Lilly

Answers That Matter.

ROBERT A. ARMITAGE

SENIOR VICE PRESIDENT AND GENERAL COUNSEL

ELI LILLY AND COMPANY
APRIL 25, 2005

Eli Lilly and Company believes significant reforms to the U.S. patent system should be a priority for Congress and is committed to working with all interested constituencies to assure that a broad consensus can be developed on the content of the needed reforms. In our view, the following may be ripe for congressional consideration:

Adopt the first-inventor-to-file principle as part of U.S. patent law. Do so by
maintaining the traditional inventor-focused features of U.S. patent law, including
the inventor's 1-year “grace period" and so-called "self-collision" protections.
Enact the consensus "best practices" for implementing a first-inventor-to-file
system that include eliminating certain conditions for patentability that will be
rendered unnecessary. Assure prior art is not diminished by clarifying that
publicly accessible knowledge of an invention, whether through use, sale, offers
for sale or otherwise, is all that is necessary to qualify as prior art.
Increase the effectiveness of the "duty of candor" by creating an incentive for
inventors to work with patent examiners to obtain wholly valid patents. Do so by
barring any pleading of the "inequitable conduct" defense unless the court has
found at least one patent claim is not valid.

· Repeal the "best mode" requirement, relying instead on the requirements for a
complete written description and sufficient enabling details to permit the full
scope of the claimed invention to be readily carried out.

• Limit the ability to plead that the infringement of a patent was willful except in cases that meet an appropriate standard for reprehensible conduct.

If a fair and balanced structure can be defined and if accompanied by facilitating first-inventor-to-file and "inequitable conduct" reforms, open a 9-month window for post-grant opposition of an issued patent. Permit all mistakes in issuing a patent to be corrected in the proceeding.

If pre-grant opposition prohibitions are maintained in force, provide a mechanism for consideration of third-party submissions of prior art and concise descriptions of the relevance of the submitted prior art.

If an inventor's right to take reasonable steps to fully protect the invention can be maintained, eliminate the potential for abuse of the patent laws arising from the unlimited right to file continuing applications for patent.

If a compelling policy basis is determined to exist, consider repeal (or other reform) to the so-called “off-shore" infringement provisions in the patent law.

At the same time, we urge Congress to reject calls for reforms that would:

• Prevent courts from stopping the continued infringement of valid patents.
Limit any patent owner's damage award to an amount less than adequate to
compensate for the infringement.

Change the judicial burden of persuasion at trial for proving a patent is invalid.

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ABOUT THE AUTHOR

Gerald J. Mossinghoff is Senior Counsel to Oblon, Spivak, McClelland, Maier & Neustadt. A former Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, Mr. Mossinghoff teaches Intellectual Property Law at the George Washington University Law School and the George Mason University School of Law. This paper updates an article published in the Journal of the Patent and Trademark Society in 2002, 84 JPTOS 425.

The author acknowledges with appreciation the fine work of USPTO officials Timothy P. Callahan, Karen M. Young and Peter Toby Brown in compiling and verifying the data cited in this paper.

The views expressed here are those of the author and do not necessarily reflect those of the Washington Legal Foundation. They should not be construed as an attempt to aid or hinder the passage of legislation.

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