuing to pay royalties under a patent license. The
Patent Office is also
    expected to issue new rules substantially curtailing a patent
applicant's number of "bites at the apple" in seeking patent protection.
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Allen Baum
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