Michelle Lee, deputy director of the U.S. Patent and Trademark Office ()
PALO ALTO — The White House on Thursday unveiled three executive actions meant to illuminate patent ownership and strengthen the review process in an attempt to curb abuses in the patent system.
The actions call on private industry and the general public to help examiners locate prior art; to institute more rigorous technical training for patent examiners so they can weed out bad applications; and to institute a pro bono assistance program for inventors who lack legal representation.
Many who have been advocating for reform in the Bay Area and beyond cheered the White House’s efforts. President Barack Obama touched on the issue of patent trolls in his State of the Union address, but these actions are the first from the executive branch since Michelle Lee was named deputy director of the U.S. Patent and Trademark Office in December.
“[President Obama] has taken some bold steps to improve patent quality and make it harder for patent trolls to extract get-rich-quick settlements from legitimate businesses,” Alan Schoenbaum, special counsel to cloud storage firm Rackspace Inc., wrote in an email. “The President’s initiatives are a further demonstration of his commitment to patent reform and his effectiveness as a leader.”
Taking cues from crowdsourcing, one of the executive actions taps the private sector to provide insight into bad actors, weak patents and what’s behind a demand letter. One firm ready to step up in the broad push for more transparency is litigation analytics startup Lex Machina Inc., which will provide a tool, available through the PTO website, that allows recipients to upload and compare demand letters.
Lex Machina’s CEO Joshua Becker said the tool helps address the “information asymmetry” between patent asserters and target companies by shedding light on whether a threat is credible. “Part of our core mission is that openness and transparency level the playing field all the way around,” he added.
The executive actions also call on companies to share prior art to give examiners information they need to reject patent applications as well as to prevent invalid patents from being wielded.
In a blog post, Microsoft Deputy General Counsel Horacio Gutierrez said “Microsoft applauds and supports [The White House's] efforts.” Last year, the Seattle company developed and launched a prior art initiative that it plans to beta test along with the USPTO to make available to patent examiners by May 2014. It also launched a patent tracker tool that makes its nearly 40,000 issued patents easily accessible and searchable.
Robin Feldman, a law professor at UC-Hastings College of the Law, wrote in an email that improved patent quality is crucial.
“In Thomas Jefferson’s time, one could reasonably be expected to know all prior art in one’s field, but patent examiners today have an inordinate task,” she said. “Worse yet, the current system creates disincentives for patent holders to disclose information, and roadblocks that make it difficult for third parties to help.”
But Bernard Knight, former USPTO general counsel and now a partner at McDermott, Will & Emery, said that there wasn’t much originality in this effort. The actions “don’t provide anything new that we were not working on last year,” he said. The USPTO embarked on a transparency initiative under former director David Kappos and interim director Teresa Rea; there have long been training programs for examiners; and a pro bono program for inventors had already been established.
Still, many seemed gratified to find the weight of the White House behind specific proposals—though several added that Congress shouldn’t be let off the hook for considering legislative changes, too.
“It was extraordinary to see the White House taking such a strong leadership role on this issue,” Feldman said. “It bodes well for the possibility of progress in this arena.”
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