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Interview Sequel: Chief Judge Paul Michel


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: October 19, 2010 @ 6:30 pm

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The Honorable Paul Michel, Chief Judge of the CAFC (ret.)

In July 2010 I had the privilege of interviewing Chief Judge Paul Michel of the Federal Circuit, who had just recently retired from the Court effective May 31, 2010. Chief Judge Michel spoke with me on the record for over 1 hour and 40 minutes, and even then I only was able to get to a fraction of the topics that the Chief Judge agreed to discuss on the record. Chief Judge Michel agreed to go back on the record with me to address those additional topics, such as the confirmation process to become a judge, the state of the federal judiciary, funding for the Patent Office, Federal Circuit decisions over his tenure on the Court and more. We had our second interview on September 24, 2010, again at the University Club in Washington, DC.

The timing of the publication of this second interview with Chief Judge Michel is quite fortuitous. This evening the Federal Circuit Bar Association is holding a retirement party for him, together with dinner and dancing. Unfortunately, I find myself in San Francisco teaching the PLI patent bar review course and I am unable to attend. Renee Quinn is attending the event and will have a full report of the festivities, so check back tomorrow for more.

Chief Judge Michel has been enormously influential over his career, having been a federal prosecutor working on the Watergate and Korea-gate investigations, as a senior staffer to Senator Spector and for more than two decades sitting on the Federal Circuit. In this installment we talk about what he has been doing since he retired, his thoughts on fee diversion and an inside look at the confirmation process. We also discussed the confirmation process of Robert Bork and a federal judiciary that seems almost ignored by Congress, thanks to the fact that getting confirmation hearings completed has become nearly impossible.

Without further ado, Part 1 of my second interview with the Honorable Paul Michel, the former Chief Judge of the United States Court of Appeals for the Federal Circuit.

QUINN: Thank you, Your Honor, for taking the time to chat with me again today. I really appreciate that. Before we pick up with some of the questions that we didn’t have time for in our first interview, I was wondering if you might be able to tell us a little bit about what’s been keeping you busy over the last several months.

MICHEL: Well, as you know, Gene, I stepped down from the bench on the final day of May. And to my surprise, I’ve been as busy since as I was before. I’ve been traveling and speaking a lot, mostly on patent reform and funding the patent office adequately. There seems to be a huge interest in that in the broader patent community. I’ve been trying to concentrate mainly on the domestic front, but I was in Munich two weeks ago talking about the doctrine of equivalents on a panel with a German Supreme Court judge and a recently retired Japanese IP High Court judge. And that was a very interesting session. I’m headed for Chicago on Sunday and I’m delivering a keynote address to the Licensing Executive Society midday on Monday. And I’ll be talking to some general counsel in California next week. So I’m staying very busy with speaking. And I’m also conducting a series of meetings. I’ve met with union leaders, with some business leaders who aren’t patent lawyers. And more and more I’m trying to do outreach to people who are interested and affected by these issues, but aren’t themselves patent lawyers or a part of the patent community. So I’m particularly interested in talking to general counsel as opposed to chief patent counsel and to higher level executives in all the different companies and technologies. And that’s beginning to happen more and more. And then at the same time I’ve been doing mediations, mostly in patent cases. And that’s also turned out to be quite busy and very challenging and satisfying. And so “retirement” is kind of a misnomer. I’m as busy as I can stand to be in pursuing meetings, speeches, along with some articles, and also the mediation and case evaluation activities. And I’m finally at the stage of deciding whether to do all of my work in connection with the Intellectual Property Owners’ Education Fund compared to setting up some sort of separate small entity to support the advocacy and education that I feel drawn to do; to try to strengthen the patent system and patent office, other institutions like the customs service, and also the tribunals, the International Trade Commission and the district courts need a lot better support so that they can adjudicate the important patent cases much more rapidly than at present because we’re losing to foreign competition, partly because we’re way too slow. So that’s my agenda, and I’m about to decide how best to structure that.

QUINN: So you’ve been pretty busy. How have your meetings been going with the non patent folks? Are they receptive to the message?

MICHEL: I would say they’re surprisingly receptive given how little most people know about the Patent Office or how patents work. There is a sort of educational gap that you have to overcome with people who have not functioned within the patent system. But once the people get the basics straight in their minds, they become really quite interested. So I feel encouraged that non patent lawyers can understand, will care, and may press the decision makers, primarily the Congress, to do what needs to be done.

QUINN: Okay. Now, you also mentioned that you’re continuing to talk about patent reform and so forth. Do you have any predictions on the patent reform bill that’s currently pending or any thoughts on patent reform in general?

MICHEL: Well, I think the chances of the present Congress passing patent reform along the lines of either the House or the Senate bill look quite limited. I’m told that there’s no chance of Senate consideration before the election. And the best estimates I get, say that even in any lame duck session after the election, it’s not very likely that the Congress will get to the patent reform bill. And, of course, the House seems to have a very different version of patent reform that it favors. And I’m told that some of the people most strongly in favor of patent reform are actually against the Senate bill and would rather have no bill if they can’t have the House bill. So there’s a big divide between the House and the Senate. But to me the most important thing is not which bill has a better chance, or which bill is better, although those questions are important, too. I think the most important thing is that passing either bill would be highly counterproductive for the economy, for job creation, for business prosperity, for technological leadership, and on and on and on, unless the Congress first fixes the patent office. Because both bills thrust enormous new duties on a patent office that is already dysfunctional, that is so slow and so undependable as to be a huge impediment to business advance and technological progress. So I’m against both patent bills unless we first fix the patent system, which means more money, more flexibility, more authority for the patent office. They need a sharp increase in the number of examiners. They need to completely upgrade their computer systems, which are in terrible shape, as you know. They need more space for examiners. They need authority to open satellite offices in other cities. They need immediate cash to rehire retired examiners and pay current examiners overtime to jumpstart the effort to speed up the examination process, and also to improve the quality of it. So I think the focus on so-called patent reform is completely backwards, completely counterproductive. And what the country needs to do is first fix the patent office. And then once that’s done, craft a more careful bill than I think either of the bills are, and then move toward passage in that second stage.

