It is that time of the year where we all start to look ahead to the new year, and in this case the start of a new decade. Last year I wrote an article titled Patent Wishes for the New Year, and I have been working on my wish list already and will launch the article soon, likely on December 31, as I did last year. I thought it might be interesting to contact a variety of industry news makers, policy wonks and those on the front lines to see what they wish for in the year ahead. I was lucky enough to get a handful of responses from folks with a variety of experiences. So without further ado, here are the wishes of some industry insiders for 2010.
Jim Greenwood is President & CEO of The Biotechnology Industry Organization (BIO). Mr. Greenwood previously represented Pennsylvania’s Eighth Congressional District for six terms in the United States House of Representatives.
BIO’s wish for 2010 is that patent policy stays focused on promoting innovation, job growth, and American competitiveness.
As we enter 2010 facing continuing high levels of unemployment, and with an economic ship trying to right itself after one of the deepest recessions in modern history, it is imperative that policy makers respect the fundamental role that strong and predictable patent protection plays in fostering biotechnology innovation, high-skill and high-paying jobs, and American global competitiveness. From the war on cancer to the war on climate change, from agricultural and environmental sustainability to eradicating world hunger, strong and predictable patent protection is a key part of the solution to the world’s most pressing challenges. America must reject the arguments of those who believe patents stand in the way of solving these problems, and must instead stand firm in support of intellectual property rights at home and abroad.
Michael Specht is a director in the Electronics Group of Sterne, Kessler, Goldstein & Fox and Editor of The Reexamination Center. Prior to joining the firm, he co-founded and served as President and General Counsel of a company providing high speed Internet services.
I wish that the Patent Office accelerate measures to improve the quality and timeliness of patent examination. Having timely examination would cure many of the current ills associated with patents. Specifically, the Patent Office should reduce the time to provide a first office action to less than six months in all instances. I am a realist, and know this will not happen in 2010, but this is, afterall, a “wish list.” More realistically, the Patent Office should set forth a clear objective and plan to make this happen. Achieving the six month first office action goal should be achieved not by shifting the examination burden to the applicant, but primarily by improving the PTO processes and employing ample and qualified staff. At the same time, however, the Patent Office needs to ensure that examination quality improves. Too often, first office actions are poorly done, such that they do not advance prosecution. As a result, because it often takes a round of examination just to begin to understand where an examiner is coming from – more often than should be the case – a request for continued examination (RCE) is necessary. This adds unnecessary delay and costs for applicants, and causes the Patent Office backlog to grow. To help make achieving these wishes possible, Congress should keep its hands off the fees collected by the Patent Office, and allow the Patent Office to use those fees to do its job. Finally, I am hopeful that we can make progress towards these wishes in that under Director Kappos, the Patent Office has been taking steps in the right direction. Thus, my related wish is that Director Kappos will keep up the good work, and continue to work with industry to improve the patent process.
My second wish is that in In re Bilski, the Supreme Court recognizes its own precedent and maintains a broad view of statutory subject matter. The Court should recall its own observation in Diamond v. Chakrabarty that Congress had intended patentable subject matter to “include anything under the sun that is made by man.” With this is mind, the Supreme Court should clearly and unambiguously strike down the rigid machine-or-transformation test. Such rigid tests as the machine-or-transformation test are anathema to innovation and economic growth, particularly when employed by the Patent Office, in ways that were never intended in the Federal Circuit Bilski decision to reach to apparatus and software claims.
I visited and revisited the idea repeatedly, but I have nothing to contribute except maybe I wish that critics of the Federal Circuit and the patent system would wise up. The system isn’t perfect, nor is the court, but criticism founded largely in ignorance diverts attention from things that deserve it.
Odd patents catch attention, but do they furnish good evidence of a malfunctioning, or recently broken, U.S. patent system? Invalidity aside, the owners, if so inclined, would be hard pressed to enforce them. Critics who fault the Federal Circuit as pro-patent (or, more accurately, pro-patentee) apparently believe that patentees are of one mind. But consider, non-practicing entities aside, that a patentee who wins today on some theory may be forced tomorrow to eat its words as a defendant in an infringement suit.
The patent system is more easily faulted than fixed. Had the FTC seen ways to resolve tensions they surely would have been recommended, but recommendations are more apt to have been directed to Congress then to courts. With Congress apparently reluctant to join the fray the many issues that deserve attention may be unresolved for years to come.
Leo Mazur is an inventor and the President of The Inventors Society of South Florida. The ISSF is a 501(c)(3) not-for-profit corporation that seeks to foster creativity, free thinking and education that will further its members’ innovations.
I wish I could better help inventors and get them to realize some simple truths, but that is probably wishing too much. So rather than “wishing” I would like to give more of a New Years Resolution for me personally and for my group.
As a group leader, I have and will continue to give my members a better understanding of how, “real industry” works and what they need to do to create an interest in their particular product. However, one area I want to focus on is the power of the Patent.
I plan to make them more aware of the importance of developing a “true advancement of the art” utilizing the knowledge gained by studying the prior art rather then simply trying to overcome it. Of course, if they are successful, they could be sitting on a pot of gold in a field full of pirates, so going it alone without help is absurd. Now they need the biggest bully in the school yard that they can afford to put together an IP strategy that will not only defend their property but could actually improve the value of their invention.
Steven J. Moore, partner with the law firm Kelly Drye and one of the attorneys who represented Dr. Triantafyllos Tafas in the challenge to the USPTO claims and continuations rules, which were ultimately halted.
On a policy level I wish for Congressional inaction in 2010. It seems that Congress can turn a mess into a disaster even when they try otherwise. Therefore, I hope Congress gets too tied up trying to figure out how to fix the US economy, and embroiled in the many other issues on their plate, so that they lose sight of the patent system and it will no longer be in their crosshairs. Of course, on a personal level, I also wish for fees and costs to be awarded to Dr. Tafas by the Eastern District of Virginia!
Mark Lemley is the William H. Neukom Professor at Stanford Law School and partner with Durie Tangri LLP. He has testified numerous times before Congress, the California legislature and the Federal Trade Commission.
I wish the Supreme Court would vacate the opinion in Bilski, but issue no opinion of its own, dismissing cert as improvidently granted. But then, I also wish for world peace. I’m not counting on either one.