USPTO - Deputy Director Michelle Lee - Initiatives in 2015

Deputy Director Michelle Lee recently visited the Brookings Institution to talk about the USPTO's plans for 2015. For details see the USPTO video and Patent Quality Initiative.

Deputy Director Lee stated: "I've seen firsthand from the business side the importance that patents play, the exclusionary right they give, the protections they give innovators, businesspeople, and startups at the very early stages. If you're entering a market that is highly competitive, you need to have the assurance that you will have protection as you go up against some very steep and oftentimes well-funded competition. So for the USPTO to issue those patents promptly and accurately is critically important so that people invest in these developments."

This is absolutely right! Startups need great patents to penetrate markets. I would add that proposals to reform US patent law to defeat "patent trolls" should be viewed with the skepticism reserved for any other self-serving corporate lobbying. Why do large companies want to weaken US patents? To reduce patent license costs. You just say no to many efforts to license a patent, then knock down the audacious few who seek to enforce patent rights in court with favorable laws passed by Congress.

Copyright © 2015 Robert Moll. All rights reserved.

National Law Review - IEEE Clarifies RAND Commitment for Standard-Essential Patents: Institute of Electrical and Electronics Engineers

Tonight, I suggest reading the National Law Review article IEEE Clarifies RAND Commitment for Standard-Essential Patents: Institute of Electrical and Electronics Engineers, which describes the IEEE's policy change for patents relating to IEEE standards that was approved on February 8, 2015.

Copyright © 2015 Robert Moll. All rights reserved.

Professor Robin Feldman - Kimble v. Marvel Enterprises - Royalty Payments Beyond the Patent Term?

Professor Robin Feldman filed a Supreme Court amicus brief in Kimble v. Marvel Enterprises which is before the U.S. Supreme Court. This case reviews whether a patent owner's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se. 

Some of the highlights from that brief co-authored with professor Alice Armitage:

"The case concerns contracts in which the patent holder insists on receiving royalty payments after the patent expires. The doctrine of patent misuse, however, frowns on attempts to expand the time or scope of the patent.

Over the last few decades, some lower courts have tried to eliminate the doctrine of patent misuse by holding that patent misuse exists only if the behavior rises to the level of an antitrust violation

Petitioners in this case ask the Supreme Court to apply the antitrust rule of reason to patent misuse cases. The antitrust rule of reason, which is complex and burdensome, is commonly perceived to be the death knell for any antitrust case and would certainly be the death knell for patent misuse cases

In the brief, Professor Feldman argues that patent law is not antitrust law, and antitrust tests are not appropriate for patent law questions.

Antitrust law is primarily concerned with parties that have market power, but the patent rules apply to all patent holders, regardless of whether they have market power; One cannot ask the patent office to extend the patent for a few years because 20 years is not long enough to determine its true value. That is a decision for Congress to make.

Nothing changes if the 20-year term is ill-suited for a particular industry, such as the life sciences. (A number of life science groups have filed amicus briefs as ell.) Any arguments to this effect are appropriately directed to Congress.

It is certainly true that when the patent term ends, the patent holder will no longer be able to exclude all others from the use of its invention. With the patent system, however, every potential innovator matters. A contract provision that limits the capacity and incentive for even one potential innovator to make scientific leaps after the expiration of the patent disrupts the balances created by Congress in the Patent Act.

Professor Feldman urges the Court to clarify that antitrust principles are not appropriate for a patent law, and to allow the courts to develop flexible approaches, based on patent principles, to this types of licensing issues."

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Emod Idea Scale - Comments on Electronic Business Center (EBC)

Nearly everything at the USPTO is online today so our experience good or bad depends on the website interface. Apparently, the USPTO is aware of this and has recently upgraded the website, which so far is in my experience better. If you see things that could be better, I suggest visiting the USPTO e-commerce modernization project which has comments on what users find difficult, unexplainable, and think might improve the electronic business center (EBC).

I think this e-commerce modernization page is buried from the public view given the scale of the USPTO's web site. If the USPTO wants more user input, it should extend the ability to enter comments (yes it will need spam filtering) on the pages where the users go. Perhaps some tracking can be used to see where people are puzzled or having to work around issues so the USPTO can improve something many use regularly.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories

The USPTO announced US applicants will be able to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple countries on or about May 13, 2015.

