I have updated the Patent Reform Resources section of the right sidebar to include the prepared testimony of each witness in yesterday’s patent reform hearing of the House Subcommittee on Courts, the Internet, and Intellectual property.  All linked documents are in .pdf format.

I’ll continue to update this resource as materials become available.

Today’s hearing of the House Subcommittee on Courts, the Internet, and Intellectual Property was interesting for its discussion of the reform measures contained in the Committee Print, but was just as interesting for its discussions of reform measures left out of the Committee Print (but still considered “on the table”).

In particular, Representative Boucher initiated a discussion on the need for a procedure that allows third parties to submit relevant art to the Patent Office during examination. Representative Boucher mentioned today that he had included such a provision in his reform bill of several years ago and then asked the witnesses for their thoughts on the matter. Jon Dudas, Director of the Patent and Trademark Office, described the current procedure that allows for such submissions within two months of publication and indicated that the Office is open to suggestions for new procedures.

He cautioned, though, that we need to be careful here. Why? Well, for one, we can’t have a full-fledged pre-grant opposition proceeding (this is why you can’t submit statements of relevance when submitting art within the two month window). That would be illegal. But I think there’s another reason: workflow mechanics. Think about it. If third parties were allowed to submit art at any time during the process, an application could be derailed from the normal course of examination at any time. Examiners would become frustrated because they might feel that they are “pulled back” every time they have a case ready to advance. Sounds like a system ripe for abuse to me.

I have a proposal that would allow for easy submission of art by third parties at any point during the examination process without derailing the Examiners – the prior art wiki.

(what’s a wiki, you ask? Consult wikipedia for the answer)

The Patent Office prior art wiki could be implemented in various ways. Here’s one suggestion -

The USPTO maintains a prior art wiki site (e.g., priorart.uspto.gov) and adds a page for every application upon publication (18 months). So, every Thursday, the Patent Office adds pages to the wiki for every application that is being published that week. The page for each application contains at least the full text of the application. Ideally, drawings are conveniently located on the same page. Optional information could be added that allows for efficient searching, links to related pages (both on the wiki and elsewhere), etc.. A prior art section is featured prominently on the page and is pre-loaded with any references submitted by the applicant and/or cited by the Examiner.

Immediately after the page is created, control over the content of the page is handed over to the public at large.

Sort of. The application text could be locked down (no need to allow editing of that). But, the prior art section is left wide open. Anyone can edit the section, adding references and links to prior art that the Patent Office may wish to consider during its examination. No deletion of material would be allowed, except by the Patent Office (it would need to monitor for flames and other disingenuous posts). Perhaps editing would be allowed near the claims (not of the claims) so that people could add comments adjacent particular claims (e.g., See Smith reference A, 1997, p. 231).

Here’s the beautiful part. There’s no need to limit the submission window to two months or any other arbitrary time period because the wiki could easily be worked into the normal examination workflow. For example, Examiners could consult the wiki when they perform and update their search. Also, another check of the wiki could be performed as part of the pre-issuance routine.

And it doesn’t have to end upon issuance. Third parties could continue to submit art after issuance, creating a valuable resource for any parties interested in assessing the validity of the issued patent (e.g., the Patent Office during a post-grant opposition (if implemented), a court during an infringement lawsuit, and any party assessing the economic value of a particular patent).

The prior art wiki would allow the Patent Office to leverage its examination system and infrastructure to get the public to supplement the patentability analysis. And what a great opportunity for the public to participate in the patent system…

My rethink(ip) friends and I have discussed this idea for some time. Perhaps if the Patent Office doesn’t get the ball rolling, we’ll be motivated enough to launch our own.

So, the next time you hear someone say, in reference to a claim in a published application, “that’s been known for years,” you may be able to respond “put it on the wiki!” Or, as Steve likes to say, “put up or shut up!”

First.  Representative Berman said to the witnesses and the patent community generally, “If you have a problem with a proposal, help us craft a better solution.”

Let your opinions be known, especially now before a bill is introduced.  How?  Write your Congressman.  Better yet, write Representatives Smith and Berman.  Include Senator Hatch too.  Send comments to me and/or post to the blog, anonymously or otherwise.

Second.  Jon Dudas mentioned that the quality of patent applications coming into the office is an issue.

He’s right.  We’ve all seen them (but, of course, none of us has written them).  The Patent Office is trying to do better.  We should too.

Cnet ran an article earlier this week about the recent congressional activity surrounding the patent reform effort.  The article includes a very misleading statement about the reform effort.  It closes with:

Other legislative possibilities include lengthening the duration of a patent, currently 20 years.

While I suppose it is a legislative possibility (isn’t everything?), lengthening the duration of the patent term is not a serious component of the current reform effort, nor is it likely to become one.

Senator Feinstein made the above comment during the opening statements of the Senate hearing held earlier this week.  With a sense of state pride, she relayed a story about Levi Strauss, the inventor of blue jeans, and the patent he obtained on his invention.  Then, suddenly, she stated:

“I’ve begun to wonder whether the time for the patent is an adequate time….“

This comment is the sole basis for the Cnet statement.  One Senator’s off-hand remark.  She was thinking out loud, really.  No questions asked of witnesses; no responsive comments were made by other members of the Subcommittee.  Nothing.

Indeed, Senator Feinstein’s comment is the first and only time, to my knowledge, that extension of the patent term has been mentioned in the context of patent reform.  It is not a component of any reform proposal at this time and is not likely to be incorporated into any bill that is introduced.

Had Cnet researched the matter more extensively, I’m sure they would have chosen not to lead people to believe that patent term extension is seriously under consideration.  Maybe they only listened to the beginning of the hearing (Feinstein made the comments in the opening remarks) and left with the impression that term extensions was important?

