The Digital Millennium Copyright Act (DMCA) has recently become a hot topic in Congress. The renewed interest is the result of a “We the People” petition that successfully reached the required number of signatures to merit a response from the White House. The petition, titled “Make unlocking cell phones legal,” said, “We ask that the White House ask the Librarian of Congress to rescind this decision, and failing that, champion a bill that makes unlocking permanently legal.” The White House fully agreed with the petition, responding, “It’s time to legalize cell phone unlocking,” and adding, “if you have paid for your mobile device, and aren’t bound by a service agreement or other obligation, you should be able to use it on another network.

Within days of the White House’s response, lawmakers were rushing to offer legislative fixes compatible with the petition. Senator Ron Wyden (D-OR) was the first to introduce a bill, the Wireless Device Independence Act (S.467), which would create a permanent exemption for unlocking. Most recently, Senator Patrick Leahy (D-VT) has introduced legislation, cosponsored by four other senators from both parties, that would reverse the Library of Congress’s decision and restore the exemption.

But many proponents of the original petition reacted negatively to these legislative proposals. Derek Khanna, for example, one of the most public advocates of cell phone unlocking, said of the legislation that “the worst … approach would be to simply reverse the decision of the Librarian of Congress and provide a temporary ‘exception’ for three years and let the Librarian rule on this again in three years.”

On Friday, February 8, 2013, I had the honor to interview Judge Richard Linn of the United States Court of Appeals for the Federal Circuit. Those in the industry know that Judge Linn is one of a small group of Judges who are patent attorneys. He is one of us in so many ways. He is a very real and genuine person, he is a great believer in the patent system, and he has long been a friend to patent groups and a mentor to many. Judge Linn started his a career as so many patent professionals have — as the newest patent examiner at the United States Patent and Trademark Office. We learn in the interview that his interest in patent law started well earlier, thanks to his Uncle who was a patent illustrator.

After leaving the Patent Office Judge Linn rose through the ranks to become a prominent patent attorney in Washington, DC. Ultimately, he was in the right place at the right time, and he was fortunate enough to be recognized by the right people. He was appointed to the Federal Circuit to replace the legendary Giles Sutherland Rich. Big shoes to fill no doubt, but in terms of influence on the Court and impact on the profession few can compare to Judge Linn. He has, and continues, to carve out his own legacy as one of the preeminent patent leaders in the United States.

We spent approximately 60 minutes on the record with my iPhone recorder on, meeting in his chambers at the Federal Circuit, which overlooks Lafayette Park. Judge Linn recently took senior status, and lives full-time in Florida. He returns approximately every other month, sometimes more frequent, to hear cases. He will soon be giving up this office once the President’s appointments to the Court are confirmed. Judge Linn assures me he will remain active with the Federal Circuit.

When I sit down to interview someone I sometimes have a sense where things may lead, but inevitably interesting topics arise, sometimes based off a seemingly innocuous question. In Part I, which is below, I asked a familiar question: Do you find that the harder you worked the luckier you got? Judge Linn used this to discuss the importance of practicing law with integrity while managing to be a zealous advocate and without sacrificing civility. This theme carriers over into Part II of the interview and should, in my opinion, be mandatory reading for law students and associates. In fact, it is a good reminder for more senior attorneys who sometimes might lose sight of the forest for the trees.

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.

On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature.  The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs.  The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.

S.3486 is the implementing legislation that modifies U.S. consistent with treaty obligations. The Senate ratified both the PLT and Hague Agreement in 2007.

With respect to the Hague Agreement,  it will now be possible to file a single application in English at the USPTO and have that application be the basis for design protection in each country that has similarly adopted the treaty.

On August 2, 2012, U.S. Senators Patrick Leahy (D-Vt.) and Chuck Grassley(R-Iowa), in a rare non-partisan effort, introduced legislation to finally implement two patent law treaties that are so old that they were signed by President Bill Clinton in the 1990s.  The short title of the bill is he Patent Law Treaties Implementation Act of 2012.

Upon introducing the bill, Leahy said it would “help American businesses expand into foreign markets by reducing obstacles for obtaining patent protection overseas.”

One of these two treaties, the Hague Agreement Concerning International Registration of Industrial Designs, would for the first time permit for design patent applicants a benefit that utility patent applicants have had for decades — the ability to file a single, standardized, English-language application at the U.S. Patent & Trademark Office to obtain IP rights in multiple countries through the Patent Cooperation Treaty. By permitting design patent applicants to file in this manner, the Hague bill should greatly reduce the cost to U.S. applicants of obtaining foreign design rights.

The statement of Senator Patrick Leahy in the Congressional Record sums it all up nicely: “After dozens of congressional hearings, markup sessions, and briefings, and countless hours of Member and staff meetings, through two Presidential administrations, and three Congresses, patent reform is finally a reality.”