Under the Hague system for the protection of industrial designs, US applicants will be able to register up to 100 designs in over 62 territories. Hopefully, this will greatly lower the cost of seeking foreign patent protection on designs.

Here is details from the USPTO announcement:

"U.S. innovators will soon have more options for pursuing multijurisdictional protection for new industrial designs

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs). This marks the last step in the membership process for the United States to become a Member of the Hague Union. The treaty will go into effect for the United States on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions where industrial design rights are desired. When the Hague Agreement enters into force for the United States, it will be possible for U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies. The Hague system for the protection of industrial designs provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application.

“U.S. accession to the Geneva Act of the Hague Agreement will provide applicants with the opportunity for improved efficiencies and cost savings in protecting their innovative designs in the global economy,” said Deputy Under Secretary for Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We are extremely excited about joining the Hague Union and contributing to the continued expansion and development of the Hague system which facilitates protection of industrial designs in design registration and examination systems alike.”

The Hague system offers applicants increased filing efficiencies and potential cost savings in pursuing protection for their innovative industrial designs. As envisioned under the Geneva Act, the United States will continue to substantively examine design applications and to grant design rights in the form of U.S. design patents, whether the application is filed pursuant to the Hague Agreement or as a United States design patent application.
USPTO will soon publish the Final Rules governing USPTO processing and examination of international design applications filed pursuant to the Hague Agreement in the Federal Register. The Agreement, Title I of the Patent Law Treaties Implement Act of 2012 (the implementing legislation for the Hague Agreement in the United States), and the USPTO’s Final Rules are all expected to go into effect on May 13, 2015. U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term.

The Hague system (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs) is expected to experience significant growth over the next few years with recent and expected additions of several countries to the member list. In addition to United States membership taking effect on May 13, 2015, South Korea became a member effective July 1, 2014, and Japan is expected to become a member in the same time period as the United States. Canada, China, and Russia are also among the countries exploring membership in the near future.

For non-press inquiries please contact David Gerk, Patent Attorney, Office of Policy and International Affairs (OPIA) at 571-272-9300."

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - New Website - How to Guide

The USPTO has published some guidance on using its new website:

"You’ve probably seen the new user-friendly www.uspto.gov by now, and we want to make sure you know about the easy navigation tools it offers. If you would like to take a quick look at the new shortcuts, please visit About the USPTO Website where you will find a video tour of these features.

                                                          .  .  .

The new navigation makes it easier to access information about our services and learn how to accomplish tasks; for example, the Quick Links menu will connect you to the most heavily used tools for searching, filing, paying, or checking on the status of an application. We’ve also grouped together materials for specific audiences such as inventors, patent agents, and educators. In addition, the new site is responsive across more devices, such as tablets and mobile phones. This redesign is the first phase of our work to upgrade users’ USPTO online experience. Future phases will improve our 'transactional sites'—the online tools and systems where you conduct business with the USPTO, such as filing for your trademark registration or paying the fees for your patent."
 
Copyright © 2015 Robert Moll. All rights reserved.

Federal Circuit - In re Cuozzo Speed Technologies, LLC - Affirms PTAB Decision on Institution of IPR and Broadest Reasonable Interpretation of Claims

In In re Cuozzo Speed Technologies, LLC, the Federal Circuit upheld the Patent Trial and Appeal Board (PTAB) decision on two issues:

1.  A decision to institute an inter partes review (IPR) is non-appealable, since 35 USC § 314 precludes all review stating a determination to institute an inter partes review shall be final and non-appealable. The Federal Circuit did leave the door open to challenge a decision if a mandamus shows PTAB "clearly and indisputably exceeded its authority" in granting a petition to institute IPR.

2.  Patent claims must be construed under the broadest reasonable interpretation, because Congress granted the USPTO authority to set the standard for claim construction in an IPR, the USPTO has long construed claims under BRI in PTO proceedings (e.g., reexamination, prosecution, and reissue), and a patent owner can amend patent claims at least according to the rules even if not in practice.

