On Wednesday, December 10, 2014, at 10:00am, the Senate Judiciary Committee will hold a confirmation hearing for Michelle Lee, who President Obama has nominated to become Director of the United States Patent and Trademark Office. Lee was named Deputy Director of the USPTO on December 11, 2013, replacing Terry Rea, who resigned that position after being passed over by the Obama Administration for the position of Director.
Upon taking over at Deputy Director Lee performed the functions and duties of the USPTO Director, a position that was and is currently vacant. The last Director of the USPTO was David Kappos. Kappos left the agency in January 2013. Therefore, it has been nearly two years since the USPTO has had a Director, which has often been criticizedas being an excessively long time not to have an agency head.
This will be the first time that Lee has had a confirmation hearing. The timing suggests that the Obama Administration and Senator Reid think that they can get Lee confirmed prior to the end of this Congressional session, which may well be the case. Assuming that this hearing will be more than just a show, there are a number of difficult questions that should be asked of Lee. Below are 12 questions that need to be asked, and a list of others that could and probably should be asked as well.
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.
Phil Johnson at IPO Inventor of the Year award ceremony, December 10, 2013.
The Washington Post recently reported that the anticipated nomination of Phil Johnson to head the United States Patent and Trademark Office is dead. News of the death of Johnson’s nomination is both a shocking surprise and yet all too predictable in a town that increasingly makes little logical sense. Johnson is extraordinarily qualified, he is willing to take the position, he has seen the patent system from virtually all vantage points, and yet his nomination has stalled after many months of vetting and no legitimate red flags surfacing.
It seems that Johnson’s major flaw may be that he strongly supports the patent system, which is a very sad commentary. In fact, there are some starting to believe that the only candidate that may be acceptable to certain political forces is one who opposes the patent system on a fundamental level. Of course, such a candidate would be unacceptable to a great many other powerful industry interests, so this could mean that the USPTO will indefinitely be without a politically appointed and confirmed leader, at least unless the White House is willing to step up and make a nomination.
I am on record supporting the nomination of Phil Johnson, and simultaneously pointing out that the proffered rationale used by his detractors is factually false. Those suggesting Phil Johnson hasn’t been supportive of patent reform efforts are simply misinformed. In fact, you would be hard pressed to find anyone in the private sector who has been more supportive of patent reform over the last 8 to 10 years. In fact, Johnson was a strong supporter of the American Invents Act (AIA), which has been one of President Obama’s signature accomplishments. Johnson was also a strong supporter of fee-shifting legislation. Stay tuned more on Johnson’s support of patent reform efforts in the coming days and weeks.
The writing has been on the walls for some time, as the Senate Judiciary Committee has repeatedly failed to produce a revised version of S. 1720, the Senate version of patent reform. Over the past several months an announcement would come that the Senate Judiciary Committee would be releasing a Managers’ Amendment to the pending legislation, only to have that postponed time after time. Today, Senator Patrick Leahy (D-VT) announced what many have been expecting for weeks, namely that patent reform would be tabled due to lack of consensus. But Leahy’s announcement went further, noting that not only would the Committee not release the long awaited updated version of the bill, but that patent reform would be removed from the Committee calendar altogether.
While Senator Leahy said that he hopes to be able to return to patent reform this year, the legislative calendar does not look good. Now removed from the Committee calendar patent reform seems to dead for this Congress.
No vote will be taken on the Senate version of patent reform until the next draft is released and voted on by the Judiciary Committee, which doesn’t seem likely to happen anytime soon. Then if the Senate does pass patent reform it is guaranteed to be different than the version passed by the House of Representatives. Ordinarily one might suspect that would lead to a Conference between the House and Senate, but Judiciary bills are rarely, if ever, sent to Conference. That means even if the Senate passes patent reform the bill would bounce back to the House, and we could see an ensuing game of ping-pong, with greatly intensified lobbying by both sides. All the while legislative days are dwindling, and useful legislative days in advance of the November election are even more limited. Indeed, with this announcement today it seems that patent reform is now dead for 2014. The only hope proponents have is that patent reform will sneak back in a lame duck session of Congress, but I believe that hope to be somewhat far-fetched.
On Thursday, March 27, 2014, the Senate Judiciary Committee held another meeting on patent reform legislation. A markup of Senator Leahy’s bill (S. 1720, “Patent Transparency and Improvements Act”) may happen as early as this week. During Thursday’s meeting Senator Leahy, who Chairs the Committee, indicated a willingness to incorporate in his bill other provisions from Senator Cornyn’s and Senator Hatch’s bills.
Momentum is clearly building for more patent legislation, but the myriad bills and provisions make it difficult even for folks close to Capitol Hill to keep track of them all. To fill that need, today’s post is part of a series of articles based on the white paper, Patent Reform 2014. IPWatchdog.com has already published articles on Joinder of Interested Parties and Loser-Pays Fee-Shifting. Today’s focus is on the proposed FTC enforcement provisions found in several pending bills.
