One of the longest running features on IPWatchdog is our Industry Insider’s series, which started out many years ago with an annual “wishes” article. Each year we invite industry insiders to make patent wishes for the new year.
For my wishes, I’ll make three. First, as I did last year and the year before, I again continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice.With there major industry organizations supporting legislative reform, and several Senators seemingly serious, perhaps this wish will eventually come true eventually, although as of now it seems to be a long shot in 2019 given we have divided government once again.
Second, moving to the Phillips claim construction standard at the Patent Trial and Appeal Board (PTAB) was an important first step, but the patent system requires real uniformity. Director Iancu is correct when he says the forum of the dispute should not change the result, but that requires legislative reform to raise the burden to invalid claims. So, my second wish is for Congress to amend the statutes that created post grant challenges and provide for a real presumption of validity that requires invalidity to be proven by clear and convincing evidence. Sadly, this wish the same or less chance of becoming real in 2019 as my last wish.
Finally, as I did last year, I again hope the Federal Circuit dramatically significantly decreases its use of Rule 36 affirmances, and specifically stops using this docket management tool when cases are appealed from the PTAB and also with respect to appeals dealing with 101 patent eligibility issues. Rule 36 is a tool that is to be used when the underlying decision being appealed is clearly correct. Are we really to believe that over half of the Federal Circuit docket is made up of cases where the underlying decisions are so clearly correct that a one-word decision is appropriate? This defies sensibilities and logic, for example, in an area as uncertain as patent eligibility where the ruling one receives is wholly dependent upon the panel drawn.
Without further ado… I present the patent and IP wishes of our esteemed panel of industry insiders for 2019.
Chief Operating Officer
European Patent Office (EPO)
My wish for 2019 is for even more dialogue and exchanges between companies and inventors, and the EPO, with a view to further improving the functioning of the patent system. Next year that’s going to be particularly important because we’ll be developing and launching a Strategic Plan, which will be the EPO’s multiannual work programme for the next five years. At the end of January we’ll be launching a public consultation. So it would be great if our applicants could give us their input on how our services could better match their needs in the future and how we might continue to change for the better and build upon the progress we’ve made in recent years. We’re already investigating new initiatives, such as adding more flexibility into the timing of the patent grant process. But there are plenty of other opportunities for positive change that we can explore together with our applicants. So we’d love to hear from anyone who wants to give us their input.
In addition, we want to keep addressing developments at the global level and with our international partners because the market for digital technologies is a global one and innovators are increasingly active in multiple economic regions around the world. In our co-operation within the “IP5” group, (i.e. the EPO with the USPTO and the patent offices of China, Japan and South Korea), we have in recent years stepped up consultation with industry associations to better tackle the common challenges on both ends of the patenting process. This is clearly a promising way forward, which we should pursue also in 2019.
Roberta Romano-Götsch is the Chief Operating Officer of Mobility and Mechatronics at the European Patent Office (EPO). As Chief Operating Officer of one of the three technical areas at the EPO, Ms. Romano-Götsch has responsibility for leading 1,600 patent examiners, managers and administrative staff members in Munich and The Hague. In addition to leading Mobility and Mechatronics, she is also chair of the EPO’s Operational Quality Committee.
Chief Patent Counsel, IBM
I wish for a stable, balanced, and more certain, US patent system. In the period leading up to and including passage of the America Invents Act, the primary goal of US patent reform was the prevention of abusive patent enforcement by non-practicing patent entities. Many changes were made to address patent abuse, but some of those changes went too far and unduly weakened the US patent system. Adjustments to the patent system will be necessary from time to time, but given the uncertainty caused by the changes made in recent years, we should now strive to strengthen the patent system just enough to restore balance while minimizing the introduction of additional uncertainty. Kudos to USPTO Director Iancu for his focus on maintaining patent system stability while making efforts to reduce patent system uncertainty through incremental changes within USPTO control. I was pleased by Director Iancu’s public recognition that more certainty is desperately needed with respect to patent subject matter eligibility, joining several Federal Circuit judges expressing this same view. I am also thankful for Director Iancu’s public acknowledgement that Supreme Court case law has caused tremendous chaos by conflating subject matter eligibility with other statutory doctrines of patentability, and his expressed willingness to help with corrective legislation, which is sorely needed. Our primary interest should be optimizing innovation to promote global competitiveness of the US in emerging technologies.
