Five IP Offices (IP5)

IP5 is a forum of the five largest intellectual property offices in the world that is being set up to improve the efficiency of the examination process for patents worldwide. The members of IP5 are:

  • the European Patent Office (EPO),
  • the Japan Patent Office (JPO),
  • the Korean Intellectual Property Office (KIPO),
  • the State Intellectual Property Office of the People’s Republic of China (SIPO), and
  • the United States Patent and Trademark Office (USPTO).

They are attempting to streamline prosecution, since many of the cases filed in one these patent offices are also filed in the others.  Their stated goal is ““The elimination of unnecessary duplication of work among the offices,enhancement of patent examination efficiency and quality, and guarantee of the stability of patent right”.

They have a very handy comparison (download) between the various members’ patent policies.  It’s a long document, but worth reading and keeping as a reference.  They also have quite a few other comparative statistics available.  Their project list is also ambitious.

There is a good chance that this cooperative process will reduce patent pendency, as well as improve patent prosecution quality.  I’m definitely planning on keeping an eye on them.

State of the Net West Series for 2012: Technology Town Hall Roundtable with Congressman Mike Honda

There were a lot of themes touched upon in this discussion.  I would consider it three separate discussions, that got rolled into a single roundtable.  There were short discussions on STEM education including inclusiveness, immigration reform (including HB1, DREAM Act, and other aspects), and Internet regulation (including self-regulation, SOPA, and other laws being introduced).  The participants where:

  • Eric Goldman, Professor at Santa Clara University School of Law (@ericgoldman)
  • Congressman Mike Honda (@RepMikeHonda)
  • Dana Ditmore, Oak Valley Consulting and an advocate of STEM education
  • Tim Lordan, Executive Director Internet Education Foundation / Congressional Internet Caucus Advisory Committee (@tlordan)

STEM Education

Rep. Honda noted that STEM education should be starting earlier, e.g. in pre-K.

We are deteriorating internally, and are defeating ourself, per Rep. Honda.  We need to understand that we have to invest in this country.  Should states have the sole responsibility for education?  The Constitution does not exclude the federal government’s involvement in education.  We should have more national involvement.  The only things kids have, their only currency, is time.  It’s not something we can bank.  We need to use it wisely.  Policy makers need to understand why poor schools exist, and why we re-segregated.

Talk in policy language.  Not “all children deserve equal rights and equal opportunity,” but “each child deserves a quality education.”  Use the children’s time well.

Solving this problem is expensive, but mediocrity is not an option.  If someone imposed this level of mediocrity on us, we would consider it an act of war.  We need to invest in it, as if were a real conflict.  If all children can learn, then children in Beverly Hills and Appalachia should have the same educational opportunity.  The bumper sticker says “what is the price of ignorance.”  We see it every year, and in every legislation.

A question on the “war on science” was asked, and Rep. Honda responded that the only way to fix such systemic problem is to change the policy makers.  Also, provide education to those folks who are putting policy makers in place, to see the longterm harm to their children, and children’s children.  We don’t have a national policy to drive science and education.  We appear to have a lot of self-interest, and we forgot about our responsibility to the whole community, and the whole world.


Rep. Honda notes that we are handling immigration piecemeal, and focused on our borders.  We should instead make a comprehensive plan, addressing existing legal and illegal immigrants in the country, as well as the border.  The Congressman supported the DREAM Act, making HB1 more effective and efficient, and family reunification.

Rep. Honda called HB1, as it exist a “high tech coolie” system in which the high regulations, and the amount of power provided to the sponsor, and lack of mobility.  Dana Ditmore, of Oakvalley Consulting, a STEM education advocate, noted that we do have a single comp structure, and that Silicon Valley is driven in part by immigrant talent.  Rep. Honda noted that he does support HB1 visas, but would prefer to address it in comprehensive reform, with additional freedom for the immigrant.

Rep. Honda also noted that he was a sponsor of the DREAM Act.  With respect to the family reunification, Rep. Honda noted that he supported family reunification including same sex families.

SOPA, DMCA, and Internet Regulation

Rep. Honda notes that Congress doesn’t understand technology, or how the Internet works.  He agrees with a constituent who noted that the job of regulation and Congress in this matter is to “stay out of our way.”

Rep. Honda opposed SOPA, and in fact blacked out his own website during the protests.

Professor Goldman noted that for the first time content owners lost a fight, when SOPA was tabled by Congress.  But Rep. Honda noted early on that attempts to control the Internet will not stop.  We need to stay vigilant.

Professor Goldman further noted that the content owners are now going to anywhere but Congress.  They are going to the courts, to industry self-regulation, and to prosecutors.  The risk of self-regulation, and going outside of the legislative process, is that there is no transparency into the process, no due process.  Tim Lordan noted that there is now an Advisory Board for the industry self-regulation, which will likely provide a check on that.  Professor Goldman responded that while the Advisory Board is a good step, it has no power, and we cannot rely on the Board to keep content owners in check.


