Things have been a little quiet lately over at Rethink(IP). Sure, Doug and I did a tour of duty out in Vegas last week, but there’s been a lot more activity behind the scenes than that. We’ve been quite busy over the summer, and we’re about to launch our most ambitious project yet.

What is it, you ask? I can’t pop the top yet, but can promise that we’ll do it soon. We’re planning a very brief private beta period beginning at the end of this week. If you’d like to be included in that, please send me an e-mail at jmb@promotetheprogress.com.  We’re planning to launch the public beta – where everyone can participate – immediately after the brief private beta period.

Are you a little curious? Here’s a big hint….remember the word everyone. The focus of the project is community. Everyone. Everyone can participate, which is exactly the way it should be.  We think that the patent reform efforts have left the community at the door, and we’re fixin’ to fix that.   Here’s a few more hints to get your gears turning:

It’s about community…it’s about being open….not closed…it’s about everyone, not just experts.  it’s about patent review…it’s about improving the delivery of patent-based information…it’s about facilitating the discussion of patents and patent information.

Really, It’s about making things better…which, interestingly, is reflective of my original thoughts on the launch of the Rethink(IP) adventure.

Stay tuned.

I don’t know what to say about this downright creepy example of internet weirdness, other than thanks to Nipper for finding it (I think).

I’ve had a lot of fun over the last several years talking to patent attorneys, inventors, and business folks about the patent reform issue in the United States.  I’ve had intriguing conversations with colleagues, friends and adversaries alike.  The best discussions usually start something like this:  “Yeah…the changes would be a big deal.  Hey…I’ve got an idea…they should do this…..”

I’ve heard ideas that range from the well-thought-out, practical approach to a specific problem, to the academically-interesting-but-not-so-practical approach (think maintenance fees based on economic impact of a patent), to the downright wacky.

I thought I’d share a couple of my favorites.  One is serious, and one is wacky.  I think they’re both great ideas.

Try this on for practicality - why doesn’t the Patent and Trademark Office build regional offices in strategic locations around the country that would allow it to build the examining corps by tapping local, specialized talent for particular technology areas.  Detroit seems a logical place for an Office that specializes in mechanical and electrical engineering (and, um, I’m guessing there’s going to be a few talented automotive engineers looking for new careers over the next several years).  A computer/software shop could be established in northern California (could the PTO compete in this labor market?) and a biotech/pharma Office could be set up in Boston or New Jersey.  The whole network could be backed by a computer/software system that allows any Examiner in any location to work on any application.  I’m betting that a private company faced with the specialized labor demands and turnover rates experienced by the Office would have done this years ago….

And now the wacky…..I’m always glad to hear people thinking of new approaches, but come on!  Examiner house calls?  Yes…someone once suggested to me that the Office should “dispatch” an Examiner to the inventor’s home (or company) when examination is first initiated.  I dismissed this at first (as wacky), but grew to like it the more I thought about it.  This idea has real genius behind it – a short period of intense prosecution where both sides can focus on an application (or a family of related applications) for a brief period of time.  The current prosecution process is incredibly inefficient…taking several years to accomplish only several hours of actual work.  Using the housecall idea, the whole process could be compressed into a single span of intense work.  Think about it.  If an Examiner asked you to come to the Office (Examiners travelling just won’t work; we’ll have to make the “housecalls”) for “a couple days of intense prosecution” on a family of applications….would you do it?  You’d discuss the applications, the art, amendments (if necessary) and any other matters directly with the Examiner, and both of you would focus solely on the applications at hand.  You could break at times to talk in confidence with your client and the Examiner could leave to update searches, talk with other Examiners, etc.  At the end of a couple days, you might just walk away with a Notice of Allowance, or two, or three.  Prosecution could be wrapped up weeks after the Examiner first opened the file, instead of years later…..

Advice given to me years ago by a senior attorney seems appropriate:  “If you can’t embrace the wacky ideas, you’ll never make it as a patent attorney.”

