Robert Stoll is a Partner and Co-Chair of the IP Practice Group at Faegre Drinker Biddle and Reath and a former United States Patent and Trademark Office (USPTO) patent commissioner who applies more than 35 years of experience in intellectual property prosecution to advising clients on protecting inventions and the complexities of foreign and domestic intellectual property laws. He also advocates generally for the critical role of intellectual property in economic growth and job creation. Bob advises clients about potential legislative and rule changes and helps them advocate their interests before the administration and the legislature. Bob frequently testifies in court as an expert witness in prosecution at the USPTO.
Bob manages patent prosecution for multinational corporations, conducts portfolio analyses and provides opinions on patent issues. He troubleshoots problems that arise in the prosecution of patent cases. He advises on post-grant procedures before the USPTO and engages in policy work related to intellectual property. Bob also represents other attorneys and firms before the Office of Enrollment and Discipline at the USPTO.
Bob retired from the USPTO as commissioner for patents in 2011 after a distinguished 34-year government career, having started at the USPTO as an examiner. He was instrumental in the passage of landmark patent legislation, the America Invents Act, and is lauded for his efforts to reduce patent pendency and improve patent quality. As Commissioner, Bob managed 8,000 employees at the USPTO and was responsible for all of the functions relating to the grant of a patent in the Office.
As the agency head of the Office of Legislation and International Affairs at the USPTO, Bob developed and delivered education programs worldwide to foreign officials and to the public. He was influential in the development and analysis of legislation concerning all areas of intellectual property and was one of the country’s leaders in establishing the U.S. government’s positions on international issues related to intellectual property. He also helped develop and plan USPTO strategic goals, objectives and priorities and served as a liaison with patent and trademark bar groups and academic and scientific communities.
A strong and predictable intellectual property system is crucial to protecting and promoting American innovation around the globe. It allows American businesses of any size to compete globally, creating millions of American jobs. Strong intellectual property rights provide a strong foundation for America’s role as the world’s innovation and technological leader, powering our world with the next generation of technology to help kids learn, to connect remote workers, provide better access to healthcare and help make our planet more sustainable. The role of innovation (from vaccines to communication technology, content creation, etc.) has never been more crucial than during the ongoing COVID-19 pandemic. The ability to protect what one creates or invents grows our economy and GDP, generates incentives to continue the innovation process, and makes our country safer and more secure from foreign adversaries.
In withdrawing the 2013 statement, the new 2019 guidance by the DOJ, NIST and the USPTO states the obvious, i.e. that there is no difference in the law between F/RAND assured standard essential patents and all other patents. While some would have perhaps liked to break the unitarity approach of the patent system so as to weaken remedies against the infringement of essential patents, a legal system that would apply a different standard to standard essential patents as opposed to other patents would violate U.S. trade obligations.
I am sure that the justices of the Supreme Court did not anticipate the confusion they created when they issued their controversial decision in Alice Corporation v. CLS Bank in 2014. That case effectively upended well-established precedence when the Court unanimously held that a computer-implemented scheme for mitigating settlement risk was not patent eligible subject matter because the claims were drawn to an abstract idea, and that merely requiring generic computer implementation fails to transform the claims to eligible subject matter. The Court itself said their holding was to be narrowly construed, but in providing a vague, two-step test to determine whether something is patent eligible, they unleashed a world of hurt on some of our domestic industries seeking patents in cutting-edge technologies. The application of the Alice test to some of our health-related industries is having disastrous effects. On February 6, 2019, in a split decision, the United States Court of Appeals for the Federal Circuit (CAFC) found in Athena Diagnostics v. Mayo Collaborative Services that diagnostic methods are not patent subject matter eligible unless they embody a separate technical improvement beyond the correlation of certain antibodies in bodily fluids to particular diseases. In a footnote, the majority lamented that they felt compelled by Supreme Court precedence to render their decision, but recognized that protection of diagnostic methods would be for good for society. The Athena case does not portend well for the CAFC adoption of the recent USPTO guidance on Section 101. The courts will eventually be able to either put their imprimatur on those guidelines or discard them. The sooner that is done, the better.
After TCL lost its IPRs against Ericsson in a written decision at PTAB, it was barred from filing subsequent IPRs against the ‘510 patent. TCL was then hit with a very large verdict for infringement of the patent in court. Then, four months after the verdict the same patent is challenged at the PTAB again by a consortium that has some relationships to TCL.
Every year different groups provide rankings of patent prosecution law firms and a company’s patent count for the year. Patent law firms will tout their rankings based upon the number of filings at the U.S. Patent and Trademark Office (USPTO) or the number of allowances they obtained for clients over the previous year. And companies will boast about their patent prowess based upon the size of their portfolios. But things are changing. Innovative algorithms and even diagnostic methods may be easier and more effectively protected by trade secret. Trade secret protection avoids the uncertainty of compliance with the vague patentability standard set forth by the Supreme Court.
Andrei Iancu is leaving an extremely lucrative position as Managing Partner at Irell to make his mark upon the patent system as Director for a salary that many in his wage bracket would consider a stipend. But his chance for significant policy impact is limited by time and the need to immediately deliver valid and timely patents on day one. Hopefully, Director Iancu is already planning some of his initiatives to get a jump start on his legacy.
Licensing a product instead of selling it may also be a tool for avoiding international patent exhaustion. It is common to distribute software via license, and this might avoid international exhaustion, although it will not work for all products. For example, licensing a drug makes little sense. However, re-importation of a drug would be regulated by the FDA, and the conditions and chain of control of drugs might mitigate some of the international exhaustion issues there. As such, many companies are evaluating the extent of the decision on international exhaustion and how it affects their industries. Since companies have thousands of contracts already in place and the parties will have to reevaluate their positions going forward, this is causing mass confusion and restructuring of contracts and relationships.
Post grant procedures can be an effective and efficient way of promoting patent quality by invalidating weak, inappropriately granted patents. What we need now is thoughtful review and assessment, based upon five years of experience about what is working and what needs to be done to improve the system. The above issues need to be watched and analyzed, and, if appropriate, modifications need to be suggested and tried. Many improvements can be made by the USPTO itself through transparent rule-making. Some may need legislative intervention. But there is no need to throw out the entire process. We should learn from what has happened before and be willing to improve the system for the benefit of innovation in our country and the continued growth of our economy.