We are far enough removed now from the Kappos Administration at the PTO (2009-2013) that we can assess it with some perspective. In this spirit, I was thinking recently about the history of PTO-academia relations. And I concluded that Dave Kappos made a major contribution in this area, which has so far been mostly overlooked.
Dave Kappos did more for PTO-academic relations than any other Commissioner or Director in the history of the Office. This is a true statement, but hardly does credit to his real contributions in this area. That’s for the simple reason that very few former leaders of the Patent Office had much if anything to do with academics. The bar was so low in fact that had Dave been merely cordial and refrained from open derision of academics and their research, he might well have set a new standard with only that.
He did much more, of course. Director Kappos actively sought out academic researchers. He brought them into formal roles in the PTO. In the process he gave them not only offices and titles, but something much more elusive, much more valuable. He gave them (us, to be honest) respect. That’s a legacy that has been overlooked by other constituents in the patent world, but it will certainly not be overlooked by academics.
Over the last several days I have heard of an alarming trend from the United States Patent and Trademark Office — Patent Examiners are canceling Notices of Allowance and yanking previously granted claims back into prosecution while citing the United States Supreme Court’s ruling in Alice v. CLS Bank. In some instances granted claims are being pulled back into prosecution only to be rejected as lacking patent eligible subject matter even after the issue fee has been paid. I have also been told that an Examiner in one case has issued a new Examiner’s Answer to include a new Alice 101 rejection.
Rejecting claims after the issue fee has been paid represents an extraordinary disconnect from the initial USPTO guidance that essentially said that Alice changed nothing from a substantive point of view. I was shocked that the USPTO issued such guidance because if you actually read the Supreme Court’s decision in Alice you could hardly walk away with the belief that nothing had changed.
In the immediate aftermath of the Supreme Court’s decision in Alice the USPTO told examiners that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” The USPTO, by and through the Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Hirshfeld explained: “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”
Phil Johnson at IPO Inventor of the Year Ceremony, Dec. 10, 2013.
The National Journal is reporting that President Obama is poised to name Phil Johnson as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Johnson is currently Senior Vice-President for Intellectual Property Policy & Strategy at Johnson & Johnson.
“I’ve worked on legislative issues with Phil over the years through AIPLA,” said Nicholas Godici, former Acting Director of the USPTO and Commissioner for Patents. “Phil is very knowledgeable, fair and willing to listen to opposing views. He is certainly a well qualified candidate and in my view an excellent choice.”
Godici wasn’t the only high ranking former USPTO official to have extremely positive things to say about Phil Johnson. “I have worked with Phil Johnson on many different patent proposals over the years and have always found him to be thoughtful in his analysis of issues and willing to look at many different solutions to a problem,” said Robert Stoll, former Commissioner for Patents and current partner at Drinker Biddle. “Phil knows the patent system very well and is always seeking to improve it. He would be a great leader for the USPTO as he would need no ramp-up time and he would be able to reach reasonable compromises when others could not.”
If there was a major message to take away from U.S. Patent and Trademark Office Deputy Director Michelle K. Lee’s speech at Stanford Law School on Friday, June 27, it was that the patent system needs change to properly address the needs of an ever-growing list of stakeholders in the patent process, including the general public. In response to questions after the event, Lee stressed that the USPTO wants to “keep all options on the table” and is looking for creative solutions to curtail patent litigation which the deputy director refers to as abusive, as well as other USPTO-related issues which need to be or are being addressed.
At the start of her speech, which was titled “Speaking Truth to Patents: The Case for a Better Patent System,” Deputy Director Lee was adamant about the importance of a strong, healthy patent system to support innovation in our own country. She cited patent-protected innovations as “well-known drivers of the nation’s economy.” As a result, many more people have an interest in our country’s patent system than ever before. Interest in patent law has grown tremendously over the past few decades, often in response to landmark U.S. Supreme Court rulings or Congressional legislation, such as the America Invents Act. Lee even cites end-users of off-the-shelf products who have received demand letters alleging patent infringement as a significant group of stakeholders in the patent system.
