Thursday, October 30, 2014

Professor Dennis Crouch - Rise of Computer Patents

Tonight, I suggest reading Professor Dennis Crouch's Rise of Computer Patents.

Professor Crouch says it's difficult to define "software patents," but has a graph that indicates US patents with an independent computing claim (i.e., reciting "computer, processor, software, machine readable, information, memory, data, virtual, or storage media") increased from about 5% in 1976 to 35% in 2014. The graph also shows 40% of US patent will include an independent computing claim in 2015, but it's not clear how this can be determined.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, October 29, 2014

USPTO - Deputy Director Michelle K. Lee's Our Shared Stewardship of a Gold-Standard IP System

Tonight, I suggest reading Deputy Director of the USPTO Michelle K. Lee's Our Shared Stewardship of a Gold-Standard IP System prepared remarks for a speech before the AIPLA.

The remarks are lengthy, but show how much Ms. Lee cares about the USPTO, provides a comprehensive vision for the USPTO, and has the potential to be a great leader like her predecessor David Kappos.

"Thank you, Wayne, and good morning everyone. Before I begin, I just wanted to say, it’s been a busy week, and that I am beginning to lose my voice, but it means a lot to me to be here today and to speak to you all of you, so I hope you will bear with me and hopefully my voice will hold through the speech.

With that, I’d like to congratulate Q. Todd Dickinson for his successful leadership of AIPLA, and for his past service as Director of the United States Patent and Trademark Office.

We at the USPTO appreciate his support of our agency over the years, and I personally want to thank Todd for his warm welcome of me when I took the helm of the agency in January.  I know we all wish him the very best in his future endeavors.

I also want to commend Vince Garlock for his recent stewardship of the Association, and congratulate Wayne for his successful tenure as the 106th president of AIPLA.

And congratulations, Sharon Israel! I look forward to working with you in the months ahead on many of the big issues I’ll be talking about here today.

As always, I see a number of familiar faces out there in the audience—friends and colleagues who’ve made a difference in the world of IP through their dedication and professionalism.

And that’s why it’s a pleasure to speak to AIPLA, which has played such a critical role in shaping our nation’s intellectual property system for one hundred and seventeen years.

On a more personal note, it was truly an honor when President Obama announced his intention to nominate me for the helm of the USPTO—America’s innovation agency—as it navigates a sea of transformative change.

As some of you know, I’ve spent my entire career engaged in innovation. I grew up a tinkerer, always looking to learn how things worked and how things could be improved. That passion led me to become an engineer, which then later led me to become an intellectual property attorney and advisor to high-tech companies.

I’ve prosecuted patents; asserted patents; defended against infringement; and licensed, bought, and sold patents, sometimes for very large sums of money. So I share your conviction, gained through years of firsthand experience, that IP has tremendous value and is a driver of innovation.

I believe we also share an understanding that we are living in a pivotal moment in the history of intellectual property. IP is on the minds of many, from the most powerful policymakers to the youngest of innovators. It’s the subject of articles in Vanity Fair and episodes of This American Life.
And through a special partnership with the IPO Education Foundation, today even Girl Scouts can get badges for demonstrating a working knowledge of IP.

Of course, an ever-expanding ecosystem of interested parties leads to an ever-expanding range of viewpoints on the appropriate contours of IP protection. 

As we move forward in this critical moment in our history, it can be helpful to compare our efforts to sailing. To reach our destination, we must sail into the wind. And we must do so with all hands on deck.

In other words, it’s incumbent that we all work together as responsible stewards of our IP system. We must ensure its continued role in promoting the innovation that defines our society, and our economy.

What does it mean to be a responsible steward? Well, for those whose role it is to draft our nation’s IP laws, they must do so sensibly, with input from experts and with a focus on balanced laws that promote innovation across industries now and for the long run.

For those whose role it is to interpret our nation’s IP laws and render legal decisions resulting from that review, they must do so in a clear and consistent manner.

For those whose role it is to advocate before lawmakers and argue before judges, they must do so with an eye toward not just what is good for one’s client in a particular case, but also what is right for our system in the long run.

And, finally, for those of us whose role it is to implement both new laws and new judicial interpretations of those laws, we must do so with care, precision, and transparency.
So are we all meeting our respective obligations? That’s a question I ask myself every day.

