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Thursday, October 17, 2019

Patent attorney argues PATENT Act still not the best approach to reform

By Jessica M. Karmasek | May 18, 2015

ST. LOUIS (Legal Newsline) - It’s being called the more “balanced” approach to patent reform, but one St. Louis-based patent attorney says the Senate-introduced PATENT Act still isn’t focused enough.


Bryan Wheelock, a principal at intellectual property law firm Harness Dickey & Pierce, said he doesn’t care for the legislation, the fourth patent reform bill introduced this Congress.


Even the name -- Protecting American Talent and Entrepreneurship Act -- bothers him, he said.

“Somehow this is supposed to protect talent and encourage entrepreneurship,” Wheelock said. “When, in fact, it makes it harder for people who own patents to enforce them.”


Wheelock, who has been a patent attorney for more than 30 years, spends most of his days preparing and filing patent applications, responding to rejections by the U.S. Patent and Trademark Office, and drafting IP agreements.


His clients are mechanical and electrical inventors, including medical device companies and metal alloy, ammunition and bedding manufacturers, among others.


Wheelock, who has an undergraduate degree in mechanical engineering from Duke University in addition to his law degree, also does a substantial amount of patent and trademark infringement studies, and serves as an adjunct professor at Washington University School of Law and the university’s engineering school.


“Everyone is so concerned about this horrible problem called patent ‘trolls,’” he said. “But everyone has a different definition of a troll, and now you have lawmakers who are trying to come in with a broad brush and burden people with more rules and regulations.


“The real troll problem, I believe, are those people who end up with patents.”


Wheelock said often those patent owners don’t know for sure what aspect of their patent is being infringed, but they send a demand letter anyway.


“That conduct is reprehensible,” he said. “And I understand why companies can’t stand that kind of activity.


“But, for others, this act goes further.”


The bill, its authors say, would clarify pleading standards; protect end users; reasonably limit early discovery; create more risk for bad actors; curb abusive demand letters; and increase transparency.


U.S. Sens. Chuck Grassley, R-Iowa and chairman of the Senate Judiciary Committee; Patrick Leahy, D-Vt. and ranking member of the judiciary committee; John Cornyn, R-Texas and committee member; and Chuck Schumer, D-N.Y. and also a committee member, all are sponsors of the PATENT Act.


“Under this bill, if an inventor is suing because someone is using their technology without their permission, now that inventor has to follow a bunch of rules,” Wheelock said. “I don’t know why we’re burdening all inventors.”


Inventors, he explained, basically have two choices: go into business for themselves or sell a patent and make money that way.


But the market to sell a patent is slowing shrinking because no one wants to deal with the potential legal wranglings, Wheelock said.


“I worry we’re killing off incentive by targeting everyone who wants to enforce their patents instead of just those frivolously enforcing them,” he said. “True trolls enforce patents without reason.”


Wheelock believes Congress simply is pandering to big companies, such as Google, that don’t want to pay up.


“They’re protecting a class of people who are copying or using something someone else invented at no cost,” he said.


Wheelock takes issue with a number of the bill’s provisions, including its pleading standards.


While he’s not completely opposed to requiring more detailed pleadings, he’s concerned that such detailed disclosures too early on can cause problems.


“It makes it much harder to make changes as you go along,” he explained.


The legislation also adds requirements that demand letters contain “meaningful information” so they cannot be used merely to scare recipients into early settlements.


“Now you have to include all of these details and follow all of these steps to write a simple decease and desist letter,” Wheelock said.


In an effort to increase transparency, PATENT also requires the PTO to keep information about patent ownership in order to provide a resource about patents being asserted in a demand letter or lawsuit.


That means, when a patent is transferred, both the seller and the buyer have to provide detailed information to the office, Wheelock explained.


“I just think they’re trying to irritate people who buy patents,” he said of the added steps.


And while he admits the legislation is the “least harmful” of the bunch, and the most likely to pass, Wheelock said it’s still “more of the same.”


“The last big piece of legislation, the America Invents Act, didn’t help individual inventors. It, too, has made it harder for inventors,” he said. “This act makes it even harder.


“I think we can do something a little more measured and specific.”


Especially given its potential, far-reaching effects, he said.


“We all benefit from having better stuff, right? Who doesn’t like to have something that’s new and improved? But you need to provide an incentive for people to make better things,” Wheelock said. “And if people take something that isn’t theirs, shouldn’t they have to pay for it?”


From Legal Newsline: Reach Jessica Karmasek by email at

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