An open discourse between all of these parties, including inventors, lawyers, end-users, USPTO personnel and more is the best means of encouraging positive changes to the system. “In general, more conversation is a good thing, but an increasingly divisive tone is not,” Lee told the group assembled at Stanford Law School. Specifically, she speaks to a willingness among stakeholders to label others as ‘pro-patent’ or ‘anti-patent,’ and she even went so far as to say that it’s unclear what those labels mean.
DENVER – Acting U.S. Deputy Secretary of Commerce Bruce Andrews and Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee, along with several elected officials, today participated in a ribbon-cutting ceremony to officially open the permanent location for the USPTO Rocky Mountain Regional Office in Denver, Colorado. Located in the Byron G. Rogers Federal Building in Denver’s central business district, the new office will help the region’s entrepreneurs advance cutting-edge ideas to the marketplace, grow their businesses, and more efficiently navigate the world’s strongest intellectual property system.
“Through our ‘Open for Business Agenda,’ the Commerce Department is actively investing in communities across the country to build their capacity to spur innovation. We support innovative startups and enterprises throughout their lifecycle because those companies produce economic growth, support good-paying jobs, and benefit America’s middle class,” Acting Deputy Secretary of Commerce Bruce Andrews said during today’s ceremony. “We are excited to bring our department closer to our customers by opening the doors of this new USPTO satellite office – a one-stop-shop for intellectual property services that will help the Rocky Mountain region’s inventors and entrepreneurs speed their innovative products and technologies into the marketplace.”
At least initially, the USPTO instructions to examiners seems extremely patentee friendly, which I must say comes as a surprise given the largely anti-patent rhetoric that has come from the White House over the last 16 months. Indeed, the USPTO has told examiners that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.”
The USPTO then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Hirshfeld explained: “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”
Hirshfeld also explained that there is now a slight change in the way applications are to be examined when claims involve abstract ideas. Essentially, Alice stands for the proposition that the same analysis should be used for all types of judicial exceptions and the same analysis should be used for all categories of invention. Still, even recognizing this shift in analysis, Hirshfeld told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” (emphasis added). Therefore, nothing has changed as far as the USPTO is concerned.
WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will host its next Software Partnership Meeting on Tuesday, July 22, 2014, at the USPTO headquarters in Alexandria, Virginia, from 1:00 pm – 4:30 pm. Members of the public are invited to attend. Software Partnership meetings are an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for an informal discussion of many topics specific to the software community.
On June 4, 2013, the White House issued five executive actions designed to reduce abusive litigation and level the playing field for innovators. The second of the five executive actions focuses on clarity in patent claims and functional claiming in patents. The meeting on July 22 will feature a focused discussion on claim clarity and functional language. In particular, USPTO officials at the meeting will present details of four examiner training modules on functional language, discussed below, that were delivered this past year, and will provide an opportunity for an interactive discussion on the goals and effectiveness of the training. A stakeholder presentation on claim clarity will follow. The public will have an opportunity to provide input on the training and ask questions regarding claim clarity. Public attendees are invited to provide individual input on these topics and additional ideas during the interactive discussion portion of the meeting.
Yesterday the Trademark Trial and Appeal Board (TTAB) issued a decision in Blackhorse v. Pro Football, Inc., which canceled a variety of U.S. federal trademarks that were issued to the Washington Redskins football team between 1967 and 1990. The trademarks in question consisted in whole or in part of the term REDSKINS for professional football-related services. The TTAB ruled that these trademarks were inappropriately granted on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute.
While this decision will be widely cheered by those who proclaim the virtues of political correctness, there is absolutely no doubt in my mind that from a legal standpoint this decision is clearly wrong.
From a purely legal standpoint there is absolutely no valid reason to have canceled the trademarks in question, but this is the second time the TTAB has canceled these same trademarks. Ultimately, the previous challenge was reversed as the result of laches because the challengers waited too long to bring the challenge. Laches was not an issue in this case, but previously federal courts also question the evidence, or lack thereof, relied upon the challenge the trademarks. See Redskins Can Keep Trademark.