Let me share four priorities the USPTO is undertaking as a responsible steward of our IP system.

First, the USPTO is now even more focused on quality. Quality yields certainty in the marketplace, reduces needless litigation and fuels innovation.

Second, in the increasingly online commerce-driven world in which we live, it’s incumbent upon the USPTO to advance cost-effective and strong global IP protections.

Third, the USPTO must remain a leader in operational excellence.  We owe our customers nothing less.

And finally, all three of these priorities must be accomplished transparently, with active public engagement.

So let's start with the agency’s first priority: quality. As you know, a high-quality patent clearly sets out the boundaries of a claimed invention, and encourages other innovators to come up with something transformative and new.

I’m hardly the first USPTO leader to stand before you emphasizing that quality is a priority. And I certainly won't be the last. But for too long, due to uncertain budgetary conditions and limited resources, the USPTO has had to make do with less. No longer. Thanks to the efforts of my predecessors at the USPTO—and all of you—to achieve a sustainable source of funding and a reduction in our application backlog and pendency, for the first time in a long while the USPTO doesn’t just have to make do. It can focus on building the workforce and tools it needs to support a world-class patent quality system.

That’s why, at the most recent Patent Public Advisory Committee meeting, Commissioner for Patents Peggy Focarino outlined the contours of our new Patent Quality Initiative.

We will roll out the initial results of this initiative early next year.  Let me give you a brief preview today. This new initiative is built around three core elements: excellence in prosecution products and services; excellence in customer service; and excellence in measurement of quality.

I’ve asked that teams of employees from across the agency—from examiners to IT staff to policy experts—be put together to take a hard look at patent quality from every angle.

We’re considering all options—big and small—before examination, during examination, and after examination.

This includes upgrading IT tools for our examiners, such as fully implementing our Patents End-to-End system and expanding international work-sharing IT capabilities.

It includes increasing resources to improve patent examination quality, for example, by expanding focused reviews of examiner work products to measure the impact of training; improving the effectiveness of interviews between examiners and applicants; and providing training to all of our employees that interact with customers.

It also includes comparing best practices and collaborating to improve quality with our foreign counterpart offices; more on that in a bit.

And it includes using big data techniques to measure and improve every stage of the examination process. What do I mean by big data?

Well, we collect a lot of data during the examination process, but we haven’t had the resources to fully capitalize on its potential. Now we do. We can not only analyze data effectively, but apply lessons learned throughout the examination process, improving quality from the first touch of an application, and providing more precise training to our examiners to fill any specific gaps identified.

Of course, when measuring results we need to better understand what quality means to our customers. That’s why we will start that conversation with you early next year through a series of discussions across the country, explaining how we currently measure quality and seeking your input on how we can do better.

All of this is in addition to the existing quality initiatives we have underway, including increased technical training for our examiners; more legal training, including on Section 112(f) on functional claiming; a glossary pilot program; easier ways for third parties to submit prior art; and enhanced use of crowdsourcing techniques.

Further, the USPTO is being a responsible steward of our IP system by ensuring that our AIA trails testing patents of questionable validity are efficient and cost-effective. This is our mandate from the AIA.

Based on the number of petitions we have been receiving, our stakeholders seem to value the service we provide.  But we are looking to make these proceedings even better. That’s why the Patent Trial and Appeal Board held public outreach events in eight cities earlier this year, and plans to hold six more next month. We’re sharing the Board’s progress and experiences so far, while also seeking input on improvements.

So as we engage in the admittedly challenging task of improving patent quality, I have an ask of all of you as members of the IP bar, professionals who prosecute and litigate patents every day: Work with us to create a world-class patent quality system.

It is what we must do to maintain a healthy and respected IP system. It is what we must to do to be good stewards of our IP system.

The agency’s second priority is a continued commitment to supporting U.S. innovators competing in the global economy.

As Secretary of Commerce Penny Pritzker and I hear from businesses of all sizes looking to manufacture and export their products overseas, they frequently express their need for cost-effective access to strong IP protection abroad.

Now one thing that remains clear is that our IP system is considered by many around the world to be the “gold standard.” More than ten thousand innovators and consumers in seventeen countries said so in a recent survey by Time Magazine.

And that belief resonated in conversations I had in Geneva during the most recent World Intellectual Property Organization meetings.

