Posts Tagged: "Bob Stoll"

Clause 8 Podcast: Bob Stoll on Implementing AIA and Being Part of the First Family of IP

The patent community often treats the Director of the United States Patent and Trademark Office (USPTO) as the person responsible for setting and changing an administration’s patent policy. On this episode of the Clause 8 podcast, former USPTO Commissioner for Patents, Robert Stoll, says that’s a mistake. “The autonomy of the Director is not what people think it is on the outside who are not familiar with it,” he emphasizes. “It’s not your own voice. Any Director of the PTO has to work in their administration and carry forward what becomes the policy of the President. So, they’re not free hands with respect to implementing their ideas, and you just have to recognize that.”

Rest in Peace Friend: Remembering Donald Dunner

It is with great sadness that I write today on the occasion of the passing of a true legend in the patent world. Donald Dunner, a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C., passed away earlier today. “Don was a great lawyer and a wonderful man. He also gave enormously of himself, and his time, to our profession and its organizations,” said Todd Dickinson, former Director of the USPTO and current Senior Counsel at Polsinelli.  “It was a genuine privilege to work with him on many issues and to count him as a friend.” Indeed, aside from the many legal accolades Dunner so rightfully earned during his lifetime, he was as good and nice a person as he was an excellent attorney. Perhaps that shouldn’t be remarkable, but Dunner always had a grace and elegance that set him apart. He was a friend to judges and politicians, as well as a mentor to countless attorneys.

Will SCOTUS Solve the Section 101 Problem with Athena? These Patent Experts Hope So

Athena Diagnostics filed its petition for certiorari with the U.S. Supreme Court yesterday in Athena Diagnostics v. Mayo Collaborative Services. There is a strong argument for the Court to grant the petition, and patent stakeholders on all sides are sure to weigh in via amicus briefs over the next month. The petition could represent the best chance for clarifying Section 101 law in the near-term, since patent reform efforts on the topic have been seemingly stalled. Below are a few initial reactions from the patent community to Athena’s arguments.

USPTO Precedential Opinion Panel Delivers Lukewarm Attempt to Streamline PTAB Policy

In September 2018, the United States Patent and Trademark Office (USPTO) announced the substantial revision of Standard Operating Procedures (SOPs) for the paneling of matters before the Patent Trial and Appeal Board (PTAB) (SOP1) and precedential and informative decisions (SOP2), based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with America Invents Act (AIA) trial proceedings. Now, the USPTO’s Precedential Opinion Panel (POP)—which includes USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Acting Chief Administrative Patent Judge Scott Boalick—has issued its first ever decision, holding that a petitioner may be joined to a proceeding in which it is already a party; that the Board has discretion to allow joinder of new issues in an existing proceeding; and that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors to consider when exercising this discretion. Despite that guidance, the POP emphasized that such discretion should be used only in limited circumstances, “namely, where fairness requires it and to avoid undue prejudice to a party.” Because the instant request for joinder was filed as a result of Petitioner’s errors, the Board dismissed the IPR petition, noting that “there are no fairness or undue prejudice concerns implicated, and the Petition is otherwise time-barred under § 315(b).”

Don’t Give Up: Section 101 Allowances Are Up at USPTO

The data shows that Section 101 allowances at the USPTO are on the rise after a long period of decline, but the 101 situation still remains “alarming,” said panelists during IPWatchdog’s webinar—”A Tale of Different Software Innovations: The Uneven Impact of Alice”—last Thursday, March 7. While Congress is currently considering ways to address the patent eligibility problem, the likelihood of a legislative fix this year is slim, said Bob Stoll of Drinker Biddle. “I believe we will see introduction of legislation on 101 as early as this summer, but I don’t anticipate anything being enacted,” Stoll said. “There’s a lot more going on to occupy their interests on the Hill.”