QUINN: Do you think that maybe we’re approaching a time when we might want to consider either privatizing the patent office or turning it into a quasi-governmental body? And the reason that I ask that is just over the last couple of days the Republicans in the House have put together the Pledge for America. Now, not to get into a political discussion, necessarily, I tend to align myself more with that philosophy. But there was something in there, and I haven’t read it, I’ve heard it, that troubled me is that they wanted to put a freeze for hiring federal government employees. Which at a time when everybody’s tightening their belt sounds like a responsible thing, except for where we know the patent office is already undermanned, underfunded, and highly neglected. That was worrisome. So I wonder if we’re in a climate where we just can’t operate a patent office in the way it needs to be operated if it really is under government control.

MICHEL: Well, I don’t myself think that government control is the problem. I think Congressional diversion of fee money is the problem. And that definitely needs to be ended. The appropriators in Congress were poised to take about $230 million out of the fee collections for the current fiscal year. They were finally embarrassed into returning $129 million of the $230, but they’re still going to divert the rest, which I think is absolutely scandalous. So it seems to me that step one in fixing the patent office is permanently ending fee diversion. Step two is raise the level of fees in a careful way. Maybe in several steps. And if it’s necessary to make the patent office a quasi-governmental corporation in order to prevent Congress from siphoning off fee money, then I think that should be considered. But in terms of privatizing it, I don’t have much confidence in that being a solution. It’s really a resource issue. You need money, you need space, you need positions, you need new computers, you need new authority, you need new flexibility. All of those things require affirmative agreement and action by the Congress. So the problem, the bottleneck is the Congress, not the form in which the patent office exists, public, private, semi-public.

QUINN: Now shifting gears a little bit from that to maybe get back into some of the interesting stuff that I had to cut from our first interview. One of the things that I wanted to talk to you about, and it was admittedly maybe more topical at the moment of our last interview, was about the confirmation process in general. And one of the things that’s always occurred to me is is that the Robert Bork confirmation hearing seemed to be sort of a turning point in American history. And I was wondering if might be able to get you to give your thoughts on that having been somebody who’s gone through a judicial confirmation.

MICHEL: Well, I think that the Senate confirmation process for judges has become absolutely disgraceful and indefensible. It’s gotten steadily worse for the last 30 years. There was a judge on the court when I arrived at the Federal Circuit in 1988 who had been confirmed in less than three weeks. Now it can take three years. And it typically takes the better part of a year. Again, just using the Federal Circuit as an example, the court has 12 judgeships. Three of them are now vacant. So the court is operating one quarter, 25%, under strength, which is terrible for the patent community and the contractor community and all the other people who depend on the court to be prompt and careful. Now, Judge O’Malley was nominated, I believe back in February. So here we are practically October, and she’s not even out of the judiciary committee, much less confirmed by the full Senate. So I think the whole thing has become an absolute disgrace. I don’t know the answer, other than a need to return to a style of governing that has ebbed away steadily for several decades. But in the absence of cooperation between the parties and efficiency as agreed on value, I think the Senate should by rule or resolution require an up or down vote 90 days after people are nominated, period.

QUINN: Well, that would certainly get things moving along. Because it’s not just at the Federal Circuit that there’s these kinds of vacancies, correct?

MICHEL: There are 100 vacancies today, which is more than 10% of the judgeships around the country. So the judiciary, which is already embarrassingly slow in most civil cases, is operating under strength by more than 10% just because of the inefficiency of the Senate and the White House, and it’s been in every recent administration and every recent Senate. So it doesn’t seem to be a question of which party, or is it a more conservative administration or a less conservative. It just seems to be a breakdown in the process, a breakdown in discipline, a loss on the part of senators of valuing promptly filling judicial vacancies. And on top of the 100 vacancies, the judiciary is nearly a hundred under strength compared to its needs. So it’s really 200. It’s the hundred additional judges the judiciary’s been asking for for many, many, many years, but the Congress always brushes it aside. Plus the hundred vacancies. So we’re really 200 judges short. So it’s no sunrise that civil cases take five, six, seven, eight years to come to a final conclusion. And in the case of a patent, if you have a valid patent that’s enforceable and is being infringed, and you can’t get a final outcome for six to eight years, that’s totally unacceptable. We’re going to lose to foreign competition, we’re going to fail to create jobs, we’re going to fail to grow our existing companies. And tax revenues will go down, personal income will go down, everything will fall apart more and more if we can’t greatly speed up civil trials just like speeding up patent office examinations. Exactly the same problem. And at least 90% of the solution has got to be resources, not just talk.

QUINN: Yes. It strikes me that the best way–I mean, if I had been elected president, not that’s ever going to happen, but if it did one of the first things I would do would be to nominate people across the board. Because these are folks with life tenure that can really affect average people on a much more direct basis than any Congressman or Senator, or the President ever could. So it seems almost like there’s a naiveté in Washington about the importance of the federal judiciary.

MICHEL: I think there’s a huge problem in our whole political culture. That if something isn’t on the front page it’s not important. If it’s not on the evening news on TV, it doesn’t have high value. And that’s completely backwards thinking. Prompt selection of good judges is very important to the society, and the economy. But it’s not highly valued by the political leaders and the political activists. So this White House or the last White House, terribly slow on selecting judges. The Senate, terribly slow on confirming judges. Lots of judges held up, often for extraneously reasons. Some Senator’s mad because some project in his home state wasn’t approved by some department and he takes hostage of judicial nomination and says he won’t allow there to be a vote on that nominee until he gets his project in wherever it is. And I think that kind of tactic is just terrible and disgraceful. So I don’t see how this country is going to get on a productive pathway toward more prosperity unless we rearrange our priorities and make a high priority out of adequate funding for key institutions, like the patent office that’s a “job creator.” And like the federal courts, that’s a rights vindicator that adds value to patents. If you could get a final result in a patent case in a year instead of six years the value of a patent would go up. Well, that’s what we need, is the value of patents to go up and more incentives to invest and more R&D and more investment to scale up to production, and build factories, and hire workers, and beat foreign competition, and increase exports. Those are what we need to do. But the political actors have the priorities completely backwards. They’re playing around with symbolic things that are front page items, and they’re ignoring the innovation infrastructure, which really is the most important asset that this nation has.

