The ink is hardly dry on the Supreme Court decision in Stanford v. Roche and already those who oppose patent reform are concocting one of the most ridiculous arguments I have ever seen to oppose first to file provisions. There are some, including at least one Member of Congress, that have started saying that the Supreme Court’s decision in Stanford v. Roche makes it clear that the first to file provisions of patent reform are unconstitutional. Just sit right back and allow me to explain to you exactly why that is perhaps the most specious argument I have ever heard.
Let me begin with attempting to explain how presumably intelligent people erroneously conclude that the Supreme Court earlier today held first to file unconstitutional. The argument goes like this: Chief Justice Roberts wrote, “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” This was repeated several times and in slightly different ways throughout the decision. So those misconstruing the case twist this beyond all reasonable logic to conclude: “patent rights have to belong to the inventor, so those who file first cannot receive the patent ahead of the person who invented first.” Oh my goodness! Is this the level of debate in Congress? No where in the decision is that said! It is no wonder our leaders have failed us so miserably.
President Obama announces of new Commerce Secretary. Secretary Gary Locke (left) and Secretary Designate John Bryson (right).
Earlier today President Obama announced the nomination of John Bryson as the next Secretary of Commerce. Bryson, the former CEO of Edison International and co-founder of the Natural Resources Defense Council, will replace current Secretary of Commerce Gary Locke who has been tapped as the next United States Ambassador to China. Meanwhile, earlier in the day Secretary Locke continued to work patent reform, sending letters to Congressman Lamar Smith (R-TX), who is Chair of the House Judiciary Committee, and to Congressman John Conyers (D-MI), Ranking Member of the House Judiciary Committee, which set forth the Administration’s position on patent reform.
Notably, but not surprisingly, Secretary Locke explained: “The Administration continues to strongly support the bipartisan efforts of Congress to enact patent reform legislation that will accelerate innovation, and create new jobs, new industries and new economic opportunities for Americans.” Secretary Locke went on to elaborate more specifically about some of the specific provisions of the America Invent’s Act, explaining the Obama Administration supports first to file provisions, supports giving the Patent and Trademark Office the ability to set fees and keep the fees collected to be used to run the agency, supports post grant review and supports allowing individuals to submit prior art references to patent examiners. Unfortunately, however, Secretary Locke explained that the Administration generally supports prior user rights given that it is, on balance, a good policy. I respectfully dissent!
The “America Invents Act,” H.R. 1249, contains several provisions that raise substantial questions of constitutionality. Discussed in this article is an important aspect of the “first-inventor-to-file” provision that received no prior public attention because its drafters have concealed its meaning ever since its introduction in previous sessions of Congress. A day after the Senate voted to pass the bill (S. 23), a “clarification” for this poorly drafted section was entered into the Congressional Record as a fabricated “colloquy” that never actually took place on the Senate floor. The colloquy substantially changes the ordinary meaning of the bill to a meaning that had never been discussed publically – Senators had no opportunity to either learn of the “intended” construction or to debate it. While it is uncertain whether the courts would actually interpret the new statute as the colloquy intends, this paper analyzes H.R. 1249 under a construction which the bill’s drafters and the colloquy purport to achieve.
Sometimes the problems facing our nation truly are difficult to solve. Reducing the country’s out-of-control budget deficit and fixing our broken public schools systems, for example, each took decades to grow into serious threats to America’s future. And each requires more political vision and national unity to resolve than seem to exist right now.
But other problems are not that difficult to solve, if only our leaders would choose to use some common sense. Take job creation, which is supposed to be the Number 1 policy objective in America right now. The mechanics of job creation are hardly a mystery, after all. We know, for example, that all net new job growth in America comes from startup businesses, not Big Business (see research by the Census Bureau and the Kauffman Foundation). And we also know that the vast majority of these startups need patents to get the funding from investors they need to start hiring people so they can develop their innovative new products and medical treatments for the public (see the Berkeley Patent Survey of Entrepreneurs).
Manny W. Schecter, Chief Patent Counsel, IBM Corporation
On April 4, 2011, I interviewed Manny Schecter, the Chief Patent Counsel for IBM Corporation. In part 1 of the interview we discussed patent reform, what affect prior user rights might have on IBM’s patenting decisions, working for David Kappos (who is an IBM veteran), the Supreme Court in general and the Microsoft v. i4i case in particular. We also talked a little about patent office reforms, and that is where we pick up part 2 of the interview, which is the final segment. More specifically, we talked about Peer to Patent, Watson on Jeopardy, where the Supreme Court is heading with patent law, the usual fun questions to get to know Schecter on a personal level and more. As we moved into the “fun stuff” you will learn that one famous IBM invention was tested out in the early stages by the inventors on a Thanksgiving turkey one year, proving that innovation never takes a holiday! We also learn that Schecter is something of a James Bond fan, and selected one recent Academy Award winning film as his favorite movie.
Without further ado, the final installment of my interview with Manny Schecter.
