The America Invents Act (AIA) has now gone through its second phase of implementation. Initially there were few things that went into effect over the initial 90 days after President Obama signed the legislation into law. The first major wave of the AIA took effect on September 16, 2012. See, for example, Citation of Prior Art, Supplemental Examination, Oath/Declaration and Post-Grant Review et al.The most significant of the changes to U.S. patent law, namely the shift from first to invent to first to file, will not take place until March 16, 2013. This is a monumental change to U.S. patent law so it is never too early to discuss the many issues that will present with this shift.
The first and most obvious place to begin any discussion of the shift to first to file is with a very basic question: What is prior art? This is anything but an easy, straight forward question even under first to invent laws that we know so well and have been familiar with virtually throughout the entire history of the United States. The complexity in what seems an otherwise simple question stems from the fact that prior art is defined by statute. There is no common sense way to conceptualize what is, or what is not, prior art.
The theme of the AIPF annual meeting this year is “intellectual property as a corporate asset.” There are indeed presentations sprinkled across the two days of this meeting that relate specifically to this topic. Another recurring and equally treated topic is the use of the Internet in practice in a variety of contexts — attracting clients, networking generally and use of the Internet for investigations.
I’m not going to rehash my entire day at the AIPF meeting, but there were several presentations that I found particularly interesting.
The Invisible Hand: Models for Monetizing Patents in the 21st Century
The first speaker of the day is Richard M. Ludwin, Associate General Counsel for IBM Intellectual Property Law. He is speaking about patent monetization. One of the first points he made was that intellectual property lawyers are different than many other lawyers because our work-product directly relates to the product that hits the market. That is, indeed, one of the things that makes patent practice exciting. From my perspective it is quite exhilarating to work with a client to figure out what pieces and parts of the grandiose innovation are likely to be protectable. Find that core and you can build in a direction that is unique, and which can be yours.
As you may have already heard, effective — October 2, 2012 — the United States Patent and Trademark Office will be adding a significant volume of newly testable material to the Office’s Registration Exam (i.e., the “Patent Bar Exam”). Specifically, the USPTO has added six new testable documents to the Patent Bar Exam, with these newly testable documents coming in the form of six Federal Register Notices. All of this is thanks to the America Invents Act (AIA). See AIA Phase 2 Implemented.
Does this mean that the Patent Bar will become more difficult? The answer to that question isn’t a simply YES or NO. So let’s break this down into two different questions. (1) Will the questions be more difficult on the Patent Bar Exam? (2) Will it be more difficult to pass the Patent Bar Exam? While exam questions likely won’t get more difficult, it would be naive to believe the Patent Bar will not become much more difficult with the addition of complicated new rules that only add to the legal and regulatory rules administered by the USPTO.
Let’s go back to the first question about the questions on the Patent Bar. Once upon a time the Patent Office administered the Patent Bar Exam once or twice a year to thousands of would-be patent attorneys and patent agents across the country. The October 2003 exam was the last exam administered in this way. The USPTO changed the examination to an on-demand examination that is prepared by the Patent Office, but administered by Prometric. Because questions are randomly served from the database and no two people take the same exam the Patent Office had to normalize exam difficult someway, so they scored questions on a scale of 1 to 10 in terms of difficulty. This ensures that each person gets an exam that the Patent Office deems to be of the same level of difficulty. Thus, the new material will be fit into the database and appropriately evaluated. There will not suddenly be questions of 11 or 12 level of difficulty. So in this respect each question will not be more difficult, at least from the Patent Office perspective.
At 2:30pm on Monday, October 1, 2012, I will be speaking at the annual meeting of the Association of Intellectual Property Firms (AIPF). My topic is the business of blogging for lawyers. This is a topic I have written about, and spoken about, in the past. Given the trajectory of my career over the past seven years the topic is one near and dear to my heart. While I have been operating IPWatchdog since October 1999, which almost doesn’t seem possible, I left full-time teaching in the summer of 2005. It was at that point that I started devoted full-time attention to IPWatchdog.