In those meetings I discussed with peers from IP offices around the world our desire to move forward on operational coordination to streamline procedures and reduce costs for our innovators who are seeking foreign IP protection.

As many of you know, we’ve spent the past two years implementing the Cooperative Patent Classification system, which we developed with the European Patent Office. President Battistelli will speak to us today at lunch and he may have more to say about this then.

The system permits more effective prior art searches while reducing duplication of work. That should make patent examination both faster and better, supporting our focus on patent quality.

While in Geneva, I signed an agreement with the Korean IP Office, or KIPO, obligating them to reclassify their entire patent collection under the CPC. This is a huge step forward for international worksharing, and I encourage other offices will follow Korea’s lead.

All of these provide excellent examples of how important streamlined and coordinated operations are in achieving our goals. And that’s why one of the agency’s priorities moving forward is operational excellence.

At the USPTO I have the privilege to serve alongside of some of the hardest-working, most committed civil servants around.

And I’m excited about the steps we’re taking to further modernize our workforce, increase our production capacity, and ensure quality patent and trademark examination. You’ve seen some results of these efforts over the past several years.

We reduced the backlog of unexamined patent applications from a high of over 750,000 in January 2009 to barely more than 600,000 as of September 22 of this year. That’s a decrease of more than 17%, despite an average 5% increase in filings every year since 2010. And when it comes to trademarks, our performance measures are every bit as impressive, with a first action pendency of 3 months, and pendency from filing to registration or abandonment at an historic low of 9.8 months. We were able to achieve this, in part, due to increased hiring and retention of skilled examiners.

As IP becomes even more important and our filings continue to increase, we must continue to invest in our workforce to help them perform their mission to the best of their ability.

Our award-winning telework program—which aligns the agency’s needs with a dispersed 21st Century workforce—has been, and will continue to be, a key component of these improvements and our agency’s success.

It provides significant benefits in recruiting and retaining highly skilled employees while saving the agency money. It’s allowed us to more than double the number of patent examiners since 2005 without increasing our real estate footprint.

But as innovators know, the cost of being a trailblazer is that you are always the first to encounter obstacles in your path.

No program is perfect, and the USPTO’s telework program is no exception. Recent events have helped shine a light on areas where our telework program can be improved.

We’ve already moved forward with a number of concrete steps to bolster the management of the telework program to ensure the integrity of our operations.

These actions will help ensure this incredibly valuable program continues to provide enormous value to our agency, your clients, and the American people.

But our focus is on improving all operations, including those that directly impact our customers. Many of our ongoing IT improvements will make your lives easier, from filing a patent or trademark application to managing your fees. We’ll be holding a series of roundtables soon to share our work in this area and seek your input.

You are hearing a recurring theme here. Each of the agency’s priorities—quality, global leadership, and operational excellence—demand real-time engagement with the public.

Like my predecessor David Kappos, I come from the private sector, where customer service, input and feedback reign supreme. As a long-time user of the services of the USPTO, I watched with admiration and appreciation as the agency tacked in the direction of serving USPTO’s customers through transparency and engagement. The Agency will continue to sail that path.

We've valued your participation in our various partnerships, such as the long-standing Bio-Chem-Pharma Partnership and one we created last year, the Software Partnership. I’m looking forward to seeing the fruits of our latest effort, the Cybersecurity Partnership, which we just announced on Monday.

Our new satellite offices also provide opportunities to engage with more of you than ever before.

And let’s not forget our public roundtables held around the country, which allow us to hear directly from you on a range of important subjects. I've mentioned our PTAB roadshows and our forthcoming events on patent quality; those are but a few examples.

I also mentioned earlier the role of the federal court system as one of the stewards of our IP ecosystem. As you know, the Supreme Court has been very active on the patent front this past year.

Recent changes in case law on various topics have required us to issue new guidance to our corps of more than 8,500 examiners.

As responsible stewards of our IP system, we have an obligation to ensure that any change to the law is implemented faithfully and uniformly. We have valued your guidance in these areas.

Finally, we look forward to hearing from all of you on the ways we can further strengthen our system through balanced and meaningful legislative reforms.

We hope to see patent reform move forward on the congressional agenda next year. All of us, as stewards of our IP system, have an obligation to engage in that process responsibly, thoughtfully, and with the goal of ensuring balance—regardless of your monetary self-interest on an issue.

