Harmonization and the quest for an elusive international grace period

Jim Pooley

Jim Pooley

James Pooley is a U.S. patent attorney with over 35 years as a successful Silicon Valley trial lawyer. Most recently, however, Pooley spent 5 years in Geneva, Switzerland as a diplomat and manager of the international patent system. In his capacity as Deputy Director General of the World Intellectual Property Organization, Pooley was responsible for management of the Patent Cooperation Treaty (PCT), managing staff from 60 countries and working the governments and NGOs in every region of the world.

Pooley’s tenure at WIPO was interesting, shall we say. During his tenure allegations about abuse of power swirled around WIPO Director General Francis Gurry (see here, here and here). Gurry, by and through WIPO attorneys, threatened me with criminal and civil prosecution if I did not remove public record documents relating to a complaint filed by Pooley against Gurry. Recently Pooley spoke with Joff Wild at IAM, who has continued to follow the Gurry investigation, saying that he felt it was essential for a thorough and complete independent investigation to once and for all address Gurry’s alleged misconduct.

What follows is part 1 of my 3 part interview with Pooley, which took place on January 22, 2015. Given that WIPO has threatened me with criminal prosecution I decided to steer clear of the Gurry scandal, at least for now until there is something newsworthy to report. In part 1 of our conversation we discuss the PCT and the need for an international grace period, which unfortunately seems stalled.

Without further ado, here is part 1 of my interview with Jim Pooley.


QUINN: Thanks, Jim, for taking the time to chat with me today. I know that you’ve recently ended your five-year term as deputy director at WIPO and now you are trying to get reintegrated into the private sector. With that in mind I thought a good place for us to start would be to talk about your experiences with WIPO. Was it what you thought it would be? If not, how was it different? How does a U.S. practitioner with your level of experience fit into the international stage? Was it an easy transition? I was hoping you could give us a sense of your experience because so many of us are never going to be work on that level, particularly not in the international sector.

POOLEY: Well, thanks, Gene, for taking the time to talk with me. You know, a lot of it was very much what I had expected because I knew a number of the people ahead of time and of course being part of the IP user community understood fundamentally what the PCT was all about. But the first thing you could say is going from the private sector where things move at a certain speed and where you deal with things at a certain level of openness and going into the UN where things move at a very, very slow pace and where you can’t always deal with issues as directly as you might like, that was an adjustment. Not as bad as it could have been in large part because I had a really fabulous team reporting to me. And one of the great things that I certainly had no disappointment about was the management of the PCT. The people who were there and the people who are still there handling this system know what they’re doing. They’re very dedicated. They understand the process backwards and forwards and their focus is very much on the customer. They know that’s why they’re there. And it was a real pleasure and a privilege working with them. So that part of it I was completely happy about. And of course I guess I should say that adjusting to living in Europe and the daily routine and the two hour lunch breaks and things like that was a little bit difficult. But you know, we got used to it and in fact my wife has become very enamored of Geneva and she’d love it if we could stay.

QUINN: So what is your plan? Is your plan to come back to the U.S. or are you going to stay in Geneva? Are you going to split time?

POOLEY: I’m probably going to be in both places. My practice will be based in Silicon Valley and I have decided to go it alone. Not because I have any issues at all with my former firm Morrison & Foerster, they’re great lawyers and if I wanted to go back to a big law firm I would certainly go there. But I think having the flexibility to take on a wide variety of assignments and to choose clients and causes requires a certain amount of independence. And so I’ll be based in Silicon Valley but as I tell people my practice is more or less in the cloud, figuratively and literally because there will be a lot of travel. I expect to be here in Europe frequently. We’ll see how it rolls out.

QUINN: That’s the new reality of our business really. I’m the same way. As long as I have my computer with me, and an Internet connection, I can be anywhere. It really opens up the globe as your marketplace. What I hear from a lot of folks on your level within the industry is sometimes going to a big firm is challenging simply because of the conflict checks that inevitably weed out clients you could otherwise represent.

POOLEY: Yes, indeed. Besides the technology that makes it easier and simpler to rely on yourself, my conflict committee meetings are very, very short and that’s a real advantage; I’m able to take on whatever relationships I want. And particularly in this global context not to have to worry about a partner in some distant office that might have a business problem with you taking on a certain engagement, that makes life a lot easier. But generally, I’m very excited to be back because having spent these five years here has given me a new perspective on IP. I think we tend to focus more on what’s happening in the U.S. for a lot of good and natural reasons. But despite the fact that patents are territorial, it’s not just the PCT itself, it’s the way that business works. Intellectual property is managed globally. So having that perspective has helped me understand the special needs of clients, particularly those who are competing in very, very tough global markets and who need intellectual property to serve them across the planet. So it’s good to be able to address those kinds of needs. And we’ll see how it goes.

