Industry Insiders Make Patent Wishes for 2012
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Jan 2, 2012 @ 7:15 am
It is that time of the year where we all start to look ahead to the new year, perhaps making some New Year resolutions that are sure to last for at least a few days. Over the past several years I write an article titled “Patent Wishes,” and two years ago I contacted a number of my industry contacts to ask them what they wish for moving into the New Year. See Industry Insiders Make Patent Wishes for 2010.
With that in mind I once again contacted some of my friends to get them to go on the record with their patent and innovation related wishes for 2012. I was lucky enough to get a number of very thoughtful responses from individuals with a variety of experiences.
So without further ado, here are the wishes of some industry insiders for 2012. Please feel free to add your own wishes to the comments, and stay tuned for my annual Patent Wishes article where I write about my own wishes for the year ahead.
Chief Judge Paul Michel (ret.)
United States Court of Appeals for the Federal Circuit
My 2012 patent wishes follow:
Above all, the Congress must commit to full funding for the USPTO, meaning the Office can spend all fees it collects without obtaining further approval. Not only for FY 2012, but permanently. Only then can operations at the Office be efficient.
Second, Congress must find enough taxpayer money to fix and modernize the IT systems, which are now “moribund” and provide work space for the expanded work force. At present, one-third of the Examiners lack office space and must work at home. This reduces access to experienced colleagues for the one-third of the Examining Corps with three years or less time on the job.
Third, despite “patent fatigue”, Congress must correct errors and omissions in the America Invents Act immediately for the good of the country. Otherwise the meaning of critical terms will have to be decided by the courts, which will take 5 to 10 years, a delay that our lagging economy cannot tolerate.
Meanwhile, the prosecution bar must stop flooding the Office with excess and grossly overbroad claims and drowning it with excess quantities of prior art. After all, inequitable conduct is no longer a threat. The Federal Circuit must clarify the claim construction regime and provide limited deference to the district courts. Finally, retiring members of the litigation bar should sign up as Administrative Patent Judges as should senior associates and younger partners, particularly women with younger children. Similarly, retired Federal judges should mediate and arbitrate patent cases. All these efforts together can get America, once again , enabled to “invent.” We need to eliminate examination, re-examination and appeal backlogs at the PTO, case backlogs in the district courts and the ITC, and appeal backlogs at the federal Circuit. Only then will incentives for massive new investment of private money by venture capital and like funds rise high enough to jump-start economic recovery.
As all of us in the patent community continue to analyze the impacts of the AIA, my wish for 2012 is that the PTO succeeds in promulgating rules that balance the interests of inventors, patent owners, and patent challengers and encourages confidence in our patent system. Congress must continue to support full funding of the PTO so that the programs and initiatives implemented in the Kappos administration continue and the new responsibilities under the AIA can be implemented successfully. Last but not least I wish all of by colleagues and friends in the patent community a healthy and happy new year.
Henry R. Nothhaft
Veteran High-Tech CEO
Author of Great Again: Revitalizing America’s Entrepreneurial Leadrship
Now that the America Invents Act will levy additional responsibilities on an under funded and overloaded Patent Office, end the disgraceful practice of fee diversion. My 2012 wish regarding U.S. patents and intellectual property is for Congress to quit treating Patent Office User Fees as a petty cash drawer!
My wish for 2012 is that the USPTO make serious efforts to have its staff, at all levels, conduct business in a manner calculated to get the job done, not just “move paper” and generate statistics. A few specifics come to mind.
Others have already pointed out that adoption of a rule similar to Federal Circuit Rule 36, permitting the USPTO Board to issue abbreviated decisions when long-winded findings are not helpful or necessary, would be a measure that would save time and assist the Board in chipping away at its workload.
Standard procedure for pre-appeal conferences is to advance an application to appeal if there remains at least one issue for consideration by the Board. It would be nice if the procedure would also include having the examiner provide a statement to the applicant identifying any issues/rejections that are believed by the pre-appeal panel to have been resolved/withdrawn. That would save a good deal of time for the applicant and the Office.
The Office might advance its mission by refraining from delaying prosecution over trivial matters. One that comes to mind is the practice of the USPTO of refusing entry of a response that includes something as trivial as an incorrect claim status designator (i.e., claim indicated to be “Previously Presented” when it is clearly being “Currently Amended”). Presently, the Office sends a notice to the applicant, requires a corrected paper to be filed and, thus, delays prosecution for several months while creating mere busy work for the office and the applicant. Such trivial matters could be addressed expeditiously in the next substantive action while prosecution proceeds apace.
