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What happens to IP law in 2014?

Written by Robert L. Stoll
Partner, DrinkerBiddle
Former Commissioner for Patents, USPTO
Posted: January 2, 2014 @ 4:49 pm
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It’s 2014, and an angel calls me “grandpa”!  What happened to that teenage kid in the mirror — and who is the old man staring back at me?  Well, at least the acne is gone. Enough on the personal horrors of aging (which are way worse than any Hollywood syfy).  What happens to IP law in 2014?

Near the end of 2013, the Supreme Court granted cert in CLS Bank v. Alice on issues related to software patentability, and many expect that the sagacious Justices will clarify the confusion they created about patent eligibility in earlier decisions, like Prometheus, that were amplified in the splintered en banc panel on CLS Bank at the Federal Circuit. I prophesy that the best we can hope for is a Bilski-esque  vague instruction (wherein our top court opined that some business methods are patentable, citing the machine or transformation test as one viable test, without pointing to other valid tests and without enlightening the confused public.)

The Court is once again likely to limit software patentability in some arcane way that harms job creation and stifles economic growth. The bright side is that the Court’s failure to protect our largest growth industries may help spur the legislative branch into further action.  A decade of intermittent patent reforms has created a permanent cadre of patent lobbyists very willing to focus their considerable efforts and talents on a new patent issue.  It would be advantageous to the patent system if that attention were productively channeled to specifically include our emerging technologies in our patent statutes, and to legislate patent eligibility in a manner that treats 101 as the broad filter it was intended to be, while employing the other patent statutes, such as 112 and 103, to correctly provide the narrower filters.

Speaking of patent reform, I predict we will see some form of it enacted this year!  The momentum of a 325-91 passage in the House in December will translate into a touted troll-crushing response from the Senate, which might slightly affect the troll business models, and hopefully won’t negatively affect the patent system as a whole in the realm of unintended consequences. All bets on passage are off if expansion of the newly enacted covered business method provisions to include software finds its way back into the legislation.  Frankly, our pugilistic Hill dwellers would do better to legislate what constitutes a bad action than to demonize the actor; and to recognize that they have the power to fix much of the problem by allowing the USPTO full access to its funds to do a better job of examining patent applications and weeding out bad claims earlier in the process.

The Obama Administration is likely to nominate a Director for the USPTO in early 2014, finally!  I do not know why it has taken so long, but it speaks volumes about the disinterest or disinclination of the unelected and unconfirmed politicals in the White House to get political leadership at the USPTO in place.  I hope our eventual nominee is educated in the importance of strong IP for economic growth and job creation.  In the interim, I am pleased that Michelle Lee has been appointed as Deputy. (I only wish they would have done so in a manner that comforted Hal Wegner).  She is credentialed and could be a convincing voice at the IP table. Further Administration selections give me hope for a more balanced approach to patent issues in 2014.  Jeffrey Zients has been selected to head the National Economic Council and John Podesta will be joining Obama’s inner circle for a year as a White House Counselor.  Both are steeped in patent policy.  I also believe that the eventual nominee for the IP czar will know the copyright and trademark industries very well.

Another IP prediction is that Congress will grant fast-track to the Trans-Pacific Partnership (TPP). It won’t be easy and it won’t be pretty, and changes will be needed to the current text. We only learned about the TPP IP Chapter through an Edward Snowden leak. WOW, has IP come of age! My trade friends tell me you can’t negotiate a treaty like this in the open. Really? You can’t get information from the public, choose and defend a direction and produce a reasonable compromise text? Instead you get input from a group you select and ignore other voices.  So much for governmental transparency. But, the TPP is important and has the strong backing of industry, so after a significant “mea culpa” dance to the Hill and some tweaking around the edges, I think the negotiators will get fast-track.

My last IP prediction is that at this time next year, some new intellectual property issue will be roiling the IP troops and new terms or definitions will be entering our lexicon. The field is exciting, growing and taking on new importance, and I am glad to be a part of it.

Happy New Year to all!

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Posted in: Guest Contributors, International, IP News, IPWatchdog.com Articles, Patent Reform, Patents, Software

 

About the Author

Robert L. Stoll is a partner on DrinkerBiddle's Patent team and co-chair of the Intellectual Property Practice Group. Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. He was instrumental in the passage of landmark patent legislation, the America Invents Act, and lauded for his efforts to reduce patent pendency and improve patent quality. Bob was the 2012 recipient of Managing Intellectual Property magazine’s lifetime achievement in intellectual property award. He is currently serving a three-year term as a member of the Federal Circuit Advisory Council.

 

 


6 comments
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  1. I still think that protecting the Independent Inventors “Mom-preneurs”, is the most important effort needed. They should not be subject to the European requirements such as Maintenance Fees, Publication, and
    First-To-File. Corporations could continue making changes to the Patent Law as they have been doing for years.

  2. Here is a proposed amendment to 35 USC § 101:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    Patentability and patent eligibility of an invention shall be considered only for each claim taken as a whole, without disregarding any element of the claim based on the element’s presence or prominence in the prior art, the routineness or conventionality of application of the element at the time of filing, or the element being or embodying written matter, mental steps or processes, algorithms, abstract ideas, laws of nature, or natural phenomena. The inventive concept of a claim is the claim taken as a whole.

    Subject to the conditions and requirements of other sections of this title, patentability and patent eligibility of an invention shall not be negated by (a) preemption of any subject matter by the invention, including algorithms, abstract ideas, laws of nature, and natural phenomena; (b) a lack of a spark of genius or inventiveness embodied by the invention, beyond the conditions and requirements of other sections of this title; (c) the invention embodying a combination of elements known in the prior art or found separately in nature, so long as the invention satisfies the conditions for patentability of sections 102 and 103; (d) implementation of the invention in a computer, computer readable media, or a system including a computer; (e) an inventive concept embodied by less than a whole claim in its entirety; (f) consideration of any limit the patented invention would place on use of the invention; or (g) the invention comprising intangible or transient effects so long as a useful result is produced.

  3. It’s a bit too soon for new lexicon … that’s only one about every five years. :) We come up with new words to define the same sort of technological arts, concrete, non-transitory, non-abstract, tangible, specific machine, transsformation of matter, anything but a general purpose processor (okay, maybe that sometimes), sort of lexicography.

  4. We really need to enact criminal penalties for patent infringement. Has this proposal ever been considered?

  5. Thanks Bob,
    Its too bad that you are no longer representing the PTO on the Hill.
    [Who is?]
    Paul

  6. “The Court is once again likely to limit software patentability in some arcane way that harms job creation and stifles economic growth”

    I think that’s taking too narrow a view. Sure, it will limit the economic growth and number of jobs within the innovators’ comapny, but it won’t affect the whole market – other players will be free to take up a bigger market share. This means, for example, less jobs at Amazon and more jobs at B&N, but overall no change in the market size or economy. I don’t believe companies will reduce their R&D efforts as a result – companies like ours design products to sell, not to patent. If we don’t have legal exclusivity , we look for our marketing edge elsewhere – quality, reliability, service etc.