Judge Newman dissented from the majority stating claims in IPR should be interpreted narrowly as in court and 35 USC § 314(d) does not bar an appeal on institution of IPR, since it is intended to protect patent owners from harassing filings.

Copyright © 2015 Robert Moll. All rights reserved.

Gizmodo - A Bizarre Statistical Fact About Patents and Theft in SF

Today, I suggest reading the Gizmodo article: A Bizarre Statistical Fact About Patents and Theft in San Francisco. Among other things, the article argues that the huge increase in patent filings in SF is somehow related to crime in SF. The companion book for this article? How to Lie with Statistics.

Copyright © 2015 Robert Moll. All rights reserved.

WSJ - Patent Reform Bill Arises Again in Congress

Tonight, I suggest reading the Wall Street Journal article Patent Reform Bill Arises Again in Congress, discussing Congress' latest effort to change US patent law to address patent litigation abuse.

If you want details, here's Innovation Act 2015, which I will refer to as the Bill. If you want a brief account of Congress' latest patent reform, here's the key changes with brief comments:

1. Attorney Fee Awards - Current law permits the recovery of attorney fees to the prevailing party in an exceptional case, while the new law would require an award attorney fees to the prevailing party unless a judge finds that (1) the legal position and litigation conduct of the non-prevailing party was reasonably justified in law and fact; or (2) special circumstances (e.g., severe hardship to inventor) make attorney fee awards unjust. If the patent owner cannot pay the attorney fees, the court can make "the interested parties" (e.g., investors) pay the attorney fees.

My comment - This is a major change from the American rule where each party pays its own attorney fees. It will reduce patent litigation by smaller companies as they will now have to bear the risk of paying all of the attorneys if they lose and a court decides the legal position was unjustified and cannot establish special circumstances. No doubt many defendants may want this, but the Supreme Court's Highmark and Octane decisions adequately protect the "poor defendants" who hope to reduce patent litigation to just a "sport of kings."

2. Complaints Need Claim Charts - When a patent owners sues for patent infringement, the complaint will need to include a claim chart showing how the claim(s) read on the accused product or process except if it cannot be reasonably known before filing the complaint. Form 18 governing the content of complaints is eliminated, but not if you are pharmaceutical company.

My comment - this higher pleading standard will eliminate some patent infringement suits, because preparing a claim chart makes one stare at the infringement case. If you can't do a claim chart, maybe the case should not be filed. Placing the initial cost of a claim chart on the patent owner is better than asking a court to take on a poorly researched case that wastes court resources and defendant's money. Not sure eliminating Form 18 is useful. The Judicial Conference already says it plans to eliminate Form 18 in 2015 and why give pharmaceuticals "a free pass" on Form 18?

3. PTAB Claim Construction - The Bill proposes to replace the Patent Trial and Appeal Board (PTAB)'s broadest reasonable interpretation (BRI) for claims in inter partes review, post-grant review, and covered business methods with the court's narrower interpretation of claims.

My comment - This will help patents survive invalidity challenges in the USPTO, and better corresponds to the reality that patent owners rarely succeed on motions to amend claims.

4. Limit Discovery - This has a couple of parts: (1) claim construction must happen before much discovery occurs; and (2) only large companies or posting a bond will get discovery of non-core documents.

My comment - Claim construction before significant discovery sounds right, but saying a large company gets discovery without posting a bond only increases their advantages over a smaller company, and may raise disputes on whether certain requested discovery is "core" or "non-core."

5. Willful Infringement  - The Bill would require demand letters identify the patent, the patent owner, accused product, and importantly how the product infringes at least one claim of the patent.

My comment - This imposes another claim chart into the process of patent enforcement, which of course helps defendants avoid treble damages by merely showing a claim chart did not accompany the demand letter.

6. Transparency of Ownership - This penalizes a patent owner who fails to update the USPTO within 90 days on changes of ownership with no enhanced damages, or attorney fees and an award of attorney fees to the defendant who spent money researching the ownership information.

My comment - Patent ownership should be transparent during enforcement, but the consequences of missing the 90 day window sounds draconian. Paying the attorney fees to find out the actual ownership should suffice.

7. Stay of Customer Suits - Courts may stay (suspend) a patent infringement suit of a customer lawsuits when the manufacturer of the product challenges the patent.