If this exercise is about wishing, perhaps we should go for the brass ring of wishes. Maybe it is time that the Office adopt some sort of balanced approach to measuring examiner productivity which recognizes that merely generating office actions and accumulating “counters” is not the same as accomplishing the goals of the Office. Churning an application for one invention through an original application plus two RCE’s to generate as many as six “counters” leading to a complete examination of one invention is not the same as generating six “counters” by examining three applications for three inventions and completing examination of three inventions in two well-prepared office actions each. A more constructive measure of examiner productivity and quality would factor in not only how many counters an examiner accumulated in a given amount of time, but also the number of individual, originally-filed inventions the examiner addressed and completed in that time.
My wish for the New Year is directed to the CAFC. In recent years, we have seen an accelerating trend for issues, once addressed in the trial courts, to be resolved in reexamination proceedings at the Patent Office. This change of venue, with accompanying changes in burden of proof and other standards, has created uncertainty on a number points. The most notable uncertainty concerns the effect that an ex parte reexamination, completed after a District Court judgment, has on that judgment.
The recent split panel decision by the CAFC in Construction Equipment confirms the 2008 holding of In re Swanson: the Patent Office may cancel a patent claim in reexamination over a prior art reference, even where a District Court has previously entered a judgment that the claim is valid over that reference and the CAFC has affirmed that validity judgment. Especially upsetting to the dissenter, Judge Newman, was the additional that the party requesting reexamination may be the same party that had earlier lost both at trial and on appeal to the CAFC. All this is clear.
What is unclear, however, is the effect that the cancelation of the claims in reexamination has on the judgment. Must the patentee return the damages that it received by the judgment? If there is an injunction, should it be removed? In both Swanson and Construction Equipment, the panel decisions expressly declined to address these questions. If the CAFC decides to consider Construction Equipment decision en banc, (though it likely will not), it would be helpful for the judges to clarify the effect that reexamination determinations have on earlier District Court judgments. But a lump of coal is what I expect.
One of the more repetitive problems that I face in advising practitioners is the fact that it is often difficult to predict what set of ethical rules will be applied to their conduct before the Office: the OED’s rules or the practitioner’s state’s rules. The OED’s rules (and their interpretations) differ radically from many state’s rules, and so which applies can be outcome determinative. Often, of course, following the more stringent set of rules is the safe path, but sometimes which is more strict depends on the perspective. For example, if a lawyer has a conflict of interest between two clients, he must withdraw. But, if he abandons a client without cause, he causes unnecessary harm. So, saying “follow the more stringent conflicts standards” does not help answer the question.
My wish would be for the OED to adopt a set of rules that are more similar to the ABA Model Rules to at least reduce this problem, some. There will always be some variation (either because a particular state amended the Model Rules when it adopted them as its state rules, or because of interpretive disagreements), but having at least a common set of rules would help enormously to reduce this problem, which would help practitioners to know their obligations and reduce cost and anxiety for all mankind. Well, maybe not that…
My wish is that in an election year that will be decided on what to do with an economy stuck in the doldrums there will be a new appreciation of the creative geniuses who make life better for all of us– and a realization that strong intellectual property protection is essential for them to succeed. As former Patent and Trademark Commissioner Don Banner once told me: “It’s not engraved in stone that the U.S. will always be number one.” At that time I was too young to think that would ever really be in question, but boy did he know what he was talking about.
We’ve spent the inheritance we received from The Greatest Generation. They weathered the Great Depression, won World War II, and came home to build the most prosperous nation in history. Surely some of that genetic make up remains with us today. We face a choice between rewarding creativity or choosing “animal farm” economics based on the belief that innovative people will keep on producing no matter how many burdens are placed on them. Much depends on making the right choice.
As the great philosopher Yogi Berra said: “It’s hard making predictions, especially about the future.” Still, let’s keep our fingers crossed– and keep speaking out– so we chose the right path in ’12.
(My other wish is that my Pittsburgh Pirates finally break .500 this year, but let’s not get too crazy).
My Patent Wishes for 2012:
(1) That the anti-patent ideologues will go back to the anti-historical caves they came from.
(2) That the American people will gain a renewed appreciation of the fact that the secret of our country’s success is and has always been a democratized patent system that encourages ordinary people — including those without the capital to commercialize their own inventions (otherwise known as “non-practicing entities”) — to participate in invention and the patent marketplace.
(3) That the small entrepreneur — the source of every major technological breakthrough of the last hundred years — shall once again be favored by Washington patent policy rather than harmed by it.
(4) That the America Invents Act will be repealed before it inflicts too much damage upon our nation’s innovation ecosystem.
I have two wishes:
(1) I hope that the Patent Bar Exam doesn’t get too difficult as they start to test America Invents. The Exam needs to stay a test of the basic skill set needed to do this work: analytical skills, the black letter law of US patent prosecution, the key differences between old and new rules (e.g., first to file vs first to invent), and the ability to look up the details. Beyond that, it runs the risk of crossing over from serving a legitimate gate-keeping function to just being a barrier.
