The U.S. is the only country of the three major patent producing countries – the U.S., Japan, and the European Union to use the first-to-invent system at this point. Do you see the U.S. continuing with the first-to-invent system as a problem– as it’s not in line with other regions? Does that system just work better for the United States?
DAVISON: I believe our system is built in consistency with the founding fathers’ intention, how our country was set up to function. The European system is consistent with the way they’re built. So they should continue to do what they’re doing. We should continue to do what we’re doing.

One of the aspects of the proposed legislation is to change the venue from the region that the defendant resides in to the region of either party. The new legislation would move the venue to where the opposing party resides or where a corporation is organized. Do you see that as being positive or negative?
DAVISON: I see it as being negative. It should be held where it has been, and that is where the inventor is. If you allow it to be moved to the venue of whoever’s filing against that inventor, then that is an additional hardship that we put on that inventor. That means that the inventor has to go defend their patent in a location that’s away from where they are. That’s an additional burden. It’s more expense. The burden should never be shifted back on the inventor who has the granted patent. No, the burden should be put on whoever’s filing against them, saying that there’s something wrong with that patent — that there’s an infringement or there’s an interference. Let’s say that a very large company wants to try to keep an independent inventor’s technology off the market while the inventor still has a market share on the old technology. Logic says that if they cannot find a way around it, they will simply file against the inventor to cause a distraction, number one. Number two; cause a financial drain.

So change of venue just adds to that distraction?
DAVISON: Exactly. And that hardship is not intended for that individual. The hardship should be on the person who’s bringing the suit against the person with the established patent. Look, I’m going to add to this comment, this dialogue. I’m probably one of the biggest proponents of change in this country. I love change. I drive change all day long. I would love to get behind this and say, “This is a great idea. More change, great, more change, change.” But, not in this situation.

I am concerned that people won’t understand what these changes have done for 20, 30, or 40 years. These changes, the real sweeping impact of this, we won’t feel for a long time.

So this is an instance in which change would not be positive?
DAVISON: Our patent system is a basic building block put in place by the architects of our great society. We should be doing everything we can to protect the original format of our patent system. I am concerned that people won’t understand what these changes have done for 20, 30, or 40 years. These changes, the real sweeping impact of this, we won’t feel for a long time. So we have to be paying close attention, not for ourselves, but for our children and their children. That’s what we need to protect.

Thank You.

Comment from Arlen Specter

U.S. Senator Arlen Specter, Member of the U.S. Senate Committee on the Judiciary, released the following statement in an April 9, 2008 press release:

“The Chairman and I differ on a number of aspects of the proposed patent reform legislation,” Senator Specter said. “The principal sticking point is the issue of how to assess damages in patent infringement lawsuits. We thought we had reached an agreement on this matter, but the language continued to shift, so we do not yet have a deal on the package. I am hopeful that we can reach an agreement, but more work has to be done to get it right.”

Interview with Marc Malandro and Chiara Orsini

Marc Malandro serves as the Associate Vice Chancellor for Technology Management and Commercialization at the University of Pittsburgh. Chiara Orsini is the Associate Director of Intellectual Property at the University of Pittsburgh.

Our discussion is about the Patent Reform Act. You’re familiar with the current legislation that passed in the House and is now in the Senate. In the bill’s current form do you see it as having a positive or a negative effect on the university with regards to patent filings, patent rights, the protection thereof?
MALANDRO: You know, I think that’s a big question. There are a lot of moving parts here in the Patent Reform Bill that sort of make it difficult to say it’s either wholesale positive or wholesale negative. Each part is different as far as market segments and different business segments are concerned. Again the whole, not only the Patent Reform Act, but some recent legislation as well is, I would say, decidedly preferential to sort of the high tech and technology marketplace and less so to the biotechnology life science’s market place and I think that holds true in this legislation as well.