QUINN: I would totally agree with everything that you just said. It seems that we live in a sound byte world. And if it can’t play on the cable TV news in 15 seconds, then they’re not interested in thinking about it, which is a sad commentary. And that can’t be what the Founding Fathers thought in consultation with the Senate meant.

All right, just moving one step away from that, but sort of in the same general area. When you were appointed, can you give us a sense of what the process was like? I don’t think a lot of people understand how judges get appointed and so forth. We know the process, you get selected, but the behind-the-scenes process is a mystery. Is it something that you lobby for or let people know you might be interested in, or is just one things leads to another?

MICHEL: Well, at the time I was working for Senator Specter in his senate office. And he asked me if I’d be interested in a judgeship because he had worked with me for seven years when he was the district attorney in Philadelphia back in the 60s. And we had started working together again in the early 80s when he first came to the Senate. And I told him, yes, I’d be very interested in being considered for a judgeship. And originally I was considered for a judgeship on the Third Circuit and then an opening came up on the Federal Circuit and he asked me if I would be as interested in the Federal Circuit as the Third Circuit, and I said, yes, absolutely. And I had not only worked so closely with him that I was well-known to him, but I had been at the Senate on my second tour, I’d been there in the 70s for almost two years, and then I was back in the Senate as a staffer, and a lot of the senators knew me and know my work. Senators on both side of the aisle. So even though it was last year of the Reagan Administration, and I didn’t even really have any very strong ties with the Reagan Administration itself, but I had a lot of support by senators. Particularly senators on the judiciary committee, but also senators who were not. And senators on both side of the aisle, and they made it happen, basically. And obviously, an important role was played by the attorney general and his advisors and by various people in the White House. But I think the main push really came from senators, and it was very much assisted by the fact that I was acceptable to the Democratic senators on the judiciary committee as well as the Republican senators. So that’s basically how it came about. A lot of it is luck. I mean I happened to be working for a senator who was a very influential, active member of the judiciary committee and who had a lot of credibility on legal and court-related matters because he had, unlike most senators, even the ones who are lawyers, he had done a lot of litigation. He really understood courts and judges and case law development and so on. And as a result he was highly trusted and respected by other senators on the Judiciary Committee. So when he told them that, well, Michel would make an excellent judge, they accepted that as true. And some of them had enough knowledge of me to be able to judge on their own. But those who didn’t I think were very strongly swayed by what Senator Specter said. And I actually think that’s a pretty good way to select judges. I don’t think people should be running for judgeships. I don’t think people should be maneuvering, you know, get campaign contributions for this elected politician, or that politician. I think that the organized bar often can suggest people, and that that’s constructive, and I think there’s a role for these commissions that many senators have formed. But however you do it, I think that it ought to be a selection of people who’ve shown in their career that they have the right kind of objective, neutral, impartial, fair approach to decision making. And I’d be very wary of people who are campaigning for the job. They may not have the best of motives, and they may not be the best people. So I’m for merit selection based on proven legal ability and temperament, which I think actually is even more important than law school grades or fancy clerkships or how much money somebody made in private practice. The real question is: do they have judgment, do they have discretion, are they able to sort out conflicting claims and inconsistent testimony? And are they going to work hard enough? I mean, we really learn it all from the lawyers. We don’t have any independent knowledge. So you have to study like hell. It’s kind of like being a permanent Ph.D. student where every single day you’re studying complicated, difficult, voluminous materials written by people who know much more about the subject matter than you do. So there’s a certain skill that that takes and people should be sought out for judgeships who have that kind of skill and the temperament. You know, I think temperament is the most important thing of all. Temperament and judgment are way more important than pure legal smarts.

QUINN: Now, when you got nominated, what was the first thing that you did? Do you remember? I imagine this was a pretty exciting time. Well, actually, maybe to take a step back. I’m assuming that this would be a pretty exciting moment in your career. Did you view this as a dream job? Did you know you were going to spend the rest of your career at the Federal Circuit?

MICHEL: Oh, yes. This was clearly the job of a lifetime. This was a dream job, especially for me with my particular legal interests. So I was very excited in the fall of 1987 when the Justice Department and the White House through several stages indicated that they thought well of me, and were seriously considering me for an appointment to the Federal Circuit. As I say, I was also considered originally for appointment to the Third Circuit. And so I was very excited. In December of 1987 President Reagan personally called me on the telephone to say that he had decided to nominate me and wanted to be sure that I was willing to serve and ready to serve. And of course I told him yes. Then in late February I had my confirmation hearing in front of the Senate. I was called along with two other judges. The whole hearing lasted about an hour, by recollection, coving the points on all three judges. So it was very prompt. The decision by the President was made in December and he called me. The nomination I think actually was sent to the Senate later in December or perhaps in early January. And by the end of February the hearing had been scheduled, it had been held. And in the meantime the FBI had very thoroughly investigated me. As I recall they interviewed 300 people, even though I already had an extensive set of security clearances and from Justice Department employment and Watergate Special Prosecutor employment they already knew tons about me. And even so, they interviewed 300 people, which I think is very appropriate. Federal Judges have so much power and it’s very little review of their power. And it’s very, very important to pick people of the highest possible integrity and intelligence, and self-discipline and so forth. So I think the thorough investigation was very appropriate. But it was fast. It was done rapidly by the FBI. Now these investigations often take six months, or eight months, or nine months, which I think is very, very unfortunate. And the hearing was promptly scheduled, promptly held, and didn’t drag on. It wasn’t controversial+. None of the three judges were considered problematic by senators on either side. And they moved the process right through. The hearing was on the 28th of February. The Senate voted within a week of the committee sending me forward to the Senate floor. So I was formally appointed by the President on the 4th of March and sworn in on the 8th of March coming off a hearing held on the 28th of February. So look how quick that was. And now every one of those steps could take many, many, many months.

So I was lucky. I went through an era where there was still cooperation between the parties, and where speed and efficiency was given a high value by the FBI, the White House, the Justice Department, particularly by the Senate Judiciary Committee, and that doesn’t seem to be true any longer.

QUINN: Now, your confirmation, that was after the Bork incident?

MICHEL: Yes.

QUINN: When do you suppose that this really fell apart? Do you know? When did things start to really grind?