On September 16, 2011 President Barack Obama signed into law the America Invents Act, which constituted the most significant overhaul to the U.S. patent system since the Patent Act of 1952.  Some of the most pronounced amendments to Title 35 of the United States Code include replacing interference proceedings with derivative proceedings, initiation of inter partes review, eliminating failure to disclose the best mode as a challenge to a claim, the addition of post grant review process and various changes to the fee setting authority by the USPTO.  But that was just the beginning.

By now virtually everyone in the patent and innovation communities knows that on September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act.  This is an enormous change to U.S. patent laws, likely the largest change in U.S. patent law since at least 1790.  The last major re-write was in 1952, and that wasn’t a re-write so much as a codification of case law that had developed over the previous decades.  This is a major change and one that must be thoroughly and completely respected in terms of breadth and depth.

A lot of arguing has been going on here on IPWatchdog.com about certain portions of the so-called first to file provisions contained in the Act.  Truthfully, the new 102(b)(1)(B) is not written as clear as it probably could be, but I have steadfastly maintained that it provides only a personal grace-period, nothing more.  Many have criticized me at great lengths, and some have even told me via private e-mail they have stopped reading IPWatchdog because I am dead wrong.  I have even had a variety of entertaining discussions with Staffers on the Hill and a variety of senior attorneys and high ranking corporate counsel.  Notwithstanding those who vehemently disagree with me, with every new statement made by the United States Patent and Trademark Office my position seems to be further confirmed.

The grace-period provided to inventors is only a personal grace-period and subsequent disclosure that is not derived from the inventor will create a statutory bar to patentability.  My source?  The United States Patent and Trademark Office.

The America Invents Act reshapes U.S. patent law in fairly profound ways with established major industries benefitting, but providing unwanted challenges for some. The final bill changes the US system to a first-inventor-to-file system. It creates several post-grant review mechanisms whereby 3rd parties can challenge another’s patent application, including the allowance of submission of prior art by 3rd parties and the creation of a new, post-grant administrative review proceeding. The financial sector will get additional tools to address long-held concerns over “business method” patents such as those at that heart of litigation involving several large banks and a company which holds patents on processes for securing checks electronically. The AIA also effectively bans the practice of patenting tax strategies. The bill also restricts the practice of plaintiffs in infringement cases joining together large groups of defendants who may have no business relation to each other.

On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage.

Starting with President Obama’s State of the Union Address in January, where he made innovation and job creation key elements of his speech and specifically embraced passage of patent reform as a means of addressing both issues, patent reform was well positioned to be enacted in 2011. Moreover, Congress was desperate for legislative accomplishments in an environment where partisan differences, a weak economy, and government fiscal concerns dominated. Longstanding pro-reform coalitions and associations continued to expend considerable resources on the bill. Passage was deemed virtually assured when the Chairmen of the Judiciary Committees – Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX) – essentially agreed this summer on a common piece of legislation. But, as explained below, nothing’s ever as simple as it seems in Washington.

The United States Senate passed the America Invents Act by a vote of 89-9 on September 8, 2011, which means that the much anticipated, discussed, reviled and acclaimed legislation (depending on your viewpoint) will become law very soon.  According to Article I, Section 7 of the U.S. Constitution, the President has 10 days to sign the legislation or it would become  law without his signature.

Article I, Section 7, in relevant part reads:

If any Bill shall not be returned by the President within ten Days  (Sundays excepted) after it shall have been presented to him, the Same  shall be a Law, in like Manner as if he had signed it, unless the  Congress by their Adjournment prevent its Return, in which Case it  shall not be a Law.

Thus, the question about when the America Invents Act will become the law of the land depends specifically on when it will be “presented to” President Obama.  As of the writing of this articler there is nothing on the White House web page of pending legislation likely to be signed in the coming days. Since the Administration has been so vocally supportive of the bill an Obama signature seems virtually guaranteed in the coming days, and then the fun starts.

It looks like my prediction on Tuesday that the Senate would pass H.R. 1249, the America Invents Act, prior to President Obama’s much anticipated jobs and economy speech that begins at 7:00pm ET today, Thursday, September 8, 2011.  The Senate voted to pass H.R. 1249 and send the House version of the America Invents Act to the White House for President Obama’s signature by a vote of 89 to 9.  The Coburn Amendment, which would have once and for all put an end to fee diversion, was unsuccessful, being tabled by a vote of 50 to 48.

Beginning at 4:00pm ET the Senate started considering three separate amendments to H.R. 1249.  The passage of any would have required the legislation to ping back to the House of Representatives, but that was not to happen.

At approximately 5:50pm the United States House of Representatives passed H.R. 1249, which is known as the America Invents Act, by a vote of 304-117.  This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet.  There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.  The bill passed by the Senate put an end to the practice of fee diversion, which occurs when the Congress appropriates the USPTO less than they collect in fees.  The excess in the fees collected from users of the USPTO then go to the federal government as general revenues and are used for purposes other than the operation of the United States Patent and Trademark Office.