RESOLUTION OPPOSING SECTION 11 OF THE PATENT REFORM ACT

WHEREAS, the Patent Reform Act was introduced in the United States House of Representatives and the United States Senate on April 18, 2007 (H.R. 1908 and S. 1145, respectively);

WHEREAS, the House of Representatives approved the Patent Reform Act, H.R. 1908, on September 7, 2007;

WHEREAS, the Senate is currently considering the Patent Reform Act, S. 1145;

WHEREAS, the Patent Reform Act, if passed by the Senate, would impose significant changes to the patent laws currently in place;

WHEREAS, Section 11 of S. 1145, entitled "Applicant Quality Submissions," requires that all patent applicants search the prior art1 and submit a search report and analysis and other information relevant to patentability to the United States Patent and Trademark Office ("PTO"); WHEREAS, the requirements of Section 11 would:

• create an undue burden on the patent applicant to comply with requirements that are wholly unnecessary in view of the patent applicant's duty to disclose to the PTO all information material to patentability under the current patent laws;

• force a patent applicant to, sua sponte, characterize and potentially limit the scope of its claimed invention;

• give potential patent infringers the opportunity in litigation to challenge the adequacy of applicant’s search; and

• subject applicants to different standards by exempting micro-entities from the "Applicant Quality Submissions" requirement;

WHEREAS, Section 11 would significantly delay preparation and filing of patent applications, and increase the cost and complexity of patent prosecution and litigation and increase a patent applicant's exposure to unfounded charges of inequitable conduct at trial; and

WHEREAS, the American Bar Association and the American Intellectual Property Law Association similarly oppose the passage of Section 11.

NOW, THEREFORE, BE IT RESOLVED that the Philadelphia Bar Association Board of Governors opposes the Applicant Quality Submission Requirement set forth in Section 11 of S. 1145, or similar legislation, and supports the deletion of Section 11 from S. 1145.

AND BE IT FURTHER RESOLVED that this Resolution only applies to Section 11 of S. 1145, or to similar legislation, and that the Philadelphia Bar Association takes no position at this time with respect to other provisions of the proposed Patent Reform Act.

AND BE IT FURTHER RESOLVED that the Chancellor or his designee is authorized to communicate the opposition of the Philadelphia Bar Association to the Applicant Quality Submission Requirement set forth in Section 11 of S. 1145, or similar legislation, to the United States Senate.

PHILADELPHIA BAR ASSOCIATION
BOARD OF GOVERNORS
ADOPTED: May 29, 2008
1 Novelty and nonobviousness, which are two criteria for patentability, are judged against everything publicly known before the invention, as shown in earlier patents and other published material. This body of public knowledge is called "prior art."