MICHEL: Well, I think it got steadily worse. There was a lot of acrimony in the late 70s. And that kind of set the stage for the Bork hearing. I agree with you that the Bork hearing was a new low, and was a major turning point. But it was not by any means the first horror show in terms of delay and controversy, and so forth. My recollection is that Jack Miller was appointed in 1976. And that was the three week appointment. So I would say as of 1976 things were fine. And by 1986 even before Bork, Bork was ’87, things weren’t so good any more. And after Bork it was even worse. And, frankly, I think it’s gotten steadily worse since. Both parties take hostages. Both parties demonize the candidate of the other party’s president. In many cases, not every case, but many cases, and it’s all excessive and unnecessary, and I think that the motive is they’re trolling for dollars from highly motivated single issue groups. And they’re not really giving the highest priority to the overall needs of the country and the legal system. And that’s what they ought to be doing in my opinion.

—> Continue Reading — Part 2 of Interview Sequel with Chief Judge Michel

—-> Continue Reading — Finale: Michel on Appellate Advocacy

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About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

37 comments
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  1. Nice interview. Good background on the selection process. Suggest you look up meaning of “fortuitous”, It detracts from the effect of the article when a word is used incorrectly.

  2. Gene,

    A very interesting sequel interview with Michel. I completely agree with his view that, until you deal with the problems in the USPTO, there can be no true “patent reform.” What Congress has now in so-called “patent law reform” are misguided efforts to treat the symptoms that neglect the causes of the symptoms. I’m perfectly fine if this so-called “patent law reform” sinks with no survivors.

    I also completely agree with Michel’s assessment of the current approval process for judges by the Senate. Frankly, the Senate gets an F in how they’ve so politicized the whole judicial appointment process. I’m still angry with the Senate over “the Borking” and it was as Michel said, a disgrace.

  3. Arthur-

    Thanks for reading, but perhaps you should look up the word. I used the right word to convey the meaning I wished to convey. I think you are projecting really when you think I used the wrong word. The fact is the transcript became available yesterday, and I published it immediately, so it was fortuitous, which means it happened by chance.

    This second interview was scheduled in advance of invitations going out for Chief Judge Michel’s retirement party. Everything just coincided, so it would appear that you were distracted by the proper word.

  4. so slow and so undependable

    Has Judge Michel elaborated on what he means by “undependable”? It seems to me that from the Court’s perspective, all he sees is cases where the USPTO has failed. How would life be different at the CAFC if the Office was dependable? Fewer cases? Cases with harder issues to adjudicate?

  5. Gene,

    I think you are very fortunate or diligent or both for getting the chance to do this great series of interviews with Chief Justice Michel. To me it represents the ultimate insiders view of the issues, since he has been so intimately involved with them, and he doesn’t have any particular axes to grind, outside of looking out for the best interests of the IP community, and ipso facto the interests of the American economy and people, due to the jobs that IP tends to engender. It’s about time someone tells it like it really is, especially as regards what is happening in and/or to the Senate these days.

    He also seems to think much the way I tend to as regards *Patent Reform* and fixing the USPTO, the latter of which is absolutely critical in my opinion. I have been trying very hard to educate my Senators about the possible harm that every attempt at patent reform in the past 5 years that I have seen would do to the value of US patents. Add to that all the extra work that they would have added to the USPTO that is already buried in patent applications, and you have a recipe for economic disaster. I watched the House session where the proponents Jammed a House reform bill through in about 40 minutes, with the opponents to the bill being effectively not allowed to be able to make their case on the floor. I was stunned at how uninformed the House seemed to be as regards the importance of IP to us all. Fortunately the companion Senate bill died on the floor for lack of support and apparently because of rapidly growing opposition to it as written.

    Thanks!
    Stan~

  6. Stan-

    I think the key has to be focusing on fixing the Patent Office. Kappos et al are doing a great job in my opinion, but without more resources to address the decaying IT infrastructure and to hire more examiners and to reinvest in the Office to make it a vibrant going concern there is only so much Kappos et al can do.

    Kappos has great ideas and is showing results. I think everyone who has an interest in the system needs to try and do what they can to educate their representatives on the issues. We can talk about patent reform all we want, but at the end of the day the patent reform bill would have increased the responsibilities of the Patent Office without providing any more funding. That has to stop.

    I fear that we are losing a great opportunity to fix the USPTO. Kappos is a doer, but we realistically can’t expect him to stay there forever. We need to invest heavily in the Patent Office while we have a team there that will get the job done.

    I hope all is well.

    -Gene

  7. Mark-

    Based on the context and my conversations with Chief Judge Michel I think he is voicing the concern we all have, which is that the USPTO gets in the way of innovation because of the long pendency for applications and the backlog. My take on it is that he was referring to how it is not dependable for innovators.

    I believe we should be able to depend on the Patent Office to issue patents quickly on innovations that deserve to be patented. That would lead to the creation of assets, the acquisition of investment funds in many cases and lead to job creation.

    Chief Judge Michel says that the Patent Office is “so undependable as to be a huge impediment to business advance and technological progress.” I think he is addressing this concern directly.

    In terms of cases where the USPTO has failed, I think you would be surprised. I haven’t done a statistical review for some time, but historically the clear majority of appeals to the CAFC result in a decision that the Patent Office was correct. A lot of times those that affirm the Patent Office are nonprecedential or even summary affirmances, so you can get an inaccurate view of how likely you are to succeed in an appeal to the CAFC from the USPTO if you just look at precedential cases.

    -Gene

  8. EG-

    No great surprise that we agree, at least largely.

    I am concerned about patent reform in its current condition because of the loss of the 12 month grace period with respect to third party activities. I understand that a compromise may have been reached on that, but without floor time to amend we will never know for sure. If there is a compromise on that I could live with the patent reform bill, although calling it reform is probably not really proper. It is just a patent change bill, which actually would do more harm because it would require more of the USPTO without any more resources. So if it dies it dies. My hope would be it would come back, but not like it has over the past 5 years, with the same bill coming back over and over again. If we want reform we need to first fix the Patent Office, which means more funding so that Kappos et al can actually bring the USPTO forward into the 21st century. Kappos is the right man at the right time, but without funding his creative ideas can only do so much.