In September 2013, Senator Klobuchar’s staff circulated draft language that would require the FTC to initiate a rulemaking proceeding, in accordance with 5 U.S.C. §553, to prohibit the assertion or enforcement of patents in a manner that is an unfair method of competition, or unfair or deceptive act or practice, under section 5 of the Federal Trade Commission Act (15 U.S.C. 45).
Brian Pomper, Executive Director of the Innovation Alliance.
WASHINGTON – As the Senate debate on patents and their role in innovation and job creation continues in 2014, the Innovation Alliance today renewed its call for a thoughtful, inclusive legislative process that takes into account the impacts of any changes to the current system on all stakeholders and successfully targets abusive behavior without harming innovators, job creators and the economy as a whole.
“The Innovation Alliance supports efforts by Congress to address behavior abusive of the patent system, but we must do so in a way that safeguards the strength of that system, which is at the very heart of our nation’s economic power. We continue to have concerns with many of the proposals under consideration in the Senate and firmly believe that we need to take the time to get this right. That’s why we stand ready to work with leaders in the Senate to develop a consensus product that will be a force for progress for the full range of American innovation,” said Brian Pomper, Executive Director of the Innovation Alliance.
Last month, following a Senate Judiciary Committee hearing on patent issues, a wide spectrum of stakeholders – from inventors, judges, and universities to companies and organizations representing America’s innovators – voiced their concerns with the proposals being considered by the Senate. While measures to target abusive behavior would be worthwhile, they should not be adopted at the expense of a patent system that has created the greatest economy in the world.
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.
Louis Foreman (left) and Dr. Gary Michelson (right), taken May 4, 2011, after Michelson was inducted into the Inventors Hall of Fame.
Prominent inventors have now joined the growing chorus of those opposed to the Innovation Act (HR 3309). Specifically, the letter and recommendations below were sent by Louis J. Foreman (Chief Executive Officer, Edison Nation), Dr. Gary K. Michelson. (Inductee, National Inventors Hall of Fame) and Gregory G. Raleigh, Ph.D. (Chief Executive Officer and Chairman, ItsOn). The letter and recommendations were sent to Congressman Bob Goodlatte (R-VA), who is the Chairman of the House Judiciary Committee, Congressman John Conyers (D-MI), who is the Ranking Member on the House Judiciary Committee, Senator Patrick Leahy (D-VT), who is Char of the Senate Judiciary Committee, and Senator Chuck Grassley (R-IA), who is Ranking Member of the Senate Judiciary Committee.
Despite the problems with the Innovation Act and the mounting calls to slow down, Senator Leahy has introduced a companion bill in the Senate, which suggests that this legislation will move extraordinarily quick. See Leahy Bill Released and Leahy. Those who are unhappy with the legislation really need to speak now.
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. In years past we have done a Patent Wishes article, which is currently in the works. This year I thought I would add an article that gave some industry insiders an opportunity to reflect upon the biggest moments in intellectual property for 2012.
Whenever I do something like this I keep my fingers crossed. The biggest moments in IP seem rather obvious to me, so will they to others? Will I wind up printing the same thing 5 or 6 times? The answer: Absolutely not! We had a very busy year, from Supreme Court decisions to failed legislation to fight piracy on the Internet, to important Federal Circuit cases and implementation of the America Invents Act.
Indeed, for this inaugural edition of Biggest Moments in IP we have a variety of reflections on a wide array of IP issues. Former Commissioner for Patents Bob Stoll walked through some of the biggest items on the patent docket for the year. Stephen Kunin of Oblon Spivak gives us his Top 10 list in David Letterman style. Former staffer to Senator Leahy (D-VT) and current lobbyist Marla Grossman reflects on Senator Leahy’s decision to refuse the Chairmanship of the Senate Appropriations Committee to stay on as Chair of the Judiciary Committee. IP attorney and frequent feature contributor to IPWatchdog.com Beth Hutchens focuses on several copyright and first amendment issues, and reminds us of the battle that ensued to defeat SOPA.
Earlier today David Kappos, the Director of the United States Patent and Trademark Office, testified before the Senate Judiciary Committee at the Senate’s first oversight hearing of the America Invents Act. Among other things, Director Kappos noted that the USPTO continues to move forward on AIA implementation, saying that the much anticipated new rules packages to implement the next round of AIA changes will be released on or before August 16, 2012, giving the Office time to train personnel prior to implementation on September 16, 2012. Kappos also outlined how the USPTO, in the wake of the AIA’s passage, is now taking the lead internationally in creating a truly 21st Century global patent system.
The testimony of Director Kappos did not reveal much, if anything, new to those who have been following the USPTO, rather the testimony seemed more to keep the Senate Judiciary Committee in the loop. Notwithstanding, some of Kappos’ prepared remarks did contain facts and figures that may be of interest. Additionally, Kappos revealed that the USPTO received over 600 comments relative to the location of the additional Satellite Patent Offices called for in the AIA. Kappos told the Senators that he expects to complete that review process and announce the next Satellite location something this summer.