Manny Schecter is Chief Patent Counsel and Associate General Counsel at IBM. Manny is active in IP policy matters including legislative, judicial, and Patent Office reform. He has worked his entire career, first as an engineer and then as an attorney, in various business units of IBM, achieving his current position in 2009.
Principle, Knowles IP Strategies
I wish that in 2019, the U.S. Supreme Court will study the U.S. Constitution and rediscover that it was not granted any power to create patent law.
I wish that the United States will take the steps necessary to be ranked Number 1 for 2019 in the U.S. Chamber International IP Index (GPIC) in the area of “Patents, Related Rights and Limitations.”
I wish that innovators will demonstrate their brilliance by making transformational advances in the treatment of cancer.
I wish that the U.S. FDA will streamline its clinical trial requirements to reduce cost and time.
I wish that all patent publications filed only in China and existing only in Chinese mysteriously instantaneously combust with no remaining record.
Sherry Knowlesis Managing Partner with Knowles IP Strategy. From 2006-2010, Ms. Knowles was the Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters and managed a global department of over 200 people in 12 offices. In 2008, Managing IP Magazine named Ms. Knowles one of the top 10 most influential people in Intellectual Property. In November 2011, Intellectual Asset Management Magazine listed her among the top 50 key individuals, companies and institutions that have shaped the IP marketplace in the last eight years. She has also been recognized by IAM Magazine as one of the top IP strategists in the world numerous times. Ms. Knowles is also a member of the Patent Masters faculty.
Vice President & Global Chief IP Counsel, Volvo Car Corporation
My intellectual property-related wish for 2019 is that some organizational, regulatory and/or judicial clarity (and sanity) emerges with respect to so-called standard essential patents (SEPs).
It is common knowledge that the automotive industry (and any industry facing disruptive change in the age of the Internet of Things (IoT)), has to respond to customer demand for so-called “connected” cars. These vehicles provide the ability to connect to the Internet to facilitate not only services such as emergency dispatch, concierge, maps, weather, traffic, driving analytics and satellite radio, but also autonomous driving functionality. With this Internet access, however, comes the question of whether the infrastructure in such vehicles need licenses from a multitude of individual patent owners and pools to implement 2G, 3G, 4G, 5G and other emerging standards in a way reminiscent of the smartphone patent wars that took place over the last decade.
Up to now, whenever the topic of standards is raised, the debate centers around whether those who hold SEPs – and their commitments through various standard-setting organizations (SSOs) to license such patents on FRAND terms – are in reality licensing under a reasonable royalty rate, and what types of licensing models are exactly fair and non-discriminatory. The academic and mainstream press, as well as global court decisions and regulatory bodies guidance are filled with approaches, analyses and commentary regarding these questions. However, what has not been addressed is a more fundamental question: who decides whether a patent is standard essential in the first place before we even get to the FRAND analysis?That is, no one is talking about the abuse in declaring essentially at the SSOs in the first place! In 2019, this simply must change.
Raymond Millien is Vice President & Global Chief IP Counsel at Volvo Car Corporation. The above is his current personal views and should not necessarily be attributed to his employer.
Partner, Drinker Biddle
Like any beauty pageant contestant, I would be remiss if I did not mention “world peace” or “a cure for cancer” or “solutions to climate change” in my litany of aspirations but my focus for this article will concentrate on patent issues.
My first wish is that the patent community unite to find a workable solution to the patent subject matter eligibility crisis. Even those who say they are happy with the status quo recognize that some innovation is being stymied by the Supreme Courts holdings in “Alice”. The misapplication of the standards set forth in that case are fostering declines in job creation and economic growth in the industries of diagnostic methods, personalized medicines and computer-implemented processes. If we could find an honest broker and include open-minded participants from all viewpoints, I think we could solve this problem. None of the current legislative proposals have much of a chance of being enacted but a solution that addresses the various view-points is possible if the public pushes for one and we all deal in good faith to solve the problem.
Another wish for 2019 is that we reach meaningful harmonization of our national and regional patent systems. The waste of the duplicative efforts around the globe is drawing significant funds that could be reinvested in research to improve the quality of life everywhere. Our international efforts went askew when developing nations wanted discussions on treaty instruments important to them related to biodiversity, folklore and traditional knowledge. Their requests were met with pushback from developed countries so developing nations prevented reform on harmonization. With blockage on the world stage, the developed countries did develop processes amongst themselves to somewhat reduce duplicative work but now is the time to redouble our efforts to reengage the rest of the world in true harmonization. We should jumpstart talks on subjects of importance to the developing world and table global harmonization. Everybody would get something they want!