    In terms of the Bork thing, I completely agree. For reasons that are beyond me Congress continues to year after year hold the federal judiciary hostage. We need more judges and we need up or down votes on the judges that the President appoints, regardless of who the President is or what party they are affiliated with. If an extreme judge is appointed then vote no, but for goodness sake vote! This can’t be what the framers intended.

    I hope all is well with you.

    -Gene

  9. Gene,

    The impression I get is that David K is not a quitter, and is in it for the long haul, and I very much agree that losing this great opportunity to fix the patent office would be a real shame, simply because Senators and Representatives aren’t paying attention to the really important issues. You know David much better than I could ever hope to, but I was extremely impressed when he spent nearly 5 minutes answering one of the questions that I submitted during one of his public Q&A webinars shortly after he got into office. He looked Directly into the camera, and it was very obvious to me at least that he was genuinely concerned about American inventors and their current plight, and that he was talking directly to me and others like me. I suspect he is way too busy to try to reach out like that again in the near future, but at least he has the Director’s blog where it might be possible to reach him to express our concerns.

    Best regards,
    Stan~

  10. I appreciate the interviews with Judge Michel. I want to take this opportunity to respond to his comments regarding the so-called “patent reform legislation” to which I am greatly opposed.
    It is unfortunate that special interest want to tilt our patent law in their particular favor and against others, certainly there is nothing of reform in the proposed bills.
    Most egregious is the proposed change to a first to file system.
    First to invent is the jewel in the crown of our patent system. It responds to the primary principle of our patent system, which is that we will reward the act of invention. That event is what the patent system is or should be all about.
    First to file simply has no merit. The timing for filing can be sooner or later depending on an endless list of variables. For example, a small company may need to wait until the production prototypes are ready while a larger company may be able to file a chain of applications as the invention evolves from concept to product.
    In some environments, the patent application can be prepared and filed very quickly, in other cases it may take a lot of time; all of this for a variety of perfectly reasonable reasons.
    There is no merit in a patent system in which patentability is or may be subject to these and other variables that play into the timing for filing.
    There have been arguments made that first to file is needed for harmonization. That is simply a red herring. There is no harmonization detriment to first to invent, and in any case the USA should not have to surrender the major principle of our patent system, for what is at best hypothetical harmonization benefit.
    The next most egregious proposal is the opposition procedure allowing an attack on a patent within one year of its issuance.
    Of course we already have a re-examination procedure which is infrequently used and is expensive.
    The flaw in the proposed opposition process is that it would motivate patent owners to keep their patent under wraps for a year thus reducing the effective term of the patent. Of course the rich parties, big companies can do weekly surveys of patents that issue in their fields of interest, a process that individuals and small companies cannot afford. So, the big guys can get the benefit of this procedure.

  11. Lawrence-

    I think it is too strong to say that first to file has no merit. You say: “There is no merit in a patent system in which patentability is or may be subject to these and other variables that play into the timing for filing.” But we already have a patent system that puts a premium on the time of filing under first to invent. With 102(b) the actions of a third party can and do create patentability bars for inventors every day and without their knowledge. So, yes, there are reasons to wait, but waiting has real risks associated with it. If inventors want to take those risks, so be it, but from a patent standpoint it is best to file as soon as practical to cut off any possible 102(b) problems. In a nutshell, I think it is incorrect to focus on 102(g) contests and ignore 102(b) and act as if there is an absolute grace period that the inventor can enjoy as long as they don’t engage in activities themselves.

    I would also be curious to hear which small companies that you know of would be able to participate in an interference? Surveys show the cost of an interference is over $600,000 on average, and we know that most inventors and small businesses don’t have the documentation to prevail, or the diligence that is required. Thus, it seems to me that the parade of horribles regarding first to file is really the red herring.

    -Gene

  12. Thank you for your response Gene. I am surprised that you challenge my point, but maybe it’s just for good debate.
    Yes, we do have a one year grace period that cuts off the date of invention opportunity under 102(e), what we call swearing behind a reference. The one year limit is a fair compromise for a number of good reasons.
    But the fact that there is a time limit doesn’t contradict the comparison between our first to invent vs. a first to file system. It is still a comparison on a matter of fundamental principle for patent rights on the act of invention vs. some other (and I’m not sure what) benefit for first to file. In my practice we do a 131 declaration several times a year. In each such case the act of invention is, of course, the controlling event.
    The first to invent concept is mostly implemented under 102(e). Interferences are of course very expensive, but they are also very rare. We can debate interference in another context.
    What I haven’t heard is a reason that first to file is such a good idea that it should completely cancel a fundamental principle of rewarding INVENTION.

  13. Hello Lawrence,

    Right on the money in my opinion, and I find it a bit strange that some are so willing to buy the First to File scenario. When I was trying to find signatories to oppose the Patent Reform Act of 2007, I got in close contact with the folks heavily involved with the Coalition for 21st Century patent reform in order to reach out to as many inventors as possible. They were very helpful at the time, and I managed to get about 230 signatories to a letter to the Senate opposing the Patent Reform act, but I was blocked by a fellow inventor, of all things, apparently because he thought I was being mislead somehow. I found this to be a bit tragic, as I probably could have gotten upwards of 400 signatories if his very large ego hadn’t gotten in the way. (He seemed to be irritated that I was actually getting something done, while he was just ranting and raving about this or that) Gene will probably know exactly whereof I speak, so no need to flog a dead horse.

    I actually was personally contacted by Phil Johnson, who is still probably the lead IP attorney for J&J, where he talked to me on the phone for nearly an hour in an attempt to convince me that the FTF provision was not a problem at all. He very soon after that gave what I thought was some very good testimony during the House of Representatives hearings, in serious counterpoint to some of the IT testifiers, like folks from Cisco, Intel, and several others. The only inventor present was Dean Kamen, who spoke eloquently, but he was seriously outnumbered by rabid attorneys and the like from the IT sector. One has to wonder why Phillip was so concerned about changing my mind or what I wrote in my letter to the Senate. I tried to be polite and listen a lot, but he did nothing but reinforce my convictions about what a bad idea FTF would be. Some of the reform attempts have posited a FTF with a one year grace period, which seems completely ludicrous to me. Why should the rest of the the world care even slightly about the fantasy of a one-year grace period if the US goes to a FTF system? It’s already bad enough that the US has Harmonized such that I am required to allow publication of my application at 18 months if I desire to file any foreign applications, probably about 3 or more years before it is possible for me to be granted a US patent. Talk about your basic prior art!