 My comment - Why would anyone sue a customer?

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Patent Quality Initiative - Request for Comments and Notice of Meeting

Today, the United States Patent and Trademark Office (USPTO) published that it's seeking public input and guidance to direct efforts to improving patent quality.

The USPTO states it plans to "focus on improving patent operations and procedures to provide the best possible work products, to enhance the customer experience, and to improve existing quality metrics. In pursuit of these goals, the USPTO is launching a comprehensive and enhanced quality initiative. This initiative begins with a request for public comments on the set of proposals outlined in this document and will continue with a two-day “Quality Summit” with the public to discuss the outlined proposals. The conversation with the public held at this Quality Summit, complemented by written comments to these proposals, is the first of many steps toward developing a new paradigm of patent quality at the USPTO. Through an active and long-term partnership with the public, the USPTO seeks to ensure the issuance of the best quality patents and provide the best customer service possible."

In a blog post, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee stated "improving patent quality lies at the core of the U.S. Patent and Trademark Office’s mission, I’m pleased to announce the launch of a comprehensive new program, our Enhanced Patent Quality Initiative.

                                                         .      .       .             

As you may know, we’ve already been hard at work at the USPTO on numerous initiatives focused on improving patent quality. We’ve offered robust technical and legal training for patent examiners while rolling out new programs such as the Glossary Pilot, Quick Path IDS Program, First Action Interview Pilot, and After Final Consideration Pilot. We’ve worked to improve operational capabilities and information technology tools while expanding international work sharing efforts.

Our Enhanced Patent Quality Initiative allows us to further improve patent quality through direct and ongoing engagement. What do I mean by engagement? I mean robust discussions with the broader public, from a longtime patent owner to a Main Street retailer who has only recently begun to focus on these issues; from patent prosecutors to patent litigators and from patent applicants to patent licensees. We’re also having productive conversations within the agency—from examiners and IT staff to policy experts. By engaging all of these stakeholders, we are working to ensure the USPTO issues the best quality patents possible.

If you want to be a part of that process, we’d love to have you at our first-ever Quality Summit, an intense, two-day deep dive into patent quality that will include discussions among USPTO leadership, experts from the agency, industry and academia, and you. The Summit will be on March 25th and 26th at USPTO headquarters in Alexandria, Virginia. We’ll be looking at possible new initiatives the USPTO could undertake, all of which fall under our three identified Enhanced Patent Quality pillars:  (1) excellence in our work products; (2) excellence in measuring patent quality; and (3) excellence in our customer service.

You’ll find our agenda for the Quality Summit in our Federal Register notice. But even if you can’t attend our Quality Summit in person, you can participate via webinar and the Summit will be recorded for later viewing.  Also, the Federal Register notice lets you know how you can directly provide us your written comments, including reaction to the overall effort, thoughts on the initiatives under discussion at the Quality Summit, and any other suggestions for agency initiatives or undertakings. The formal comment period will remain open until May 6, but please understand that this in an ongoing dialogue. There will be many more opportunities for us to hear from you."

One person at the USPTO who will be particularly eager to read your comments and hear your thoughts at our Quality Summit is Valencia Martin-Wallace, the USPTO’s first Deputy Commissioner for Patent Quality. This newly created leadership position ensures a dedicated focus on the agency’s patent quality efforts. Deputy Commissioner Martin-Wallace brings a wealth of experience to this position. She’s worked at the USPTO for twenty-two years, serving as an examiner, Technical Center Director, and Assistant Deputy Commissioner for Patent Operations."

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Statistics & Key Decisions - Noon - 1 pm ET

The USPTO is hosting a webcast  to discuss PTAB statistics and key decisions from noon to 1 pm Eastern Time on February 3, 2015.

Here's PTAB's instructions for the free webcast:

Event address for attendees:
uspto-events.webex.com/uspto-events/onstage/g.php?MTID=ee4b8faff5a188332aaa6a752f4b6c292

Event number: 994 593 512

Event password: 123456

Audio conference:

Call-in toll number (US/Canada)

1-650-479-3208

Access code: 994 593 512

Copyright © 2015 Robert Moll. All rights reserved.