Kim Weatherall, of Weatherall’s Law, has a wonderfully sarcastic take on the Cnet article.  Think patents in the context of California, copyright, and Sonny Bono.

On May 5, I’m giving a presentation to the Idaho State Bar Intellectual Property Section.  The topic?  Patent reform, of course! [.pdf brochure]

Steve Nipper invited me to give the talk several months ago.  We chose patent reform as a topic but worried that it might not be timely since we had no idea when the issue was going to take off (all of this occurred before the Committee Print and before even the first hearing announcement).

We gambled somewhat, and won.  The timing couldn’t be better.  We’re in the midst of congressional hearings and awaiting introduction of legislation.  I’ll probably have to update my materials just before the talk…

So if you’re interested in the reform issue and you’ll be in the Boise area on May 5th, we’d love to see you.

The House Subcommittee on Courts, the Internet, and Intellectual Property will hold its second oversight hearing on the Committee Print regarding patent reform on Thursday, April 28, 2005 at 12:00 Eastern.

The following witnesses will testify:

Jon Dudas, Director of the US Patent and Trademark Office

Richard Levin, President of Yale University (and co-author of the NAS Report)

Dr. Nathan Myhrvold, CEO, Intellectual Ventures

Darin Bartholomew, Senior Attorney, John Deere and Company (on behalf of the Financial Services Roundtable)

I have updated the Patent Reform Resources section of the right sidebar to include the prepared testimony of each witness in yesterday’s patent reform hearing of the Senate Subcommittee on Intellectual Property.  All linked documents are in .pdf format.

I’ll continue to update this resource as materials become available.

Following quickly on the heels of the initial efforts by the House, the Senate Subcommittee on Intellectual Property conducted a hearing yesterday afternoon on the subject of patent reform.

In contrast to the House hearing, which focused on the Committee Print as a point of discussion, the Senate hearing was structured as a panel discussion of the reform issue generally.  Nevertheless, the Senate hearing echoed several themes that emerged in the House hearing.

Specifically:

There is widespread support among users of the patent system for several major reform measures, including both administrative reforms and litigation reforms.

Substantial differences of opinion exist on a few of the proposed reform measures, including proposed changes to the injunctive relief provisions of the patent laws.

International harmonization of patent laws is one of the driving forces behind the current reform efforts.

There is a seemingly unanimous belief amongst users of the patent system that adequate and stable funding (using the words of Michael Kirk) for the Patent and Trademark Office is critical to the success of any reforms that are eventually enacted.

Politicians appear ready and willing to tackle the issue.

The witness list for the Senate hearing was divided into three panels.  The first panel, consisting only of Director Dudas, provided the views of the Patent and Trademark Office.  The second panel consisted of the two primary authors of the National Academies report and the third panel, designed to provide the views of inventors and patent owners, including representatives of businesses of various sizes.

Nearly all of the witnesses expressed support for two major administrative changes:  adoption of a first-inventor-to-file system and implementation of an administrative post-grant review system.  Levin and Myers, the authors of the National Academies report, each expressed an opinion that implementation of a post-grant review system should be the highest priority of all reforms (with international harmonization issues, presumably including adoption of a first-inventor-to-file system, running “a close second”).

William Parker, of Diffraction, Ltd. provided the lone voice of dissent against adoption of a first-inventor-to-file system, claiming that such a system would pose problems for small inventors (individuals or small business inventors).

While the concept of post-grant review was generally favored by the panel, differences remain on the details of the administrative system.  Director Dudas expressed the position of the Patent Office that a window of 12 months after issuance is needed, as compared to the 9 month window in current proposals.  David Simon, appearing on behalf of the Business Software Alliance, spoke of a need for a “second window” for opposition that could be opened at any time in the patent term when certain conditions are met.  Robert Armitage of Eli Lilly disagreed, stating that foreign opposition systems, which frequently produce oppositions that last several years, are no model for our reform effort and that a single, 9 month window for instituting an opposition is sufficient.

The hearing confirmed the status of injunctive relief reform as the most controversial measure currently on the table.  Several of the witnesses that support reform in this area criticize the current system as producing automatic injunctions with patents found valid and infringed, claiming that courts ignore the statutory language regarding consideration of the equities in a particular situation.  On the other side, many believe the current system to be adequate and appropriate.

The supporters of reform in this area concede that they do not want to eliminate the injunction as a remedy, but rather want only to ensure that the equities be considered, as the statute requires, when courts consider awarding this type of relief.  They even note that a primary reason behind this position is the “patent troll” problem, believing that a court would be unlikely to issue an injunction based on equitable considerations when a patent owner who doesn’t practice the claimed invention (or who exhibits other troll-like traits) proves infringement.  Look for the trolls to be singled out in future debates on this issue.

Tonight’s schedule for C-SPAN2 lists two airings of today’s patent reform hearing of the Subcommittee on Intellectual Property (8:00 PM and 9:39 PM).

UPDATE:  Airing times have been updated to 8:46 PM (currently airing) and 12:04 AM tomorrow morning (all times Eastern).

In his opening statement in today’s hearing of the Subcommittee on Intellectual Property, Jon Dudas, Director of the United States Patent and Trademark Office, stated that:

it is our responsibility to perfect the patent system and educate the world on the importance of patents

The statement was made in conjunction with a reference to the growing “chorus of critics” in the international arena that question whether patents, generally speaking, are good for economic development.

Its clear that the tie between reform here at home and international patent law harmonization is growing stronger.

Stay tuned for more information on today’s hearing.