So we all have roles to play as responsible stewards of our IP system. Congress. Courts. Agency leaders. And advocates like you.

I’m confident that, together, we can chart a path into the wind that avoids the shoals, sandbars, and storms.

We have a model to follow. You may recall that one of the biggest comebacks in sports history happened last year out in my part of the country, when the multi-day America’s Cup sailing competition was held on the San Francisco Bay.

A team of Silicon Valley innovators pulled off that win. In interviews after their victory, team members said that every night after a win or a loss they would analyze the data from that day’s race.

They then made real-time adjustments for next day, with each team member knowing exactly what they had to do to meet their shared goal.

We should remember that lesson as we find ourselves at this unique moment in the history of IP. None of us can succeed on our own. We need to work together as we—responsible stewards—tack toward our shared goal, an IP system that will continue to promote innovation across industries now and in the long run.

Thank you again for having me here today, and best wishes for another great year in the exciting world of IP."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, October 28, 2014

USPTO - PTAB AIA Trials Road Show in November 2014

Today, the USPTO sent a blog post from Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee:

"Stakeholder engagement is a critical mission of the USPTO, and I am excited to share that the Patent Trial and Appeal Board will visit the Great Lakes region to provide more training about the AIA trials. In November, the board will visit Detroit, Cleveland, Pittsburgh, Chicago, Milwaukee, and Minneapolis for afternoon, interactive programs.

Earlier this spring, the board engaged with stakeholders in a variety of cities on a listening tour to consider revisions to the AIA trial rules and guidance. In these upcoming sessions, the board is focused on teaching the public how to strengthen their AIA trial filings.

In particular, stakeholders will hear a 'State-of-the-Board' address, providing an update on recent developments including the volume of AIA trial filings and administrative patent judge hiring. The board also will host a “PTAB Feud” game show in which members of the public compete to answer questions and learn about the AIA trials. Lastly, the board has developed an AIA trial workshop involving a mock scenario in which a petitioner wishes to assert a challenge against a patent. The audience will break into teams, each facilitated by a judge, to discuss which type of petition to file and what issues might arise from both the petitioner’s and patent owner’s perspectives.

Topics of discussion will include bars to filing, real party-in-interest and joinder considerations, and claim construction. The teams likewise will decide whether to institute an AIA trial, and if so, on what grounds and for which claims. In Detroit, the PTAB will host an actual AIA trial hearing in lieu of the workshop.

Besides the roadshows, the PTAB continues to hire more talented IP practitioners as judges. In fiscal year 2014, the board brought on 44 new judges, raising the total to 214. This fiscal year, the board is eager to continue growing, both in the Alexandria headquarters as well as all our satellite office locations. If you enjoy high end legal work involving cutting edge science, then an administrative patent judge position may be just for you.

In sum, I encourage you to take part in one of the Detroit Region Roadshows so that you can become even more versed in the nuances of the AIA trials. To learn more about a judge position, please visit Our AIA trial proceedings help strengthen our patent system, and we're thankful for the stellar leadership demonstrated by our administrative patent judges on the PTAB."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, October 23, 2014

Love & Ambwani - Inter Partes Review: An Early Look at the Numbers

Tonight, I suggest reading Santa Clara University assistant law professor Brian Love and Unified Patents' COO Shawn Ambwani's Inter Partes Review: An Early Look at the Numbers.

The abstract of the authors: "In the roughly two years since inter partes review replaced inter partes reexamination, petitioners have filed almost two-thousand requests for the Patent Trial and Appeal Board to review the validity of issued U.S. patents. As partial data on inter partes review (IPR) has trickled out via the blogosphere, interest from patent practitioners and judges has grown to a fever (and sometimes fevered) pitch. To date, however, no commentator has collected a comprehensive set of statistics on IPR. Moreover, what little data currently exists focuses on overall institution and invalidation rates — data that, alone, gives us little idea whether IPR is thus far accomplishing its original goal of serving as a quick, efficient alternative to defending patent suits filed in federal court, particularly those initiated by non-practicing entities (NPEs).