QUINN: It seems like it would go pretty well. I mean you’ve got a lot of experience to draw on that I’m sure will be attractive. And it’s interesting that you bring up that point about clients and companies needing to compete in the global marketplace. You hear that more and more, and just this morning Michelle Lee was at an event at the Brookings Institution and she explained that one of the things the PTO is going to continue to try and do is work to harmonize laws and streamline processes. And in the past whenever we’ve talked about harmonization people in the U.S. would get very scared out of fear we were going to be harmonizing our substantive laws, not just harmonizing the process. I get the sense that the harmonization chatter that you’re hearing these days is not talk of substantive harmonization but really just continuing to harmonize the process. Is that your view or would you disagree?

POOLEY: No, I think that’s generally right. In fact, when you dig into this and you look at the “substantive differences” among jurisdictions such as they are, the differences are very, very small. And frankly this is something that I think Dave Kappos recognized and promoted very well during the time that he was Director. And that is that this is a way of thinking about harmonization that isn’t about positional bargaining. It’s about thinking of the whole process in terms of best practices. And in terms of what the ultimate customers need when they’re deploying IP in the markets that they have to serve. So when you look at it that way it’s a lot easier to see how compelling harmonization is. And maybe over time it’s going to become easier for everybody to see it that way. The actual changes that we might have to accept in a truly globalized, harmonized system are not going to be that difficult for us. The real difficulty is getting everybody to agree on one set of best practices. That, it turns out, is a political road that is just as difficult now as it ever has been. But the goal is clear, the goal is compelling and I think all of us need to work as hard as we can to push things in that direction. First of all we’ve got to get the industrialized countries to agree on a single approach, or at least an understood and aligned approach, to a grace period. Once that happens I think the other issues that we have to deal with will fall into place. We have to keep in mind that while the politicians or diplomats argue with one another, we have sitting on the sidelines all of our clients who are cheering for harmonization. They want to see this happen. And at the end of the day politicians need to recognize it’s the users of the patent system that own it and we need to make sure that they get the system that they deserve.

QUINN: I don’t know about you, I was really, really disappointed in the AIA debate and then implementation when we did what we did to the grace period. I couldn’t for the life of me understand why we couldn’t take all these other steps but still leave the grace period as it was. And it seems to me that in the marketplace today, in the Internet age, things are moving faster than ever. You see a lot of high tech products that hit the market and they make a huge splash. Take apps for example. Apps are making people a lot of money, and a lot of small companies are operating in that space. They make great apps. The app catches fire and it’s maybe making money for six months or a year, maybe a little longer, and then they move on to what’s next. In that kind of environment it just seems even more critical that we would have a strong grace period like we historically did have. Because right now I think in the U.S. any practitioners that are advising people that they can take advantage of the grace period are crazy. The grace period we have now is at best “an oops,” somebody didn’t file first, let’s file anyway and hope for the best.

POOLEY: Yes. In some ways we could say that we wish it had been a bit different but I’m frankly overall very, very pleased with how far we did get with AIA. And there’s going to have to be more international agreement and movement on grace period. That’s where the opportunity really lies. We have to get there. And even if we tinkered with the current situation in the U.S. we haven’t fixed it until we’ve fixed the issue in the rest of the world. I appreciate your pointing out that there’s a lot of risk even these days within the domestic system, but when you look at the world as a whole and the kinds of markets that people are in and, as you say, things moving very, very fast it’s just impossible not to believe that we’re going to have an agreed on grace period around the world, we’ve got to get there.

QUINN: I would agree with that. I personally would have preferred either changing our laws so that they were in line with the rest of the world or staying where we were with our grace period. I think either of those two options would have been better because in an effort to become like most of the rest of the world we adopted laws that are just different in an peculiar way, a different peculiar way, than we were before.

POOLEY: It has been a difficult adjustment for a lot of people. But again I think that the hope was that we would be able to move faster in our discussions with the rest of our partners around the world. But I’m optimistic.

QUINN: Well, has that happened?

POOLEY: The conversations are still going on and —

QUINN: Are they accelerating? I mean you were on the international stage for a long time as this wasooing on, so do you think that this is really accelerated what is inevitably going to happen, which is a real truly globalized streamlined application process?

POOLEY: Well, yes and no. It has accelerated beyond where it was before which was more or less locked up. But it hasn’t accelerated to the rate that we all had hoped and expected that it would. I think we legitimately expected that we would have serious productive conversations with our friends in Europe virtually immediately. And that’s been a lot harder to get going than I think we had hoped for.

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Join the Discussion

2 comments so far.

  • [Avatar for Anon]
    February 10, 2015 07:57 pm

    Let’s not forget about the impending politically driven mess in EPO-land…

  • [Avatar for Simon Elliott]
    Simon Elliott
    February 10, 2015 07:17 pm

    I long for the days of a few years ago when “harmonization” was about grace periods. Now, we have fracturing of international patent norms in the US (post Supreme Court) and rumblings in India that pose a far more urgent threat to harmonization. If you cannot patent DNA in the USA, but can in Europe, that’s a pretty big lack of harmony