Lilly Answers That Matter. ROBERT A. ARMITAGE SENIOR VICE PRESIDENT AND GENERAL COUNSEL ELI LILLY AND COMPANY 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 · Repeal the "best mode" requirement, relying instead on the requirements for a • 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. Change the judicial burden of persuasion at trial for proving a patent is invalid. ABOUT WLF'S LEGAL STUDIES DIVISION The Washington Legal Foundation (WLF) established its Legal Studies Division to address cutting-edge legal issues by producing and distributing substantive, credible publications targeted at educating policy makers, the media, and other key legal policy outlets. Washington is full of policy centers of one stripe or another. But WLF's Legal Studies Division has deliberately adopted a unique approach that sets it apart from other organizations. First, the Division deals almost exclusively with legal policy questions as they relate to the principles of free enterprise, legal and judicial restraint, and America's economic and national security. Second, its publications focus on a highly select legal policy-making audience. Legal Studies aggressively markets its publications to federal and state judges and their clerks; members of the United States Congress and their legal staffs; government attorneys; business leaders and corporate general counsel; law school professors and students; influential legal journalists; and major print and media commentators. Third, Legal Studies possesses the flexibility and credibility to involve talented individuals from all walks of life from law students and professors to sitting federal judges and senior partners in established law firms - in its work. The key to WLF's Legal Studies publications is the timely production of a variety of readable and challenging commentaries with a distinctly common-sense viewpoint rarely reflected in academic law reviews or specialized legal trade journals. The publication formats include the provocative COUNSEL'S ADVISORY, topical LEGAL OPINION LETTERS, concise LEGAL BACKGROUNDERS on emerging issues, in-depth WORKING PAPERS, useful and practical CONTEMPORARY LEGAL NOTES, interactive CONVERSATIONS WITH, law review-length MONOGRAPHS, and occasional books. WLF'S LEGAL OPINION LETTERS and LEGAL BACKGROUNDERS appear on the LEXIS/NEXIS online information service under the filename "WLF" or by visiting the Washington Legal Foundation's website at www.wlf.org. All WLF publications are also available to Members of Congress and their staffs through the Library of Congress' SCORPIO system. To receive information about previous WLF publications, contact Glenn Lammi, Chief Counsel, Legal Studies Division, Washington Legal Foundation, 2009 Massachusetts Avenue, NW, Washington, D.C. 20036, (202) 588-0302. Material concerning WLF's other legal activities may be obtained by contacting Daniel J. Popeo, Chairman. ii 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. iii |