This Essay aims to fill both gaps by reporting the findings of an empirical study tracking the outcome of IPRs and their impact on co-pending litigation. As described in greater detail below, we find that: Petitions for IPR are instituted for at least one challenged claim 84 percent of the time; Among instituted IPRs, all challenged claims are instituted 74 percent of the time; Among IPRs that reach a final decision on the merits, all instituted claims are invalidated or disclaimed more than 77 percent of the time; IPRs challenging NPE-owned patents are more likely to be instituted and, on average, are instituted for a larger share of challenged claims, but have their claims invalidated at a lower rate; Litigation proceeding in parallel with an instituted IPR is stayed about 82 percent of the time.

Though it is too early to draw sweeping conclusions from these statistics, they suggest that inter partes review promises to be considerably more potent than inter partes reexamination and, moreover, to have a substantial impact on co-pending patent litigation, particularly suits filed by NPEs."

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, October 22, 2014

Dolak - Patent Office Contested Proceedings and the Duty of Candor

Tonight, I suggest reading Professor Lisa Dolak's Patent Office Contested Proceedings and the Duty of Candor. Professor Dolak has been speaking on ethics issues in intellectual property for years, and this is a nice contribution to AIA trial work.

Here's the abstract: "The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.

This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, October 21, 2014

AIPLA - Comments on PTAB Rules and Trial Practice Guide

On October 16, 2014 the American Intellectual Property Law Association (AIPLA) filed comments on the PTAB Rules and Trial Practice Guide on rules for post-grant review and inter partes review before the Patent Trial and Appeal Board (PTAB).

The AIPLA presents some pro-patent owner positions in the comment letter. I will list a few with quick comments.

AIPLA argues PTAB values efficiency more than fairness to the participants. My comment is this sounds correct, but in view of the PTAB heavy workload and statutory deadlines, PTAB can't fix this soon. Beside extending the length of these proceedings require Congressional law be modified and ultimately might benefit lawyers more than the parties.

Second, the AIPLA argues it's time to abandon the "broadest reasonable interpretation" for claims, since AIA trials are adjudicative rather than prosecution. I expect powerful forces to push back on this because they would face infringement of narrowly interpreted claims in court that might otherwise be held invalid in the USPTO.

In another place, the AIPLA argues PTAB should not require a motion to amend claims be grounded on a proof of patentability of the amended claim, since it distorts the presumption of validity of US patents and "short-circuits the burden" of the petitioner to prove unpatentability. Since nearly all motions to amend claims are denied, something should be done to make it possible to enter amendments to claims. One approach might be the patent owner could be just required to prove the narrow amended claim satisfies 35 USC 112 rather than prove it satisfies the requirements of 35 USC 102 and 35 USC 103, which were met when the broader claim was allowed.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, October 20, 2014

IAM - The US has not come close to abandoning software patents

Tonight, I suggest reading Josh Wild's Intellectual Asset Management (IAM) blog post The US has not come close to abandoning software patents, former Microsoft chief patent counsel tells IAM.

In the post, former Microsoft Chief Patent Counsel Bart Eppenauer seeks to rebuts those claiming Alice wiped software patents. Mr. Eppenauer notes the Alice decision held software patents are eligible as a category (thank you for noting it) and that invalidity decisions applying Alice were for weak patents (e.g., Internet Bingo) written before Alice was handed down.

I mostly agree with Mr. Eppenauer's observations that we have uncertainty to work through in the USPTO and courts, but note the initial results indicate the law has changed. I would add Alice missed an opportunity to eliminate some uncertainty when it declined to give guidance on how to determine what is an abstract idea other than say Alice is like Bilski.

However, my comment if someone (no matter how smart) argues something sweeping and contrary to the past has changed, the person might not know. What am I talking about? How about the statement that Alice resulted in the invalidity of hundreds of thousands of software patents? For example, see Big US tech companies face major patent losses in the post-Alice world, IAM research reveals. But who has read all of these US patents? Sure, an Internet Bingo patent was held invalid, but this doesn't prove anything about "many software patents." Mr. Eppenauer is smart to say let's see how the software patent eligibility standard develops in the USPTO and courts in the coming years. It might sound stodgy, but it's going to be far less embarrassing than explaining to others why you believed that "smart chicken little" shouting the sky is falling. Yes, we have clouds, but let's follow along and see what the community develops in response.

Trade secret and copyright can complement, but not replace patents which provide the broadest intellectual property protection. So I expect many to continue to pursue patent protection on software inventions despite the uncertainty presented by Alice. 