(2) I hear from firms all the time who are busy but afraid to hire, or only want to hire people with experience. I hope that firms will see their way clear to hiring the talented and enthusiastic (but maybe less experienced) people that I see all the time. It’s good for those hired, for the firm, probably the Patent Bar in general, and maybe society as a whole to give them a chance, give them some training, and alleviate some of the firms’ workload.
I wish that the Federal Circuit would definitively resolve the circumstances in which software is patentable subject matter. I wish that patent litigants would stop their increasingly elaborate efforts at forum shopping and sue each other in forums that actually have some connection to the parties. And I wish for peace on Earth and goodwill towards mankind. The latter actually strikes me as the most likely of the three.
President, Inventors Society of South Florida
I wish the USPTO would put the direct links to patent and trademark searching back on the home page. I remember the good old days when you could place the curser over the word patent or trademark and like magic a drop down menu would appear with the word search. You could click on the word and be transported to the next window then the next until you reached you goal.
Then they changed the format and put it part of the way down the second page. Sure, after you found it the first time, you most probably never really consider it a problem. However, I am guiding a lot of first timers who get very confuse looking at all the information on that second page.
Now imagine trying to explain this to a confuse newbie as you are running a little behind schedule, driving 80 MPH down the highway, with your cell phone breaking up. That is exactly how I found out about the most recent change to the home page.
Ron Katznelson, Ph.D.
President, Bi-Level Technologies
My patent wishes for 2012 are:
(1) That Congress will fix the America Invents Act before March 2013 by restoring the American grace period, thereby avoiding the stabbing wounds in the heart of American startup innovation.
(2) That my patent wishes for 2010 would come true. While significant progress has taken place at USPTO, the substantive material progress I wished for two years ago has not.
I have two wishes. First, I am hoping that the engine of innovation, which continues to charge forward, is able to continue recent momentum and drive the economy to ever higher levels of output and recovery in 2012. Second, I hope that patent practitioners and inventors spend appropriate time studying the first to file provisions in the America Invents Act. Under the AIA some aspects of what qualifies as “prior art” will likely be opposite common sense expectations of inventors otherwise unfamiliar with nuances of the new provision, opening strategy decisions that can begin to be made as early as March 2012.
My New Year’s wishes for patent law:
(1) Fully fund the USPTO – When I practiced patent law full time in the 1980s the time period to prosecute a patent application was too long. It is still too long. This may be a difficult problem to fix for many reasons but adequate funding of the PTO would enable the hiring of more examiners which should facilitate reducing prosecution time. This may become a significant issue as the PTO has to analyze, digest, and implement new administrative procedures to phase in the newly enacted patent law.
(2) Our legal system attempts to balance the multiple competing interests and policies the law is designed to further. The result is a system that is far from perfect but one that nevertheless seems to work pretty well. One bedrock principle is that appellate courts give great deference to factual findings by trial courts. This reflects an understanding that trial courts have real people testify. This allows the judge and/or jury to assess credibility and bias. It also enables the judge and/or jury to observe the “non-verbal” information communicated by witnesses and other participants in the court proceeding. Observing this non-verbal communication is important because a significant amount of information is communicated by humans non-verbally. In contrast, appellate courts typically review the trial court proceedings based only on a printed transcript of what was said in court. Hence, appellate judges do not have the benefit of observing any of the non-verbal communications that occurred in the trial court. In light of this an appellate court is free to review legal determinations by a trial court de novo but great deference is given to factual findings by the trial court. In patent law the meaning of a patent claim is based on what the claim would mean to person having ordinary skill in the relevant art at the time of invention. This is really a factual question but the Federal Circuit treats it as a legal question. This enables the Federal Circuit to give little or no deference to the trial court’s claim interpretation. My hope would be for the Supreme Court and/or the Federal Circuit to overrule prior precedent and treat claim interpretation as a question of fact.
Congress finally weighed in w/ the AIA. A few things are improved; most are not. I mention only one thing that most seem not to have noticed: the amendment to § 292 is stupid; its civil relief only duplicates Lanham Act § 43(a)(1)(B), 15 U.S.C. § 1125(a)(1)(B). I predict that it will accomplish nothing.
Wishes? My fondest wish is for the Supreme Court to quit reading anything beyond a utility requirement into 35 U.S.C. § 101. Moreover, stare decisis does not stand in the way.
This coming year, I wish that all independent inventors become more fully aware of the many details of the recently signed AIA, while positively adapting to a new playing field intended to spur innovation and job creation. I also wish for USPTO to gain sufficient access to the funds it annually generates, in order improve internal efficiencies and accelerate the patent review process. And, on a related note, I wish that more independent inventors will become aware of the United Inventor’s Association dynamic industry trade show efforts, specifically designed to showcase their innovation within designated Inventor Spotlight areas at the National Housewares, Hardware and PGA Golf Shows; as well as a rapidly expanding list of other national trade industry events the UIA is establishing.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.