Cheryl Milone, the Founder and CEO of Article One Partners

As is probably apparent to frequent readers of IPWatchdog.com, I keep my ear to the ground and have a number of sources (i.e., friends and colleagues) in the legal community who play a number of different roles in the intellectual property, patent and innovation space. Because I love talking shop, particularly when it relates to policy matters, you can typically find me on the phone or having lunch or drinks with “my sources,” usually several times a week. I don’t go public with where I get information unless it is agreed upon, and these chats help keep me informed and let me work out my thoughts, opinions and get different perspectives on matters.

On February 4, 2010, I had a call with Cheryl Milone, Founder and CEO of Article One Partners. While we don’t chat as much as I would like, we do connect when our schedules permit. This call was coordinated by one of Cheryl’s assistants, so we called into a conference line. During our call a beep was heard and recording of our conversation was inadvertently started. We kept talking and then agreed that some of our conversation might be appropriate for publication. We were talking patent reform, reexamination, patent litigation, improved patent search and IT databases, claim construction and more. You know, talking shop and bouncing ideas off one another. Cheryl agreed that our conversation could be published, and I am just now getting the transcript together for publication.

Presumably at some point the debate over health care will be over.  Either the government will radically reform health care, or they won’t.  While it is impossible to know for sure when the debate will be over, it does seem as if there is a light at the end of the tunnel.  Whether that light is a train or not remains to be seen, of course.  Within the next few days, few weeks or few months Congress will be released to consider other issues.  Whether they actually will actually get anything done between whenever health care passes or fails and the November 2010 elections is likewise questionable, and remains to be seen.  But one of the things that is seemingly on the horizon is consideration of patent reform, which itself has become a constant, nagging and unresolvable issue that has bogged down Congress for at least 5 years now.  As I continue to review the pending patent reform legislation there are questions that I have, and changes that I would like made to the pending bill.  So with the belief that sooner or later Congress will turn to patent reform, I present some of my thoughts on key changes that needs to be made to S. 515.

Earlier this afternoon the United Inventors Association, a 501(c)(3) not-for-profit founded in 1990 and dedicated to providing inventor education and support, wrote to Congress to set the record straight on the UIA stance on patent reform efforts.  UIA Executive Director Patrick Raymond sent a letter to Senator Patrick Leahy (D-VT), who is Chairman of the Senate Judiciary Committee, and an identical letter to Congressman John Conyers (D-MI), who is Chairman of the House Committee on the Judiciary.  The primary purpose of the letter, as stated in the letter itself, was to make clear that the primary mission of the UIA is to provide reliable information to inventors and not to undertake lobbying efforts.  The letter makes clear that the UIA is “not involved in any campaign against this proposed legislation.” The letter goes on to explain that while some “coalitions” and “alliances” are claiming to speak “on behalf of all independent inventors nationwide,” they do not speak for or on behalf of the United Inventors Association or its membership.

By now most are likely aware that patent reform is back, once again, with the current draft legislation available for everyone to read.  It is becoming harder and harder to take patent reform seriously, given that it has started to become a little like a bad horror movie where the villain is killed only to reappear in the next episode, a la Jason from the Friday the 13th movie franchise.  Over the last 5 years or so we have been told that patent reform is a done deal, only to have it called off and proclaimed dead due to lack of compromise.  Is this time different?  At the risk of sounding extremely naive, I think this time is different and it is going to happen.  It looks like most of the contentious issues have been ironed out enough to have generated a bill that can be passed and become law.  However, the continued focus on health care reform by the Obama Administration promises to cripple Congress for at least a few more weeks, likely longer.  By the time Congress is operational again, will there be enough interest to do something, even anything?

David Kappos speaks to Inventors on Video about Patent Reform Legislation

The United States Patent and Trademark Office is sending the message that it believes patent reform is needed and that it is not something that will harm independent inventors, and the messenger is none other than the Director of the USPTO, David Kappos.  Just this week the USPTO launched a bi-monthly e-publication aimed at the independent inventor community – Inventors Eye.  The first issue of Inventors Eye takes on the issue of Patent Reform, with a letter from Director Kappos.  A video tape of Kappos essentially explaining the same thing as said in the letter, perhaps with a little more information, is available on the USPTO Website.  The clear message is that the current patent reform proposals are a net benefit to the independent inventor community.  I personally agree with Director Kappos and think that independent inventors and small businesses should not be afraid of patent reform but view it as an opportunity for enhanced opportunity.  There are some things in the legislation that will immediately benefit inventors and small businesses, and initiatives the Patent Office is working on outside the patent reform legislation that should be beneficial as well.

Senator-Elect Scott Brown (R-MA)

If you are unaware that Massachusetts Republican Scott Brown was victorious last night via special election to fill the remaining term of the Senate seat held by the late Senator Ted Kennedy you must be living under a rock.  Over the last month or so Brown has surged in the polls and took Massachusetts and the nation by storm, claiming a Senate seat long believed to be practically owned by Democrats.  In a matter of days, perhaps weeks, the Democrats will no longer hold a filibuster proof majority in the Senate, which likely all but assures a death to health care legislation and a dramatic slow down in the Obama agenda.  Already Senators and Representatives on the Democrat side of the aisle are talking about perhaps slowing down on health care, perhaps even starting over, and in the meantime focusing on jobs, which is after all what the overwhelming majority of Americans want Congress and the President to do.  As a policy wonk and political observer I would love to get into a discussion about what this election means, and I have over at BlatantlyTrue.com, where I wrote MA Republican Scott Brown and his Truck Head to DC, but for the pages of IPWatchdog.com, general political discussion is a bit too much off topic.  But one story that certainly is not off topic is patent reform, so allow me to ponder what this political tectonic shift may mean for the future of patent reform, which if done right could and should lead to job growth and economic prosperity.