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, October 19, 2014

USPTO - Assignments

The USPTO Frequently Asked Questions about Assignments has information on patent assignments.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, October 17, 2014

Hovencamp - Predatory Patent Litigation: How Patent Assertion Entities Use Reputation to Monetize Bad Patents

Tonight, I recommend Northwest PhD candidate Eric Hovencamp's Predatory Patent Litigation: How Patent Assertion Entities Use Reputation to Monetize Bad Patents.

Here's the author's abstract of the article: "Despite their expertise in patent law, the most litigious patent assertion entities (PAEs) frequently file dubious infringement claims on which they are ostensibly very unlikely to turn a profit. Thus one might conjecture that these PAEs are mistaken to follow through on their litigation threats when their chances of coming out ahead are so scant. To the contrary, this paper demonstrates that this is in fact a calculated strategy of predatory patent litigation: by following through on its threats of seemingly irrational litigation, the PAE develops a litigious reputation that convinces other producers that these threats are credible, leading them to accept licensing offers they would ordinarily rebuff. This allows the PAE to garner substantial licensing revenues using low quality patents that would otherwise be difficult or impossible to monetize."

The article is interesting but suffers a bit from a heavy dose of mathematics guaranteed to knock out all but the economist. It also struggles with formulating a practical strategy to address patent assertion entities (PAEs) that file dubious infringement claims. It should note the AIA trials (e.g., inter partes review) that have been successful at invalidating dubious patent, but instead argues without a lot of evidence "potential defendants could better protect themselves by entering into a litigation cost-sharing agreement." How about avoid litigation altogether? I don't consider myself an expert on this topic, but I have only heard litigation cost-sharing does not works that well. Multiple defendants have different things at stake. Most should settle quickly, while a few may need to go further. So after you quibble over costs and strategy, you typically see a lot of free riding followed by "me first settlements."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, October 16, 2014

Graham & Van Zeebroeck - Comparing Patent Litigation Across Europe: A First Look

Tonight, I recommend Stuart Graham & Nicolas Van Zeebroeck's article Comparing Patent Litigation Across Europe: A First Look published in the Stanford Technology Law Review in September 2014.

Recently, some of the hotly contested high tech patent enforcement occurred in Europe. Thus, to increase the chance of success, it is important to understand what is actually happening in Europe based on data rather than war stories.

Here's the authors' abstract of the article: "Although patent litigation has become increasingly global, with litigants earning billion-dollar verdicts and seeking judgments in many different jurisdictions around the world, scholarship has been almost completely silent on how such litigation develops outside the United States. This void in understanding is particularly glaring in Europe, where U.S. and other litigants are increasingly drawn, and to which policy makers interested in harmonizing the U.S. patent system look in vain for answers. Courts, litigants, commentators, and policy makers speculate about how litigation and judicial outcomes differ, but have no factual basis for comparing or understanding what actually transpires.

With a view to settling this uncertainty and allowing for the emergence of a more robust body of scholarship, this Article sets forth the results of an empirical study of a database including nearly 9,000 patent suits from seven of the largest and most judicially active countries in the European Union during 2000-2010. In the process, it shows that the incidence of litigation and the bases of judicial outcomes diverge radically across the different countries and types of patented technologies in Europe. Accordingly, the Article, for the first time, provides an empirically grounded, factual basis for examining stubborn questions relevant to those needing clarity about the legal environment in Europe, and to comparatively study the United States’ system."

The results unveiled in this Article are profound, bringing clarity to a legal environment that has been heretofore shrouded in shadow. The results show that the frequency of patents reaching a judgment in litigation varies widely across European countries in ways that belie the simple differences associated with the quantity of domestic stocks of enforceable patents. By demonstrating that disputes are much more frequent in some countries (e.g., the Netherlands and France) as compared with others, the Article uncovers that practitioners’ estimates—the sole previous baseline source—are not accurate.

By showing how litigation varies widely across technologies, this Article provides critical insights into the likelihood of different kinds of patents reaching a judgment in the diverse European courts. It also offers surprising evidence regarding how litigants’ raising of patent validity and infringement claims differs from one European court to another, and how outcomes too are starkly different.