    Best regards,
    Stan~
    BTW… I think Gene is gone for a few days, but who knows…

  14. Gene,

    The real red herring, so to speak, is that interferences happen in only about 1/10th of one percent of all patents in a FTI system. Dr. Ron Katznelson has documented the facts very carefully in that regard. The Real problem with a First to File system is that the derivation proceedings arising from a contested FTF issue are Much more expensive and fraught with many more ways for errors to occur than with a FTI scenario. According to Ron, they will also be about 10 times as likely to occur, on the order of one percent or perhaps much more. http://works.bepress.com/cgi/viewcontent.cgi?article=1057&context=rkatznelson

    Sorta makes the anti-litigation arguement for patent reform seem a little silly in my opinion. Where’s the harm? Because MS got caught several times and they have tons of money? That doesn’t seem to be a good reason to *reform* patent laws here in the US in my humble opinion, to the detriment of independents here in the US like myself. In fact it seems to be extremely arrogant and greedy from my perspective.

    Best regards as always,
    Stan~

  15. It’s already bad enough that the US has Harmonized such that I am required to allow publication of my application at 18 months if I desire to file any foreign applications,

    Isn’t that kind of a silly thing to be worrying about, when the foreign jurisdiction was going to publish your application at 18 months anyway? That’s exactly the sort of harmonization that doesn’t harm applicants at all, and so would FTF be if they could sort out this whole grace period/derivation nonsense.

  16. Lawrence/Stan,

    I won’t get into a debate over the “benefits” of first to file. Much of that depends on your perspective. For example, I’m not surprised that Phil Johnson at J&J favors first to file. As an international corporation, J&J is “de facto” in a first to file situation because countries (other than the U.S.) are first to file. When I was P&G I also favored first to file for the same reasons that J&J does.

    Now that I’m in private practice, and represent individuals/small businesses, my views on the “benefits” of first to file have changed. As David Boundy has correctly noted, first to file puts significant time and financial pressure on individuals/small businesses in protecting invention rights. (What I also suspect although I don’t have the facts to prove it is that individuals/small businesses in the U.S. are still far more entreprenurial in protecting their invention rights compared to their ROW counterparts.) Admittedly, failure to be first to file will prevent you from protecting invention rights outside the U.S., but many individuals/small businesses in the U.S. really only care about protecting the U.S. market. So being in step with ROW provides no “benefit” to these individuals/small businesses and, in fact, has significant downsides.

    The issue of interferences is definitely a “red herring” in the debate of first to file, versus first to invent. Most interferences are in the pharma sector and involve businesses which have the financial “will” to engage in this expensive proceeding. Individuals/small businesses don’t normally have the financial “will” to make interferences attractive. Instead, first to invent is a matter of reducing the time and financial pressure on such individuals/small businesses (as well as the patent attorneys/agents who represent them) in protecting invention rights in the U.S.

  17. Instead, first to invent is a matter of reducing the time and financial pressure on such individuals/small businesses (as well as the patent attorneys/agents who represent them) in protecting invention rights in the U.S.

    Since those individuals and small businesses can’t afford interferences anyway, wouldn’t they be better off feeling the pressure to file first? If they’re complacent about prior inventorship saving their second filing, but also unwilling/unable to enforce their prior inventorship, they are also operating in a de facto first-to-file system – and doing it wrong. They might as well be aware of the importance of getting their disclosure to the PTO in a hurry.

  18. EG-
    Thanks for the very interesting response. I can see why larger entities are mostly unconcerned about FTF a lot more clearly now.
    Stan~

  19. IANAE,

    I’m not disputing that, in a perfect world, the “best option” is for even individuals/small businesses to be thinking first to file. But we’re not in a perfect world, and most individuals/small businesses have limited budgets to spend on protecting invention rights (much more so that larger businesses). For example, many individuals/small businesses might be better off considering filing provisionals (done correctly) initially, but even provisional filings may take on greater time urgency in a first to file world.

    As I said the interference issue is a “red herring” for individuals/small businesses. What individuals/small businesses may still need is the ability to “swear behind” publication dates that a first to file world won’t allow. I frankly find the debate over having “grace periods” in the proposed first to file system for the so-called “patent law reform” perplexing as I view “grace periods” and first to file as being at opposite ends of the novelty spectrum.

    My question to you is this: why should individuals/small businesses in the U.S. give up what may be significant domestic competitive advantage for a system (first to file) that doesn’t appear to benefit them? Again, individuals/small businesses can choose to be as “diligent” (or as “tardy” with the attendant risk of losing the benefit of being first to the USPTO) as they decide is reasonable and within their pocketbook. The operative word here is “choice” which the U.S. first to invent system still provides for individuals/small businesses, and which a first to file system won’t realistically provide.

  20. My question to you is this: why should individuals/small businesses in the U.S. give up what may be significant domestic competitive advantage for a system (first to file) that doesn’t appear to benefit them?

    I would suggest that neither system gives small businesses a particular competitive advantage over large companies. Both are constrained by budgets, and large companies may even have greater difficulties in racing to the PTO because of their internal bureaucracy. If you’ve invented first, you should be filing first. For the small business that can’t afford an interference, first-to-file doesn’t increase the urgency of a quick provisional, only the awareness of that urgency, which would seem to benefit the small inventor. Their competitors are just as likely as they are (or perhaps more so) to provoke an interference or put a patent in their path by swearing behind their earlier-filed applications. I would even argue that someone else’s patent is a greater commercial impediment to a budding entrepreneur than the invalidity of his own, and FTF provides the added certainty that once you’re first to the PTO you can rely on your priority date.

    I also find the grace period debate a bit odd, and I suspect we only have it for the same reason small inventors object to giving up FTI. They’re not sure exactly what rights or benefits they have in the current system, but they’re sure as heck not going to give them up without a fight. It’s the imaginary “choice” provided by FTI – between an outcome they don’t like and an outcome they can’t afford. If people were aware of the (already existing) importance of getting to the PTO first, they would make sure their first disclosure was to the PTO, and they wouldn’t have to worry about grace periods at all. Or, if they preferred, they could still be as diligent or lax as their budget would dictate. Both systems give the inventor the same choice, with effectively the same risks.