It is that time of the year when everyone has made or is making resolutions for the new year, most of which will undoubtedly be broken within a few days or weeks, particularly those promises to lose weight, exercise more or find more time for unwinding and better managing stress. All are things I hope to do in the new year, but it will be so much easier to lose weight once football season is over, and exercising will be easier when it is a little warmer outside and the days are longer. On top of that, after taking time off for the holidays how can anyone really manage stress when you come back from the holidays to a pile of work? Oh well… I might as well take this opportunity to set forth my Patent Wishes for 2010 instead of engage in resolutions sure to be broken.

Last year I provided 5 wishes, 2 of which came true — Obama appointing a Patent Attorney and the withdraw of the claims and continuations rules. The Patent Office also adopted several suggestions I made throughout the year, or they came up with the same ideas on their own, who knows? Whatever the case may be, I am hoping that this year I will get at least a few of my wishes granted, but at least some require Congressional cooperation, so I am not going to do anything silly like hold my breath, although I am sure some would like that! All I can do is give good ideas and hope folks in the right places are listening, which I suspect they are.

Without further ado, here are my patent wishes for 2010:

1. Repeal KSR v. Teleflex
2. Adequate Funding for the Patent and Trademark Office
3. Reform Inequitable Conduct
4. Do away with Examination Support Documents
5. Acceleration for Those Without Multiple Applications
6. Frivolous, Fanciful & Otherwise Non-attainable Wishes

And now the analysis…

On December 21, 2009, I embarked upon identifying the top 10 patent stories of the decade, which ends as we usher in the new year.  The Top 10 Part 1 identified what I thought were in the bottom half of the top 10, and while any top 10 list is sure to be at least somewhat controversial, it seems as if the list hasn’t created too much of a stir, at least so far. Undoubtedly, once I set out the top 5 the real debating will begin as folks suggest what they would have preferred instead. Notwithstanding, I really cannot imagine any bigger stories than the top 5 below. Please also feel free (and I am sure you will) to point out things that I missed or clearly got wrong, at least in your opinion.

Without further ado, in descending order, here is Part 2 of my Top 10 Patent Related Stories of the Decade, with numbers 5 through 1. Up next, honorable mentions, which will be Part 3.

This year as we wind down and look back we not only need to look back at the previous year, but the first decade of the new century and new millennium will be ending.  So at this reflective time of year it seems appropriate to take a look back at the biggest patent related news stories of the decade.  As with any Top 10 list, or any ranking, there will undoubtedly be disagreements, arguments and some things that people believe should have been on the list.  What follows is Part 1 of my personal Top 10 patent news related stories for the decade. Once I get all 10 out, by later in the week, I will provide a survey that allows you to rank them, and I hope you will.  We can then take a look back at my Top 10 vs. the Top 10 of IPWatchdog.com readers next year.  Please also feel free (and I am sure you will) to point out things that I missed or clearly got wrong, at least in your opinion.

Without further ado, in descending order, here is Part 1 of my Top 10 Patent Related Stories of the Decade:

SAN DIEGO, CA (Marketwire – December 15, 2009) – A group of organizations today announced that they have banded together to form the Small Business Coalition on Patent Legislation created to draw attention to current patent reform proposals that have not been addressed by established patent stakeholders and that would be uniquely harmful to small business patentees if enacted.

I applaud Popular Mechanics for tackling the under-covered issue of patent reform in Inventors Slam Patent Reform Effort. However, I disagree with some of the magazine’s assertions.

Regarding first-to-invent vs. first-to-file, PM says:

FTI theoretically allows an inventor to sit on an idea for years, gradually improving it until he or she is ready to file. FTF eliminates that strategy, making it impossible to dispute a patent or application once it’s filed. There’s no guarantee that the first person to file will necessarily land a patent, but FTF closes the window of opportunity to attack that first, successful filing.

The proposed reform calls for a post-grant review process – itself controversial because some believe larger companies will be able to tie up patents with so-called serial challenges. The bill provides the ability to challenge the patent in a post-grant-review proceeding for one year following issuance based on a broad array of grounds related to patentability.

NOTE: This was originally written as a comment to my article Much Ado About Nothing Over First to File.  It is posted here as an article with the permission of Ron Katznelson.

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I generally respect those who have the capacity to change their opinions based on substantial relevant evidence and a compelling underlying factual record that supports such a change. And I know you to be one who had made shifts in the past based on such sound bases, and you earned all of our respect for that. However, this one is a surprise to me, as I now see you change your mind over mostly irrelevant facts and over what appears as a profound misunderstanding of the adverse effects of transitioning to a First-To-File (FTF) system. There has been much folklore and obfuscation about FTF and you may have fallen for it based on, what I believe to be genuine, but tangential experience. You and others are missing the point by looking only at a formulated invention and whether it takes three months or one year to file it. You are missing the point if you believe that the stakes are solely related to the quality, content or the submission speed of an application that is ultimately filed with the USPTO. Rather, the harmful effects of FTF for small startups and early-stage patenting firms is in losing patent protection on inventions for which applications will not, or could not, be filed. Harm will not merely arise due to the “race to the patent office”. Harm will be inflicted due to the race to the patent office with the wrong application, for the wrong invention, and for the wrong reasons, while exhausting precious resources in the process. As David Boundy correctly points out, “First to File” vs. “First to Invent” is a misnomer and the use of these terms is mere obfuscation. Interference priority contests at the USPTO and their numbers under current law are entirely irrelevant for assessing the effects of FTF on important inventions that I’m afraid will never reach the USPTO. Several facts, some of which have been touched on in prior comments, can help in appreciating these pernicious aspects of FTF.