Office of the Vice President for Global Communications

Thursday, May 17, 2012

Any patent law changes should be limited, U-M attorney tells panel

Any further modifications to the patent-reform legislation signed into law last fall should be narrowly tailored, a U-M patent lawyer said at a congressional hearing in Washington, D.C., on Wednesday.

  Associate General Counsel Rick Brandon (right) visits with U.S. Rep. John Conyers, D-Detroit, ranking member of the House Judiciary Committee, prior to a hearing Wednesday. (Photo by Mike Waring, Washington Office)

Associate General Counsel Rick Brandon told the House Judiciary Committee that the U.S. Patent and Trademark Office (USPTO) is doing an excellent job of implementing the new law, but said discussions of "technical corrections" legislation that Congress might consider as a follow-on should be limited in scope.

"As the patent office moves through its rulemakings and proceedings, it is important that the carefully crafted compromises that made passage of the law possible remain intact," said Brandon. "Any changes from the original compact reached on the law should be considered only with the agreement of all parties, including universities."

Brandon said informal discussions regarding language affecting the one-year "grace period" for inventors to file their patent application should be pursued, but said discussions on further expansion of "prior user rights," or trade-secret protections, should not be advanced without university support.

"We believe USPTO has done a good job of implementing the new law, and would urge that any technical corrections being considered be just that — technical only — and not a major rewrite of the legislation," Brandon added.

Brandon appeared at the hearing as a representative of the Association of American Universities (AAU), of which U-M is a member. He currently is serving on an advisory committee helping AAU and other higher education associations work through potential modifications to the new law.