    Having said all that, I don’t think FTF/FTI is the most important issue in the US patent system today. I honestly don’t believe it makes much of a difference to the vast majority of applicants. Harmonization is nice and all, but I’d much rather see the energy spent on adequately funding the PTO and improving examination quality, reforming inequitable conduct to promote sensible IDS practice, and allowing defendants to invalidate the patents that should never have issued on a balance of probabilities.

  21. Whoops, broken tag there. Only the first paragraph is quoted, the rest is my own.

  22. “Having said all that, I don’t think FTF/FTI is the most important issue in the US patent system today. I honestly don’t believe it makes much of a difference to the vast majority of applicants. Harmonization is nice and all, but I’d much rather see the energy spent on adequately funding the PTO and improving examination quality”

    IANAE,

    Couldn’t agree with you more. So-called “patent law reform” focuses on the “symptoms” (at best) of a patent examination system which is dysfunctional (Michel hit that nail right on the head), starved for funds (called Congressional fee diversion, but what I refer to as Congressional “theft”), badly managed in the past (I’m a registered Republican and I’m extremely angry at the Bush administration saddling us with the likes of Rogan and especially Dudas), and a completely misunderstood by Congress (as Mark Twain called it, trully an “insane asylum for the helpless”). Until we fix the patent examination system, so-called “patent law reform” is meaningless political posturing. In fact, if the patent examination system were fixed, we might not even have to talk about so-called “patent law reform.” My 2 cents for what it’s worth.

  23. EG writes in part:
    “My question to you is this: why should individuals/small businesses in the U.S. give up what may be significant domestic competitive advantage for a system (first to file) that doesn’t appear to benefit them? Again, individuals/small businesses can choose to be as “diligent” (or as “tardy” with the attendant risk of losing the benefit of being first to the USPTO) as they decide is reasonable and within their pocketbook. The operative word here is “choice” which the U.S. first to invent system still provides for individuals/small businesses, and which a first to file system won’t realistically provide.”

    Perhaps a few real world examples might serve to illustrate EG’s point. In the space of a few months, I happened to *invent* about 10 different ways to control wind turbines on paper. At that point I didn’t really know how well or if they would work, as trying to do computer simulations is not really feasible as far as I know. I needed some time to build small working models to see which would even work and which would be the best ones to pursue, which the FTI and the grace period allowed me to do without losing any patent rights. Under a FTF system, to be really sure I didn’t lose anything, I would have to have filed at least 8 applications so that I could experiment, to the tune of about $12,000 at the very least just for Provisional applications. (given that PPA’s would even be available in a FTF system.) As it turned out, none of them were satisfactory in my opinion, and I went on to some much superior methods, finally arriving at one that just blew all the earlier versions right into weeds. I would have been $15,000 into it, with absolutely nothing valuable to show for it in my opinion, either due to prior art I found later, or being too expensive to build, or both.

    Another good example is a small company that recently acquired a patent on a revolutionary new computer graphics method. They initially identified about 12 ways to do something similar, but while doing the research they ended up with about 32 methods if memory serves, until they had discovered through experimentation the method(s) that they eventually filed an application(s) for. (not sure about this latter, as it’s really none of my business) Under a FTF system it is most likely that they and myself would have never found the really valuable/worthy inventions that we did. My invention is still pending, so the jury is still on whether it is actually of value in a practical sense, but my 14-ft experimental *model* performed flawlessly in a very nasty 60-knot+ wind storm.

    Stan~

  24. Stan,

    Thanks for the addition of another real world example. Such examples from you and Ron Katznelson serve the debate well.

  25. Wow, I am really impressed and humbled by the very knowledgeable and thoughtful commentators on the subject FTI/FTF. Boiling it all down I still haven’t read a good reason for FTF, that is, how our patent system or applicants will benefit on a general rather than special interest basis. And, we do have both a principle and a good procedure (not interference, but swearing behind) for benefiting from FTI.
    Incidentally, did I read that the reform act of one chamber or both has mandatory publication, even if no patent is granted. That would also be shocking since we grew up with the notion that the exchange of the patent rights was in part at least for disclosing the invention. I do appreciate that that isn’t as significant as it used to be at least for those inventions that do go to market. How do you folks feel about it, if I am correct.
    I did read a letter from the IEEE to both the majority and minority leaders asking to pass the reform act. Who could write a similar letter asking that it be defeated.
    Also, the comments about fixing the PTO are right on target. The current administration is, in my opinion, moving in the right direction. One good change is in the merit system for examiners. The prior system (under Dukas) seriously undermined the PTO basic operation by rewarding actions that didn’t lead to completing prosecution, but instead made it very expensive. I had clients that just gave up from repeated RCEs and divisionals. For example I have a case in which every one of 20 figures of gradual examples of the invention are “species” restricted. I spoke yesterday to an examiner who recalled being taught that we are the “patent” office, not the “rejection” office. I remember when, in an interview, an examiner would actually work with me to find allowable claim language. I think we are returning to an attitude to get applicants the patents they are entitled to instead making it like an endless arm wrestle.
    Sorry for the change of subject.

  26. Lawrence,

    Yes I believe that is correct in one version, but I can’t recall whether it was the House or Senate version. The Senate version has changed quite a lot from the proposed initial version. To my mind what was the most worrisome thing about prior attempts at patent reform was Post Grant Review provisions in the 2007 bill for instance, where they wanted to allow anyone with an *economic interest* to be able to challenge the validity of the patent for a few hundred bucks in filing fees for the entire life of the patent, which would effectively suspend the patent rights for several years most likely, and would have been extremely expensive for the inventors to refute.

    Also the House and Senate versions of the current bill are very different, and the House has pretty much said that they wouldn’t consider the Senate version, as they seemed to have a falling out about what should be included in the final should it ever make it to the conference committee stage where both versions are passed and then have to be boiled down to a version that both can agree on. The most troubling thing about mandatory publication to me is that it would seem to violate the promise set out in the constitution, where the patent office keeps confidential inventions until they have been awarded a patent or Not. In the latter case the inventor can go back and keep trying, without he Whole World having access to their prior efforts. I don’t think I have heard a single argument for the benefits of FTF that I would buy. If it isn’t broken, why try to *fix* it? Just because MickySoft and the other IT guys think we should? There must be a reason that the US has been out-invented the rest of the world by about 6 to 1 in the past.