The main policy implications of the Article follow from the reported patent litigation patterns across technologies and countries. The findings highlight both the fragmentation and variation within the European patent system, and the fundamentally different dynamics that will continue to shape patent enforcement across technology sectors and industries. The patterns also underscore the variation in predictability, and differences in legal certainty, that innovators, patent holders, and their technology competitors experience in the fragmented European system. These cross-country differences highlight institutional variation among the jurisdictions, which in turn drives the costs and incentives to use the courts, helping to provide critical comparative data as Europe moves to a continent-wide Unitary Patent and Unitary Patent Court in 2015.

Moreover, since several of the changes proposed in Congress closely resemble rules already in place in the several European jurisdictions, the Article’s findings are relevant to current U.S. policy debates on potential patent reform. The Article’s important and unprecedented empirical analysis enable comparative patent system policy debate in a way which previously was impossible."

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, October 15, 2014

Osborn - Ripple Effects in the Law: The Broadening Meaning of An “Offer To Sell" in Patent Law

Tonight, I recommend Professor Lucas Osborn's Ripple Effects in the Law: The Broadening Meaning of An “Offer To Sell” In Patent Law published in the Stanford Technology Law Review in 2014.

Despite the title, this article is not about the on sale bar. It's about infringing offers that can produce liability. As background, infringement occurs when someone makes, uses, offers to sell, or imports the patented invention during the term in the US without the owner's permission.

Currently, the infringing offer has to meet the contract definition of an offer. I think this is most workable standard in most cases, but the article argues for a broader definition. Here's the abstract: "The law's complexity is such that even apparently minor changes can have numerous 'ripple' effects. This Article examines the ripple effects from a potential broadening of patent law's definition of an infringing 'offer to sell.' Currently, courts limit 'offers' to formal, contract-law offers; but a policy analysis suggests that 'offers' should include advertisements and other promotions, which harm patentees via price erosion. Changing the offer definition to include advertisements and other promotions requires a careful consideration of the effects, including effects on patent litigation, innovation incentives, the extraterritorial reach of U.S. patent law, third-party liability, and Constitutional concerns. This Article performs that analysis and provides specific recommendations for crafting the definition of an infringing 'offer' to sell."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, October 14, 2014

US Supreme Court - Teva v. Sandoz - Standard of Review for Claim Construction

Some believe the next major patent case to be decided by the US Supreme Court is Teva v. Sandoz, which will address the standard of review for claim construction. Although the case deals with other issues such as claim indefiniteness, how the US Supreme Court handles the Federal Circuit's practice of de novo review of claims may be quite important, because US patent cases often turn on claim construction, which is considered to be a legal question despite the fact findings.

For details on Teva v. Sandoz see Mr. Lyle Denniston's SCOTUSblog article: Argument preview: Trimming a specialized court's power?

Copyright © 2014 Robert Moll. All rights reserved.

Monday, October 13, 2014

IP Navigator - The Future of Patent Monetization

Tonight, I suggest reading IP Navigator's The Future of Patent Monetization. It's well written and realistic, but the information is introductory. Bottom line-- you should carefully consider the costs before you launch into the business of patent monetization.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, October 9, 2014

Lex Machina Blog - September 2014 New Patent Case Filings Down 40% From September 2013

Wednesday, October 8, 2014

Plotkin - Software Patents are Only as Dead as Schrödinger’s Cat

I recommend Robert Plotkin's Software Patents are Only as Dead as Schrödinger’s Cat. It gives strategies for seeking US patent protection on a software invention. For example, it notes the examiner has the burden of proof to establish a prima facie case of patent ineligibility.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, October 7, 2014

Professor Dennis Crouch - Moving Toward A Way of Searching Through Cited References

Professor Dennis Crouch's Moving Toward A Way of Searching Through Cited References discusses the increase in reference citations in US practice over the last decade. The average is 50 references per patent, which sounds high, but he notes some cite many references skewing the average. 

Professor Crouch notes the need for software to search these references especially the non-patent literature. I note Adobe Acrobat's ability to convert PDF into searchable form.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, October 6, 2014

Morton & Shapiro - Strategic Patent Acquisitions

Morton & Shapiro's Strategic Patent Acquisition:

"We report data on patent litigation activity initiated by patent assertion entities and discuss the tactics used by these entities to monetize the patents they acquire. We develop a simple economic model to evaluate the effect of enhanced patent monetization on innovation and on consumers. We then study the economic effects of several different categories of patent acquisitions based on the type of seller, the type of buyer, and the patent portfolio involved."

