Posts in Capitol Hill

The Senate Roll was called and a vote taken on whether to table the Feinstein Amendment. The votes were 87 in favor and 13 against, thereby killing the Feinstein Amendment and keeping the first-to-file provisions within S. 23.

As flattering as it was to be inserted into the patent reform debate in some peripheral way, the real news from yesterday was the Manager’s Amendment was passed by a vote of 97-2. The Manager’s Amendment included language that would allow the United States Patent and Trademark Office to keep the fees it collects. The Manager’s Amendment reportedly also included insertions favored by Congressman Lamar Smith (R-TX), who is chair of the House Judiciary Committee. Thus, it seems quite likely that patent reform will soon become a reality.

As I have repeatedly explained over and over again for the past several years, there is nothing to fear about a first to file system (see above) AND there is no reason that a first to file system must be linked with changes to the grace period enjoyed by innovators. It seems those that would prefer to marginalize my factually correct statement about a de facto first to file statement conveniently ignore my complete views. Those who mischaracterize the truth seem to have an unhealthy and unnatural emotional attachment to a first to invent system that simply doesn’t exist, at least 99.99613% of the time.

Easily the most eggregious thing written about patent reform, at least that I have seen, is a statement from the Associated Press. In talking about the grace period in the patent reform legislation the AP wrote: “It comes with an enhanced grace period to protect inventors who publicly disclose their inventions before seeking patents.” This is not misleading, it is flat wrong. The grace period contained in S. 23 is not “enhanced,” but rather it is reduced.

What follows is a letter to Congress from Gary K. Michelson, MD, published here with permission…. First to invent versus first to file is the proverbial tempest in a teacup (smaller than a teapot). All sound and fury signifying nothing. The low cost and ease of filing a provisional patent application (a placeholder for the first to invent) should render any discussion of fairness moot. I believe that first to file is both fair and beneficial to all inventors; and is an important change to correctly position the U.S.P.T.O. as the leader in what will become a worldwide patent system.

It’s crunch time.  The Patent Reform Act of 2011 is scheduled for an up-or-down vote on the Senate floor this Monday, Feb. 28.  It’s time for all intellectual property professionals to look carefully at the Patent Reform Act, and decide: is this bill good for American innovation or bad? I am convinced that it is bad. This bill (and its…

Earlier today Chief Judge Paul Michel (ret.) of the United States Court of Appeals for the Federal Circuit testified before the Subcommittee on Intellectual Property, Competition and the Internet, a subcommittee of the House Committee on the Judiciary. In a nutshell, Chief Judge Michel explained that “[t]he PTO desperately and immediately needs: several thousand additional examiners, dozens of additional board of appeals members, and major modernization of its IT systems, which are antiquated, inadequate and unreliable.”

Congress is at it once again, with the Senate Judiciary Committee reporting out a bill last week that remarkably resembles the bill that has been unable to gain any traction in the Senate for the last several years. That would suggest that the same fate is in store for this legislation. Not so fast! I have a suspicion that this year things are different and that we really could be on the cusp of patent reform. Whether that is for better or for worse will largely be in the eye of the beholder, but what is emerging feels different and I think we are closer to change, and perhaps an end to fee diversion, than we have been at any point over the last 6 years.

Staffers worked with us to coordinate the interview with Congressman Chaffetz, which took place earlier today. I was told I would have 15 minutes with the Congressman, and graciously he allowed the interview to go a little long. We talked about the President’s States of the Union address, patent reform, the USPTO budget, innovation generally, manufacturing, job creation, China and more. I think many will find what Congressman Chaffetz has to say quite interesting and very encouraging. I myself found him to be well informed and refreshingly candid.

Over the last two election cycles it has become clear how important it is to have a social media strategy. President Obama masterfully used various Internet and social media communications to ride a wave into office, leaving the Republicans well behind. In the 2010 election cycle the Democrats tended to do quite well on Facebook, but the Republicans gained momentum and did much better on Twitter and enjoyed greater overall “digital energy,” at least according to research conducted by the EmergingMedia Research Council. It is safe to assume that Members of Congress are getting more involved with Social Media, and that trend should only continue to grow in coming years.

The Coburn Amendment would create a specialized fund within the Department of Treasury known as the ‘‘United States Patent and Trademark Office Public Enterprise Fund.” The PTO Director would have access to monies in the Fund for expenses ordinarily and reasonably necessary for running the Office. Perhaps most importantly, the Fund could grow so monies in the Fund could be accessed by the Director without fiscal year limitation. This could allow the Fund to grow in certain years to a critical mass that may be needed for capital expenditures. This is a brilliant idea and one that the industry needs to get behind wholeheartedly.

On Friday, February 4, 2011, the USPTO will publish in the Federal Register a notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date for a proposed fee of $4,000. Sadly, because the Patent Office does not have fee setting authority there will be no reduction in fees available to small entities who otherwise normally pay 50% of most Patent Office fees. Because the Congress controls which fees qualify for small entity preference everyone will need to pay $4,000 to accelerate under Track One.

Specifically, we learned that the USPTO projects an average first action pendency of 23 months by the end of fiscal 2011, that participating in the First Action Interview Pilot Program more than doubles the likelihood of getting a first action allowance, that Track 1 rules are imminent with rules for Tracks 2 and 3 to follow and during FY 2010 nearly 6,000 USPTO employees worked from home at least a portion of their work week. We also heard an ominous and declarative statement from Kappos, who told the House Subcommittee on Intellectual Property that the diversion of fees will cause the patent backlog to rise.

Realistically, I understand full well that it is unlikely that Congress will bother themselves with reform efforts that are sensible, at least at the moment. It is also unlikely that innovators will be adequately represented in any reform efforts once they do arise. It seems that the power structure in Washington, D.C. believes that the term “innovator” and “big business” are synonymous, which surely they are not. It is also unlikely the Senate will move beyond the legislation Senator Leahy wants so badly but can’t seem to move. Thus, if we really want sensible reform that actually raises up the Patent Office and guarantees the value of patents for innovators we need to be ever vigilant.

Judge Kathleen O’Malley was confirmed by the United States Senate earlier today. O’Malley’s confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law.