Genies grant three wishes. I guess I would select “world peace” for my third wish from the beauty pageant contestant’s menu above. Because if we tweak our patent system to drive innovation a little better, we will eventually find the “cure for cancer” and “solutions for climate change”!
Robert L. Stoll has more than 40 years of experience in intellectual property prosecution. Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. Bob serves as an expert on patent matters, and is known as a problem solver for cases with peculiar issues and problems. He is now Co-Chair of the Drinker Biddle Intellectual Property Group, and a member of the Patent Masters Faculty.
Partner, Maier & Maier
My main wishes for 2019 are for the USPTO to invest in and modernize its information technology systems to improve reliability and certainty of patent rights and support patent examiners in performing higher quality searches while protecting the IT infrastructure from cyber attacks and intrusions that may can impact the integrity of USPTO databases. The USPTO needs to improve patent examination quality through better training and review of patent examiner work product with an emphasis on the development of tools and resources to leverage machine learning and AI capabilities in locating the closest prior art found in patent and non-patent literature databases. Boolean, natural language and semantic search tools now available are becoming outdated and newer technologies are becoming available to aid patent examiners in the early stage of the examination process.
Stephen Kunin is currently a partner with Maier & Maier. He serves as an expert witness and consultant on patent policy, practice and procedure. Mr. Kunin served three decades at the USPTO, including 10 years as Deputy Commissioner for Patent Examination Policy. Mr. Kunin is also a member of the Patent Masters faculty.
Patent and Trade Secret Litigator
Here are my wishes for the IP community for 2019:
That Director Iancu succeeds in all of his proposed reforms to increase predictability in the patent system.
That Congress finds a way not only to fix Section 101 but also to return IPRs to their original design of a limited window of attack for all comers, allowing inventors to achieve quiet title at the PTO.
That trade secrets continue to gain respect with countries around the world, reflected in legislation that consolidates relevant laws and that recognizes the critical need for access to proof.
James Pooley has over 35 years experience as a successful Silicon Valley trial lawyer. Pooley possess deep knowledge of patents and trade secrets. In fact, Pooley has quite literally written the book on trade secret law, with his latest title “Secrets: Managing Information Assets in the Age of Cyberespionage”. Pooley is also a Member of the IP Hall of Fame, inducted in 2016, and he spent 5 years serving as a diplomat and manager of the international patent system (PCT) as Deputy Director of the World Intellectual Property Organization.
Partner, American Continental Group
Wish #1: Congress acts to clarify Section 101 Patent Subject Matter Eligibility Standards
Congress should consider legislation to address recent Supreme Court decisions that have unfortunately narrowed the scope of patent protection for life sciences and software technology by expanding judicially created exceptions to patent eligible subject matter. A few companies are pleased with the new law on subject matter eligibility and therefore are vocally opposed to any legislation. However, the PTO Director has highlighted the new uncertainty and unpredictability of this area of the law resulting from the recent Supreme Court decisions, and a large and growing number of associations from the IP community are asking for a legislative solution. As Justice Stevens said in his dissent in Diamond v. Diehr, these Supreme Court decisions regarding the patentability of program-related invention “do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable.” To rectify the situation, Congress should promulgate legislation to restore the scope of subject matter eligibility in a clear and technologically-neutral manner as it intended when it passed the Patent Act of 1952.
Wish #2: The PTO hires a new CIO to oversee an overhaul of the agency’s IT systems.
The position of PTO CIO has been vacant since Nov. 3rd 2017, when former CIO John Owens left the agency. During recent public PTO events, leadership has stated that they’ve received a substantial amount of applications for the position, and the expectation is that a new CIO will be selected in 2019. The selection of a permanent CIO is essential to the future stability of the PTO IT systems. Over the past year, PTO users have suffered from a number of IT failures, including the eight-day Patent Application Locating and Monitoring (PALM) database outage in August 2018. It is my hope that a new CIO will bring a focused, detailed vision of how to modernize and maintain the PTO’s IT systems. The near-term focus of the CIO should be on acquiring examiner tools that aggressively incorporate the latest artificial intelligence (AI) and machine learning capabilities being developed in the commercial world. Hopefully, any new modernization efforts will also include a balanced use of both PTO employees and outside contractors so that the agency is not left in a sub-optimal situation if/when key personnel depart.