After all this time, Senator Hatch finally spoke his mind on the reform issue when he introduced the Patent Reform Act of 2006 (S3818, .pdf available here) last week. Considering the fireworks in the House following introduction of Representative Smith’s Patent Act of 2005 (.pdf), the significant number of oversight hearings that followed (the Smith bill, officially, never moved an inch), and the Senate’s long period of silence (remember, we’ve only had rumblings from this side of the 109th Congress) on the issue, the mere introduction of the Hatch bill is a big deal.

Despite that, many Hill watchers are labelling the bill as Dead on Arrival and quickly dismissing it as unimportant. I agree the the bill is DOA. That part is easy – no legislative package that broadly addresses an issue as significant as patent reform has a chance of moving with only a few legislative weeks left in the session. This is especially true in the case of the patent reform issue, which has become very contentious.

That doesn’t mean that the bill is unimportant, though. Indeed, I think it’s quite significant.

Here’s why -

Who? The Patent Reform Act of 2006 is the best thing we’ve seen to date on Senator Hatch’s views on the nitty-gritty of patent reform. Sure, we’ve had sound-bytes and press clippings here and there, but, prior to introduction of the Act, we didn’t have a public indication of his views on the ugly details that underly the issue. Does he support apportionment of damages? What about post-grant review and the controversial ’second window’? Now we have an idea where he’s coming from…not that he’s tied to the details of the Act as introduced, but it shows us what he’s willing to put on the record as his starting point.

The Act shows us what Senator Hatch is willing to put on the record as his starting point on the reform issueWhat? So what does patent reform mean in the Senate? A lot of the details of the bill are not very surprising. For example, it includes a change to a first-to-file system and provisions allowing third parties to submit relevant art to the Patent and Trademark Office for pending applications. Many stakeholders support these reforms…no big surprises there.

If you dig a bit deeper, though, you find the interesting stuff. Perhaps most surprising is the bill’s approach to post-grant review and the controversial second-window (which deals with the timing of the initiation of a review proceeding in the Patent and Trademark Office). This issue has proven to be very controversial, and the opposing sides couldn’t be more divided. The pharmaceutical and biotechnology industries, along with individual inventors and other patent owner groups, have opposed the second window, viewing it as a provision that would create a cloud of uncertainty that will always ride with a patent, which would, of course, affect its value. In stark contrast, the software and computer industries see the second window as a necessary backup to the first window, which would run for 12 months following issuance of the patent (under the Hatch bill; 9 months under the Smith bill). These dramatically opposing views on this issue represent the diametrically opposed uses of patents by these two sectors of the economy (offensive v. defensive; high value v. marginal value of individual patents).

…the Act has no certainty with respect to timing of the second window…it merely creates a burden of proof under the control of the Patent and Trademark Office. Now that’s a cloud of uncertainty…The Patent Reform Act of 2006 includes a second window that is left wide open, even more so than the second window of the Smith bill. It offers no certainty with respect to timing of the second window. It allows for the filing of a petition for review within 12 months from issuance (first window) or by anyone “who establishes a substantial reason to believe that the continued existence of the challenged claim causes or is likely to cause the petitioner significant economic harm.”

No deadlines….just a burden of proof controlled by the Patent and Trademark Office. Now that’s a second window that creates a cloud of uncertainty.

Also surprising is the inclusion of an apportionment of damages section. This reform, advanced by the software and high-technology manufacturing sectors (along with the New Democrat Coalition), has been strongly opposed by the pharmaceutical and biotechnology industries in the House.

Where? (This could also be termed ‘Who, Part II’). So where is the Patent Reform Act of 2006 coming from? The apportionment of damages and second window provisions are clearly items on the software/computer/high technology reform agenda, and directly opposed to the pharmaceutical/biotech agenda. The language of these provisions is very favorable to the software/computer/high technology industries and cut square across the grain of the pharmaceutical/biotechnology/and individual inventor agendas. Do the math.