Many in the industry know that my professional persona causes me to wear several different hats. First, I teach a patent bar review course for the Practising Law Institute, which takes me out of the office for 6 days at a time between 8 and 10 weeks a year. I also have a patent practice at Zies, Widerman & Malek, which primarily focuses on software and Internet technologies. But the overwhelming majority of my time is spent with IPWatchdog.com, which is my blogging hat. Of course, blogging also leads to clients for me and the firm.
Blogging can lead to name recognition, establishing one as an expert and ultimately leading to client development, which is why many attorneys are interested in learning about how to go about “this blogging thing.” Like everything in life, there are steps that can and should be taken to pursue the path. So if you are interested in blogging for business let me give you some advice.
Director Kappos delivering remarks during the FTF Roundtable, Sept. 6, 2012.
On September 6, 2012, the United States Patent and Trademark Office held a Roundtable on the campus of the USPTO in Alexandria, Virginia. The Roundtable event was for the purpose of the USPTO accepting feedback from the user community on the proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.
While there were many issues raised, the one issue on which there seemed overwhelming consensus (although not unanimity) was with respect to the USPTO’s interpretation of the new grace period. A substantial majority of those who offered comments disagreed with the USPTO’s interpretation of 102(b)(1)(B), which pertains to disclosures made by third parties. The USPTO’s interpretation of this provision was set forth in the Federal Register on Thursday, July 26, 2012.
After the pre-scheduled speakers concluded their remarks at the roundtable those in attendance were invited to make remarks. At that time I was recognized and went to the podium to speak on behalf of the USPTO interpretation of the grace period. After my remarks there were no other remarks, but a Q&A session began, with many of those who spoke asking questions of the USPTO Officials in attendance, who were surprisingly willing to provide insight into their interpretations. I say surprisingly because these events are typically not a forum where the USPTO shares information.
Many inventors operate under the misunderstanding that getting a patent is like owning Boardwalk and Park Place in the popular board game “Monopoly.” Increasingly, many journalists and patent haters are operating under the same fallacious assumption. The carelessness with which the patent right is characterized by so many with only the vaguest of knowledge of the patent system leads to truly unfortunate consequences. Inventors believe that if they obtain a patent the world will back up a money truck to their front door. Patent haters think that a patent is evil and interferes with innovation. Both claims are laughably naive.
First, I am an unapologetic defender of the patent system, which is hardly news to anyone who reads IPWatchdog.com. Those who argue against a patent system and say that patents inhibit innovation are intellectually bankrupt; willing to say anything no matter how wrong to achieve what they predetermined to be the preferred outcome. There is no talking to the anti-patent community because they simply ignore facts and reality. They prefer to wrap themselves around academic thought experiments rather than real, verifiable truths. They ignore the undeniable facts that when a country adopts a patent system economic progress follows. They balk at the mind-boggling successes of initiatives such as Bayh-Dole and argue for it to be dismantled, apparently convincing themselves that 7,000+ high-tech start-ups with millions of new jobs would have been created under the previous patent licensing regime which had been an abysmal failure by any objective standard.
On August 2, 2012, I spoke on the record with Erik Iverson, Executive Vice President for Business Development & External Affairs at the Infectious Disease Research Institute. In part 1 of the interview we caught up with Erik’s move from the Bill & Melinda Gates Foundation to IDRI. He is still engaged in humanitarian efforts, but he described IDRI as more of an “intentionally not for profit” biotech research and development company. We discussed the work IDRI is doing and how he is able to get large pharmaceutical companies to work with a 501(c)(3) entity that has as its primary mission humanitarian efforts in the global health sector.
In part 2, which is the final segment of the interview, we discuss the Obama Administration efforts to challenge the innovative community to put patents to work for humanitarian efforts. This project is called Patents for Humanity. Iverson and I discuss the project and whether it is likely to be successful, as well as the risk it runs of defining only one path to acceptably use patents for what the government views as humanitarian relief. For more on Patents for Humanity please see On Patents Aiding Humanity and Patents for Humanity Announced at White House Event.
Without further ado, we pick up right where we left off.
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