Michelle Lee, Deputy Director of the U.S. Patent and Trademark Office, described the administration’s plan, including adoption of common terms of art to bring clarity to patent language and avoid costly and needless litigation. (Diego M. Radzinschi/NLJ)
The Obama administration last week expanded its effort to improve the patent system and curb abusive legislation, but intellectual property lawyers said the initiative’s limited scope suggested that any major reforms must come from Congress.
White House officials on Feb. 20 announced that the U.S. Patent and Trademark Office would begin a pilot program within the next few weeks involving the use of glossaries in patent examinations. That could bring clarity to the abstract language that can sometimes drive patent litigation, particularly regarding software patents, the lawyers said.
Along with added training for patent examiners, patents with clear boundaries would avoid “costly and needless litigation down the road,” Michelle Lee, the PTO’s deputy director, said during a White House news conference.
A new website — www.uspto.gov/patentlitigation — now provides information to assist smaller businesses and consumers targeted with patent infringement letters and “who are not steeped in patent law or who cannot afford to hire a team of patent attorneys,” Lee said.
And three new executive orders would improve or expand upon training and other programs that already exist within the PTO, the officials said. One aims to make it easier for the public to provide sometimes hard-to-find information about whether an invention is novel enough to merit a patent.
PRO BONO EFFORT
Another order seeks to increase opportunities for patent examiners to get training in the latest technology from businesses and academics. The final order expands nationwide a pro bono program for small businesses and independent inventors through the appointment of a full-time pro bono coordinator. Officials said they would be “calling on members of the patent bar to participate in the program.”
Bernard Knight, who was the PTO’s general counsel between 2010 and 2013 before joining McDermott Will & Emery in Washington, said the patent office already was working on the vast majority of the measures announced at the White House.
“I don’t see any new initiatives we weren’t already working on in some form or another,” Knight said. “I think they’re all good and they all have positive elements to them. The only question would be whether expanding some of them is really a good use of user fees that are paid to the USPTO.”
Peter Pappas, a former chief of staff of the PTO who is now president of Inno­vation Strategies LLC, saw promise in the pilot program involving glossaries. But changes at the PTO must be made incrementally, because “at the end of the day, legislation is critical to address the problem in a holistic way,” he said.
“There’s no silver bullet, there’s no one solution that’s going to address the set of issues and challenges that folks are grappling with,” Pappas said. “I think the White House has made clear it’s going to do what it can from the standpoint of executive actions.”
The initiatives are elements of a continued focus on patent reform by the White House, which first announced in June its plans to target so-called “patent trolls,” blamed by many businesses and inventors for high litigation costs. These businesses threaten costly lawsuits based on often dubious allegations of infringement, aiming to obtain settlements.
Obama mentioned his administration’s efforts in this regard during his State of the Union address in January, but added that he believed congressional action was necessary.
Last week’s news conference amounted to a progress report of sorts on last year’s first round of executive actions. But it was also another chance to urge Congress to deliver legislation this year. One major reform bill, The Innovation Act, passed the House last year. The White House supported the bill even while not completely agreeing with all of its provisions.
Now, members of the Senate Judiciary Committee from both political parties have met with business leaders who use the system in writing their own patent reform bills. “I think this is an area where you can see a sweet spot for bipartisan compromise,” Gene Sperling, assistant to the president for economic policy, said.
Robert Stoll, a co-chairman of Drinker Biddle & Reath’s intellectual property practice, said that for examiners to do a better job, the PTO needs to invest in its databases and legal training. “What stuck out to me is nobody’s talking about putting more resources in the Patent and Trademark Office,” said Stoll, who retired from the PTO as commissioner for patents, the third in command.
Members of the patent law community also expressed disappointment that Obama didn’t use the occasion to announce his selection to replace David Kappos as director of the Patent Office. Kappos left in January 2013 to join Cravath, Swaine & Moore’s New York office as a partner.
Foley & Lardner partner Harold Wegner, a well-known voice in intellectual property law, sent out a newsletter entitled: “The Headless Patent Office, Day 452 and Counting.” He wrote: “At the White House briefing today, the biggest news was no news concerning who will be the permanent Under Secretary to run the Patent Office.”
Kappos declined comment for this ­article.
Contact Todd Ruger at email@example.com.