When? Even the timing of this bill is interesting. The bill will go nowhere in the 109th Congress, of course. It’s essentially a logistic impossibility for this massive bill to move anywhere in the waning days of this Congress. But, the bill does stand as a matching bookend to Representative Smith’s Patent Act of 2005, which was introduced relatively early in the 109th. In that sense, the Patent Reform Act of 2006 serves as a trail blaze, showing us the direction in which the battle has moved.

Clearly, the software and computer industries have flexed their muscle and are standing their ground in the fight. Indeed, the blaze set by Hatch’s bill suggests that these industries are tipping the scales in their favor…something that is surprising a lot of people.

Introducing the bill at this late stage also allows Senator Hatch to point to the issue as something he worked on in the 109th. Record-building like that is not insignificant, from both sides of the equation. Think about it.

So now what? Patent reform, in the broad sense, is dead in the 109th Congress, but we know that both the House and the Senate are set to tackle the issue in the 110th. Meanwhile, the Patent and Trademark Office continues to beat its reform drum….and it doesn’t have to pause for pesky elections.

I’ve got a few speaking engagements in the coming months that readers of Promote the Progress might be interested in. On August 25th, I’ll be speaking at Dunes CLE’s Current Issues in Patent Law in Las Vegas. I’ll be presenting an update on legislative, administrative, and judicial activities relating to patent policy in 2006 (think the Patent Act of 2005, …the Patent Reform Act of 2006, the PDQ Act, the proposed rules, eBay, and other developments). Doug is also speaking at this event (on a topic near and dear to our hearts – strategic patenting initiatives).

You can still register for the Dunes CLE here.

We’re also in the preliminary stages of putting together a conference in January specifically designed for in-house counsel. The program will be aimed at helping in-house attorneys develop effective patent strategies in these times of change, including prosecution and portfolio management strategies. I’ll be on a panel with Doug and Stephen the Barista for this conference, which will be in New York City. I’ll post additional details when they are available.

What did I do on vacation? Well, I skimmed the Patent Reform Act of 2006 and decided I could ignore it for a bit to focus on the good stuff: took the kids to Disney World (met Mickey in his “special room” – nothing matches that for kids); stayed at the Animal Kingdom Lodge (an incredible experience); drove to my favorite place in the world – St. Pete Beach, Florida – for leg two of the trip; read Wolves of the Calla (the fifth title in Stephen King’s Dark Tower series); started the sixth (Song of Susannah); learned that some of the delicious grouper sandwiches I’ve eaten over the years in Florida might have been catfish…or tilapia or some other fish; watched a lot of baseball, including several painful Indians games; took my sons shelling on the beach I’ve been wandering for the past 30 years; talked Castro with the short order cook at a Cuban grill; got a little sunburn on my shoulders; went to my favorite seafood restaurant only to find it boarded up (Noooooo!); passed on a trip to my second favorite restaurant (saw Hulk Hogan there a few years back!) because my youngest son was “a bit cranky;” met a former captain and all-big ten player from “that school up north” and his family….and really liked the guy (learned that he’s a Buckeye at heart…that helped, and that’s why he’ll remain nameless on the blog); played miniature golf…twice; missed a chance to catch up with a Florida-based friend and his family (darnit!); watched the sunset over the Gulf of Mexico; and spent a lot of time with my family. Family vacations are truly one of the best parts of life, most of the time.

Last week, Senators Hatch and Leahy introduced S3818, the first true patent reform bill from the Senate in the 109th Congress. I have made a .pdf of “The Patent Reform Act of 2006″ available on Promote the Progress. I’ll write more about the content, scope, and timing of the bill soon.

The 109th Congress is winding down and activity on patent legislation has slowed significantly over the last several months. It seemed like a safe time to vacation….so I did. Senators Hatch and Leahy didn’t see it that way, though. The two introduced the Patent Reform Act of 2006 (S. 3818), the first true Senate patent reform bill in this session of Congress. I reviewed it quickly (while on the beach) and decided not to post any thing immediately. Why? Stay tuned….I’ll have a detailed post later today or tomorrow.