Manny W. Schecter, Chief Patent Counsel, IBM Corporation
On April 4, 2011, I had the honor to interview Manny Schecter, the Chief Patent Counsel for IBM Corporation. I met Manny in October 2010 when I did a CLE presentation at IBM’s offices in Armonk, New York. Since that time I have worked to schedule a time to chat with him on the record, and we were recently able to coordinate and chatted on the record for approximately 60 minutes. During our conversation we talked about numerous topics, including patent reform, Microsoft v. i4i, Patent Office initiatives such as the Three Track initiative and Peer to Patent. We also discussed David Kappos, his former boss, as well as Watson’s Jeopardy triumph, the new Intellectual Property @ IBM blog and the usual fun questions.
We started the interview diving straight into patent reform. In the fast moving and shifting landscape of patent reform it is worth noting that the most recent amendments to the House version of patent reform had not been discussed or voted on when our interview took place, so for those who have been hanging on every twist and turn you will notice that the House Judiciary Committee vote on patent reform was not a topic of discussion because it had not yet happened.
ARLINGTON, VA — The American Intellectual Property Law Association (AIPLA) commends House Judiciary Committee Chairman Lamar Smith (R-Tex) for shepherding patent reform legislation another step closer to enactment with the Committee’s strong approval of H.R. 1249.
Washington, D.C. (April 15, 2011) – Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood released the following statement regarding the America Invents Act, H.R. 1249, which passed the House Committee on the Judiciary yesterday:
“BIO has consistently praised House Judiciary Committee Chairman Lamar Smith (R-TX) for his introduction of a comprehensive patent reform bill similar to the bill adopted by the U.S. Senate earlier this month by a nearly unanimous vote. Unfortunately, given the addition of the Goodlatte supplemental examination amendment, added to the bill during Committee consideration, we have no choice but to oppose floor consideration of the bill until this issue is repaired.
I recently had an opportunity to sit down with Terry Rea for an interview in her office on the campus of the USPTO in Alexandria, Virginia. Among other things, in part 1 of my interview with the newly minted Deputy Director Rea we discussed Obama Administration interest in harmonizing patent laws, but standing firm on patent eligibility remaining very broad in the United States. In part 2 of the interview we discuss the energizer bunny, known better as USPTO Director David Kappos. We also discuss what skills she has brought from a private law practice that she feels will help her most at the Patent and Trademark Office. Finally, we discussed initiatives the USPTO is pursuing to assist women entrepreneurs and the inevitable questions about where we stand with patent reform.
Unfortunately, due to a tight schedule we were not able to get to some of the familiar fun questions that give us a look at Terry Rea the person, such as favorite author, favorite movie and that sort of thing. She has agreed to go back on the record, so that will be forthcoming at a date and time yet to be determined.
On March 8, 2011, the United States Senate passed S. 23, the Senate version of patent reform, by an overwhelming vote of 95 to 5. Just about three weeks later the House Judiciary Committee unveiled the House version of patent reform. While the framework of the House bill is largely the same as the framework of the bill that achieved overwhelming bipartisan support in the Senate, there are some non-trivial deviations that place the likelihood of achieving patent reform squarely in doubt. The two big ticket items being kicked around as differences that threaten the entirety of patent reform are inter partes review and prior user rights. These two issues could cause a splintering of stakeholders and place us back in the limbo we have been in for the past 6 years, which would be tragic because Congress is finally poised to adequately fund the United States Patent and Trademark Office.
BIO praises House Judiciary Committee Chairman Lamar Smith (R-TX) for his introduction of a comprehensive patent reform bill similar to the bill adopted by the U.S. Senate earlier this month by a nearly unanimous vote.
The America Invents Act is a clear improvement over prior House versions of patent reform legislation. We are pleased that the legislation will end, once and for all, the diversion of fees collected by the U.S. Patent and Trademark Office, allowing the agency to use all of its fees to hire more examiners, reduce the backlog of pending applications, and make other improvements to its operations. We also commend the inclusion in the bill of many other reforms that will improve the patent system and enhance patent quality, including transition to a “first-to-file” system, the elimination of other subjective elements of patent law, and a new supplemental examination proceeding for use by patent owners.
Congressman Bob Goodlatte (R-VA), Chair of House IP Subcommittee
Today the House Subcommittee on Intellectual Property, Competition and the Internet, which is a subcommittee of the House Committee on the Judiciary, held a hearing on the America Invents Act, the House version of patent reform. While the House and Senate bills are largely identical, there is one striking difference between the two, and that difference relates to prior user rights. In the United States we have a very limited prior user rights defense today that relates to business methods only, but the House bill would extend a prior user rights defense to all inventions and patents except those that created through funding by the U.S. federal government or those funded solely by Universities. According to Congressman Jim Sensenbrenner (R-WI) the inclusion of prior user rights might just be the poison pill that kills patent reform.
Personally speaking, I am sick and tired of legislative carve outs. If prior user rights are such a great idea then have them apply across the board. Of course, prior user rights are decidedly not a good idea and the bill could never pass if there were not an exception for Universities. That should tell you something right there! Unfortunately, the House will be urged to retain prior user rights defenses and some of the arguments in favor at the hearing are flat wrong, disingenuous and border on wanton misrepresentation.