    I wrote a letter to the Senate about protesting the passage of the 2007 bill, and actually managed to get 230 small business and independent inventor signatories to it, and get it into the internal Senate e-mail system complete with a Senate document number through a sympathetic staffer, but I think this current version has already crashed and burned for this session, so they will have to start all over again in the next legislative session.

    Stan~
    stand@olypen.com

  27. Oops.. I meant out-inventing the rest of the world by 6 or 8 to1

  28. Under a FTF system, to be really sure I didn’t lose anything, I would have to have filed at least 8 applications so that I could experiment, to the tune of about $12,000 at the very least just for Provisional applications.

    Why not file just one? That would be way cheaper.

    Also, if you think FTI lets you just sit around and experiment without losing any rights in that situation, you’re deluding yourself. You’ll still want to be first to the patent office.

    Under a FTF system it is most likely that they and myself would have never found the really valuable/worthy inventions that we did.

    I don’t understand why people in a FTF system would stop doing research as soon as they had enough data to file a single patent application. Is there some limit of one application per person that I don’t know about?

    And, we do have both a principle and a good procedure (not interference, but swearing behind) for benefiting from FTI.

    There are other ways to skin that cat. Clearly you can’t swear behind an anticipation in FTF, but that’s kind of the point, and anyway if you have to swear behind an anticipation in FTI you probably have interference issues.

    For obviousness, you can try what Europe and Canada do – only use actually published art for obviousness purposes. That way obviousness reflects what a person skilled in the art would actually consider obvious, and you get to swear back a year and a half.

  29. Thank you both for a(nother!) interesting & useful interview.

    And best wishes for a continued nice (if to busy for me if I was retired) “retirement” for Mr. Michel.

  30. IANAE,
    File just one application for about 12 different inventions? I don’t quite follow your reasoning here, and divisionals springs to mind for me. Out of about 15 only one managed to survive, but I had no way of which was best at the time, and it took me nearly 2 years and a lot of expense to discover which was obviously the best. Ideas scribbled on napkins or the back of envelopes are not inventions. It used to be that the USPTO required a working model to be awarded a patent, but the sheer volume of inventions being produced here in the US alone made that impractical around the turn of the last century.

  31. File just one application for about 12 different inventions? I don’t quite follow your reasoning here, and divisionals springs to mind for me.

    I think you’re following the reasoning a little.

    If all you want to do is establish priority, there’s nothing wrong with throwing everything into one giant provisional (or non-provisional, even) and claiming priority to it later. You can even prosecute them as serial continuations, one at a time, until you find the one you like. No reason to pay a dozen filing fees for variations on a common theme.

    Then again, if you discover 32 things and only one of them ends up working, it’s just possible your art is so unpredictable that you haven’t actually invented anything until you find the one that works. Worse still, if you invent 32 things and they all work (but one is “the best”), and you can’t figure out how to patent them all together, someone has 31 ways around your patent.

  32. if you invent 32 things and they all work (but one is “the best”), and you can’t figure out how to patent them all together, someone has 31 ways around your patent.

    Not if you claim the other 31 that you invented.

  33. Very interesting interview. Michel is, of course, right about nearly everything. Fee diversion, for instance, is a scandal that is almost incomprehensible. In fact, I would be satisfied at this point if Congress could somehow get its act together enough to pass a patent bill whose sole provision was to end fee diversion; the other so-called “reforms” the legislature has presented seem like no more than window-dressing in comparison. If nothing else, putting an end to fee diversion — and thus providing the USPTO with much-needed funds — could provide some insight as to whether the office’s main problem has to do with lack of money or with some other failing. But when the PTO is completely crippled financially, it’s hard to figure out what else needs to be addressed.
    http://www.generalpatent.com/media/videos/patent-suits

  34. Does anyone know when and how fee diversion came about? Has it always been this way? I’m guessing Congress decided it wanted money and targeted the PTO as a revenue stream.

  35. David C-
    I think it was in the late 90’s some time, but am not sure why they started doing so. To date they have taken out a billion dollars out of the PTO so far, which I really think they should give back to the Patent office. Outside the IRS, the USPTO is the only other federal agency that is consistently self-sustaining through the filing and maintenence fees that inventors pay.

  36. David and Stan,

    Fee diversion started in the fall of 1990. How do I know that?: I was in DC when it happened. Fee diversion was part Budget Reconciliation (or as I call it Budget Irreconciliation) in the fall of 1990 as Congress endeavored to “balance the budget.” As I recall, at that time, Congress “skimmed” about $100 million from the USPTO budget. When we in the patent bar howled about this outright larceny ($100 milllion was a “drop in the bucket” relative to the budget deficit but its loss was going to be far more crippling to the USPTO), we were told it was a done deal, there was no point in protesting about it. Unfortunately, fee diversion wasn’t a one time thing but became a habit (now in its 20th year) with Congress, one that should have never happened in the first place.

  37. EG-

    Do you happen to know of any anti-fee diversion bills that might have been contemplated or proposed in the past? The reason I ask is that it might be possible to propose a very simple stand-alone bill to end fee diversion entirely here in the US that would find very wide support, I think it is safe to say. The hope is that fixing the USPTO will eclipse all the hasty efforts to *fix* the US patent system, where they generally don’t have the slightest clue about the long term effects of mucking about with US patent law.

    I plan to try to come up with something in the next week or so, and would very much appreciate your, Gene, and David B’s thoughts in the matter at the very least. It should be examined Very carefully for any ways to subvert it somehow, but as Les mentioned today, it would/could be just a very accurate arrow shot to help the USPTO to succeed. Personally I would also like to see Congress Give Back the 1.2 Billion they have taken out of the PTO budget over the last 20 years, including interest. The interest alone might amount to about $100,000,000 or perhaps much more. Congress decided to take another $70,000,000 away from the PTO just before they expired before this next Lame Duck session.

    Cheers,
    Stan E. Delo
    Port Townsend, WA
    stand@olypen.com