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, October 5, 2014

PTAB - Denies Issue Joinder under 35 USC 315(c)

In Target Corp. v. Destination Maternity Corp., the Patent Trial and Appeal Board (PTAB) held that joinder under 35 USC 315(c) applies only to different parties and not to petitions filed by the same party.

Under 35 USC 315(b), inter partes review may not be instituted if the petition requesting it is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Target had filed a second petition for inter partes review after the one-year window to attack a patent claim that was excluded from the trial order of its first petition. Target requested under 35 USC 315(c) that the Director exercise discretion to join it as "any party" to that first inter partes review.

The PTAB held the petition was too late under 35 U.S.C. § 315(b) and denied joinder stating a petitioner filing a second petition after the one-year window cannot join as "any party" to its first petition because it is already a party.

The PTAB also stated absence from the statute of an express prohibition against joining another petition to an instituted inter partes review does not inform whether the authority to do so has been granted.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, October 4, 2014

USPTO - AFCP 2.0 and QPIDS Extended to September 30, 2015

The USPTO is extending the time for the After Final Consideration Pilot 2.0 (AFCP 2.0) program and the Quick Path Information Disclosure Statement (QPIDS) to September 30, 2015.

The AFCP 2.0 gives a framework for negotiations with the examiner after a final rejection and QPIDS allows submission of prior art after the issue fee payment. Both can lead to allowance without the delay and cost of a request for continued examination.

See USPTO Patent Application Initiatives Timeline for other options to advance progress of a patent application.

Copyright © 2013 Robert Moll. All rights reserved.

Friday, October 3, 2014

USPTO - Fee Schedule on October 1, 2014

Here's the USPTO fee schedule effective on October 1, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, October 2, 2014

Professors Mennel & Lefstin's - Rethinking Patent Eligibility for the Modern Scientific Age

Tonight, check out Professors Mennel and Lefstin's Rethinking Patent Eligibility for the Modern Scientific Age. This is something absent from the Supreme Court's rationale in Alice v. CLS Bank.

As stated in the abstract:

"As reflected in the Federal Circuit’s fractured opinion in CLS Bank v. Alice Corp., there is no greater confusion in contemporary patent law than that surrounding the scope of patent eligibility limitations. This Supreme Court amicus brief in that case traces the roots of the court-made doctrines excluding patents on laws of nature, physical phenomena, and abstract ideas. It argues that a test of inventive application neither serves the underlying purposes of the patent system nor comports with the process of modern technological advance.

As a result of advances in scientific understanding and methods over the past 150 years, many if not most inventions today explicate, manipulate, and control physical, chemical, biological, and digital phenomena at elemental, molecular, algorithmic, and systemic levels. Doctrines that treat conventional application of even newly discovered computer algorithms, molecular pathways, and chemical synthesis as unpatentable threaten to exclude much of the inventive thrust of modern research. Mayo’s requirement for unconventional application shifts scientists’ efforts from the valuable scientific and technological advances that society seeks toward surmounting an amorphous test of non-obvious implementation. Specific and practical application, in conjunction with the technological arts limitation explicated in Justice Stevens’s concurrence in Bilski, would better serve as the test for patent eligibility in the modern scientific and technological age.

Particularly in light of past experience, setting inventive application as the test for patent eligibility threatens to undermine invention incentives, hamper patent prosecution, and greatly complicate patent litigation. While recognizing that the problems posed by patents on software and other computer-implemented inventions are real, this brief contends that patent eligibility doctrines beyond requiring specific application and categorical exclusion of business methods and other non-technological processes are poorly suited to address those concerns. It therefore concludes that the Supreme Court should turn away from the Funk Brothers/Flook/Mayo paradigm, and instead focus on elucidating the statutory requirements of patentability. By clarifying the constitutional and jurisprudential foundation for subject matter exclusions, the Court can promote legislative and administrative solutions that more directly address the evolving needs of the patent system."

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, October 1, 2014

PTAB - Guidance on Discovery in AIA Trials

The PTAB published guidance on discovery practice in America Invents Act (AIA) trials:

Message From Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What Is the Difference?

Briefly, the article discusses routine and additional discovery, PTAB considerations in deciding whether to grant motions for additional discovery and how to succeed on discovery motions in AIA trials.

Copyright © 2014 Robert Moll. All rights reserved.