Johnson, a strong proponent for patent reform, publicly questioned the need for expanding covered business method (CBM) review, which has long been a pet cause of Shumer’s. Schumer is on record as supporting CBM and wanting to expand the reach of this post grant patent challenge. It is believed Schumer is so invested in CBM because those primarily using CBM are banks and other financial institutions, which is where Schumer receives much of his considerable financial backing and political support. More recently Schumer has also been lobbied by App developers and others who would like CBM review to become available to challenge all software patents.
If the news of resistance on the Senate Judiciary Committee is true the question then turns to whether anyone qualified for the job of Director of the USPTO could be confirmed. Virtually everyone in the industry questioned the wisdom behind expanding CBM review; Phil Johnson was hardly an outlier on that subject. In fact, even Microsoft and Apple broke off from the Google/Cisco high tech collaboration to question the wisdom of expanded CBM review. It was a bad idea to expand CBM. If support for expanding CBM becomes a litmus test then it seems unlikely that a candidate will emerge that is both acceptable to those who adhere to the Google/Cisco orthodoxy and who would also be acceptable to pharma/biotech and the rest of the patent community that needs strong patents and a fully functioning patent system.
Earlier this morning Wayne Sobon, President of the American Intellectual Property Lawyers Association, sent an e-mail to members announcing that Todd Dickinson will step down as Executive Director of the AIPLA. The announcement suggest this will be effective immediately, and provides no reason for Dickinson’s departure, although the announcement says Dickinson will remain engaged within the IP community.
Dickinson has been rumored to be on various short lists for appointments throughout the Obama Administration. Perhaps Dickinson is stepping down because he is being vetted for an appointment, or perhaps he just needs a break. In any event, for what it is worth, I think Dickinson appointment to the United States Court of Appeals for the Federal Circuit to replace the now retired Judge Randall would be extremely well received within the industry.
Congress is moving forward with at least some patent reform efforts this year, taking up the Targeting Rogue and Opaque Letters Act of 2014, which is scheduled to be marked up in the House Commerce, Manufacturing, and Trade Subcommittee on July 10, 2014. This Subcommittee is a subcommittee of the House Energy and Commerce Committee. This draft of the bill is as it existed earlier this week.
This draft legislation — creatively dubbed the TROL Act — addresses the sending of abusive and bad faith patent demand letters by clarifying that such activity may violate the Federal Trade Commission Act and authorizing that agency and state attorneys general to bring actions to stop the abusive behavior, among other things.
On March 25, 2014, Managing IP will hold its annual US Patent Forum at the Willard InterContinental, in Washington, DC. I will be at the event, which should be quite interesting.
The Keynote Address will be given at 9:00 am by Michelle Lee, the new Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Deputy Director Lee joined the USPTO on January 13, 2014, but has yet to have much of a public schedule. Instead, Deputy Director Lee has largely been engaging in a series of one-on-one private meetings with various stakeholders. This will be one of her first public appearances, which in and of itself makes this even noteworthy.
The programming for the event is full of presentations by attorneys from major law firms and major corporations. Nevertheless, one other panel of particular note is the panel that will be lead by Todd Dickinson, the former Director of the USPTO who is now the Executive Director of the American Intellectual Property Law Association. Those familiar with AIPLA meetings and programs have no doubt seen Dickinson as moderator before, and in this role he engages in what you might call a round table discussion or interview of the top newsmakers in the industry. This program will be no exception. Dickinson will engage in something akin to a fireside chat with Judge Prost of the United States Court of Appeals for the Federal Circuit. Also participating will be Blair Jacobs of McDermott, Will & Emery.
The New Year is here and already in full swing for the most part, although it is now time to go back to work. Having Christmas and New Year’s Day on a Wednesday really caused the business world to go into a prolonged shutdown it seemed, with some people take time off early in the week, some later in the week, some the whole week. So now we are all back and ready to go!
It is that time of the year when reflections are made on the year that is about to pass, wishes are made for the new year, and a prediction or two start to pop from both amateur and professional prognosticators alike. Once again this year I thought I would ask some industry insiders to reflect upon the biggest moments in intellectual property for 2013. We will get to the hopes, wishes and maybe a prediction or two for 2014 next week.
In this edition of Biggest Moments in IP we have a variety of reflections on a wide array of IP issues. Todd Dickinson goes international by pointing to the EU Unitary Patent as a very important long-term milestone, and congratulates the USPTO on being ranked the top place to work in the federal government. Scott McKeownfocuses on a decision from the Federal Circuit that will allow collateral challenges to damage awards. Bob Stollpoints to the Innovation act, Federal Circuit disarray over software, the “revolutionary” Supreme Court decision in Myriad and the Microsoft/Motorola FRAND decision.
What follows is a portion of the written statement of Q. Todd Dickinson, Executive Director of the American Intellectual Property Law Association, republished here with permission. Mr. Dickinson testified today at the Senate Judiciary Committee hearing on “Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse.” To read Mr. Dickinson’s full prepared statement please see Testimony of Q. Todd Dickinson.
Q. Todd Dickinson, Executive Director of the American Intellectual Property Law Association.
A recurring theme that can be traced through the patent reforms of the AIA to the current debate over patent litigation abuse is the issue of patent quality. A key component of the reported abuses is the assertion of allegedly invalid or overbroad patents, the very abuse for which AIA post-grant procedures were created, in order to improve patent quality. These matters of patent quality are being addressed by the changes made to the law by the Judiciary and by Congress in the AIA, which are only now beginning to be felt.4 It may well be premature to conclude that they are not doing the job.
Take one major example, as a former Director of the USPTO in particular, I would support, as former Director Kappos did, giving the post-grant processes in the USPTO a chance to work.
They have only been in place for less than two years, and in the case of PGR, less than one.5 Early data suggests that they are performing in many ways as Congress intended, at least at the macro level, to provide an efficient, less expensive means to address potentially low quality patents. We believe that the prudent course is to give these reforms the chance to demonstrate their efficacy to deal with the concerns for which they were created before we consider making significant additional changes which may have their own unintended consequences. In support of this proposition to wait and see how they are working, we would simply point out that the AIA itself requires that USPTO study the reforms implemented by the AIA and report back to Congress by September 16, 2015. Those reports would serve as an important and more empirically-driven body of data which would allow for greater clarity and direction in making any necessary changes.
Today I want to update you on the progress of our satellite offices in Dallas, Denver, and Silicon Valley, locations we identified in July 2012 as part of an America Invents Act (AIA) mandate. Given current budget constraints under sequestration, our efforts to move into permanent spaces for those three locations will be delayed, but continuing to operate from the temporary spaces and striving to grow our presence in the satellite office locations remains a top agency priority.
The USPTO is getting caught up in the sequestration budget battles despite the fact that the USPTO is fully user funded. As a result the USPTO stands to lose close to $150 million in Fiscal Year 2013, which runs through September 30, 2013.
There is a legislative proposal pending in Congress that would exempt the USPTO from sequestration, which was filed by the Members of Congress that represent Silicon Valley. See PATENT Jobs Act Seeks to Exempt USPTO from Sequestration. Silicon Valley would be the home to one of the new USPTO satellite offices if the agency had the money to open.