Wish #3: The PTO continues to improve its ability to support the Public Dissemination of Data (PDD) systems which update and share millions of patent and trademark documents daily.
The PTO currently provides the following patent and trademark bulk data available to anyone free of charge: Patents (grants, published applications, assignments, classification information, and maintenance fee events) and Trademarks (registrations, applications, assignments, and TTAB proceedings). Hopefully this service, whereby patent and trademark bulk data is made easily accessible and at no cost to the public, will continue in the New Year, and will be improved by the use of newly-developed technology.
Wish #4: U.S. and China will finalize an agreement to curb Chinese IP theft and avoid a long and costly trade war between the two countries.
In August 2017, President Trump signed an executive memorandum ordering an investigation into China’s alleged theft of U.S. intellectual property through forced technology transfers and cyber theft. The USTR investigation concluded in March 2018, and resulted in $34 billion in trade action against China, followed by an additional $16 billion in June. China retaliated with its own tariffs against the U.S. President Trump later directed USTR Director Lighthizer to impose another $200 billion in tariffs on imports from China beginning 24 September. These additional tariffs related to the USTR’s determination under section 301 that “the acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation covered in the [section 301] investigation are unreasonable or discriminatory and burden or restrict U.S. commerce.” These tariffs were set at 10% initially and were scheduled to increase to 25% on 1 January 2019. One of my New Year’s wishes is for a de-escalation of the current trade antagonism between the U.S. and China. There are some signs of hope: in late November, President Trump and China’s President Xi Jingping agreed to suspend new trade tariffs and start a 90-day negotiation period. Wu Handong, an adviser to China’s Supreme People’s Court, has indicated that China is accelerating the approval of a revised patent law in part to address U.S. concerns. Mr. Wu said the draft was submitted to China’s legislature earlier this month and is expected to be approved next year. Revisions, he said, would subject violators to greater administrative penalties and fines. Whether any such changes that emerge are sufficient to meet U. S. concerns remains to be seen. However, China has motivation to address its intellectual property policies in a manner that reduces current trade tensions. China’s growth rate is declining, and the country is more dependent on trade than the United States. Although its authoritarian government can more readily mobilize public support and force its citizens to absorb short-term costs in the name of long-term development, its ability or willingness to do so is not unlimited because of various other internal pressures on the Chinese government. Moreover, now that China is developing its own innovative and creative industries it has greater long-term interests in providing adequate protection to intellectual property in both a domestic and international context. The United States, of course, is not immune to the costs of a trade war with China as attested by the recent volatility of U.S. markets. Earlier this month, the USTR issued a Federal Register notice postponing the tariff increase 25 percent rate until 2 March 2019. Hopefully the New Year will bring a deal that adequately addresses alleged theft of U.S. intellectual property while keeping Chinese markets open to U.S. owners of intellectual property.
Marla Grossman is a partner at American Continental Group, where she helps her clients with strategic public policy planning and representation before the White House, US federal agencies, and Congress. Grossman’s particular areas of expertise include intellectual property, technology, competition and trade policy. With decades of experience inside the beltway, including as counsel to the Senate Judiciary Committee, Marla is a true powerhouse on the intellectual property scene.
Last year my wish for the executive branch of government to cease attacking inventors was granted when Director Iancu was appointed and immediately reformed the agency. However my wish for the judicial branch to uphold the right of inventors to have a trial before a real judge and jury was denied by the Oil States decision. This year my wish is for the legislative branch to pass a law to 1) prohibit the USPTO from taking patents back from inventors, 2) require courts to issue injunctions prohibiting the use of a patented invention without permission, and 3) prevent infringers from profiting by using a patented invention without permission. I with that lawmakers in the House and Senate as well as the President will come to recognize that inventors today lack these protections that are essential for our future economic prosperity. I hope that a few thousand inventors will join me in this effort by signing the resolution at usinventor.org/resolution.
Josh Malone is Founder and President of Tinnus Enterprises, and a Fellow with U.S. Inventor. He is best known as the inventor of Bunch-o-Balloons, a device and method for filling up 100 water balloons in 60 seconds. His invention was knocked-off by Telebrands, and after years of litigation in federal courts and at the PTAB his patents have survived, but only after tens of millions in legal fees. Josh is now a vocal advocate for patent reforms that aid independent inventors.
Image Source: Deposit Photos