Some Scenarios Exploring First to File or Disclose

I’m trying to figure out corner cases under the new America Invents Act rules. In most cases, people won’t be directly affected by the rule change, but I can see the below four scenarios coming up.

• Scenario #1: Inventor A invents and immediately discloses (by publishing in obscure journal). Inventor B invents, and files a patent application, but does not disclose. Inventor A files a patent application, after Inventor B. Who if anyone gets a patent?
• Scenario #2: If Inventor A and Inventor B both disclose at the same conference. Both then file a patent, Inventor A files before Inventor B. Who if anyone gets a patent?
• Scenario #3: Inventor A discloses X. Inventor B files a patent for X+Y. Subsequently, Inventor A files a patent for X+Y. Who, if anyone, gets a patent, on X, Y, and X+Y.
• Scenario #4: Inventor A has a non-enabling disclosure. A third party C publishes an enabling disclosure. Inventor B files a patent on the invention. Subsequently, Inventor A files a patent. (Timing is A disclosure, C publication, B filing, A filing). Who, if anyone, can get a patent?

Timing of Enactment of New Rules in America Invents Act

I’ve pulled together a list of each change, and categorized it in terms of timing.  I highlighted those items that will likely change the way we practice.

Effective immediately

  • Prior commercial use defense (any patent issued on or after date of enactment)
  • Venue moved to District Court for Eastern District of Virginia
  • Funding agreements of government with non-profit organizations
  • Tax strategies are part of the prior art (all patents issued after the effective date)
  • Best mode may not be the basis for canceling or holding invalid a patent (all proceedings commenced on or after date)
  • Marking statutory damages only available to US, actual damages suits available to competitors.  (to all cases, including those pending)
  • Joinder:  Restriction of joint litigation only if it’s the same product (all civil actions commenced after date)
  • Prohibition against human organism patents (for all pending or later filed applications)
  • +1 day for extension of patent term (Wilmer-Hale Act, for applications for extension of time pending, filed after, or subject to judicial review)
  • Inter partes review update (applicable to all patents, regardless of filing date)

Effective one year from the enactment

  • Post-grant review (applies to all patents, regardless of filing date)
  • Pre-issuance submissions to the patent office (applies to all patent applications)
  • Supplemental Examination (applies to all patents)
  • Lack of Advice of Counsel cannot be used to prove willfulness
  • Business Method patents available for post-grant review (valid for 8 years only)

Effective 18 months from the enactment

  • First inventor to file
  • Change in grace period (requires inventor disclosure)
  • Inventor’s oath and declaration changes, changes allowing entity having sufficient proprietary interest to file without inventor
  • Derivation proceedings
  • Repeal of statutory invention registration

If you see any mistakes, or items missing, please let me know so I can correct it.


America Invents Act (HR 1269) has been passed by the Senate with no changes

The act now goes to the President, who has said he will sign it.  Some of the changes of the law will go into effect immediately, while some will be delayed by up to 18 months after the President signs it into law.  I will be posting a detailed analysis of the law, and what changes will be effective now, and later.

You can find the final version of the law, as passed by the Senate at

The Implementation of the new Patent Rules

David Kappos, Director of the USPTO recently participated in an hour and a half of Q&A with Eileen McDermott of Managing IP (webcast available here) , discussing how implementing the new patent rules will change Patent Office practice.

He was overall quite positive about the changes.  Below I summarize some the aspects of his comments that I thought were particularly relevant.  My comments are in italics.

Continue reading “The Implementation of the new Patent Rules”

Leahy-Smith America Invents Act: Will It Happen This Year?

Congress has tried to amend the Patent Act for the last decade, introducing ever more complex versions of legislation which is designed to change the U.S. to first to file, and serve numerous interested parties.

This year’s version has passed the Senate, by a large margin, and has been passed from the House Committee.

The current major hold-up is that the Senate version ends fee diversion, leaving all funds the Patent Office collects with the Patent Office. The House wants that money under Congressional control. In addition to this big issue, there are also now numerous differences between the version of the bill passed by the Senate, and the one currently pending in the House. In particular, Lamar Smith has made a manager’s amendment to the act, which appears to make a large set of (mostly minor changes). Here is a list of these changes, courtesy of Greg Aharonian of PATNEWS.  I have bolded the more significant changes:

Continue reading “Leahy-Smith America Invents Act: Will It Happen This Year?”

First to File: Trading a Small Problem for a Host of Big Ones

The America Invents Act (S. 23 & H.R. 1249), previously called the Patent Reform Act of 2011, has gotten further than other recent attempts at amending the current patent laws. The Senate passed the bill on March 8, 2011, by a vote of 95–5. The equivalent Act was passed by the House Judiciary Committee on April 14, 2011, by a vote of 32-3. It is going to be raised before the House in this session.

One of the major changes introduced by the America Invents Act is the switch to “first to file” from “first to invent.” The first person to file a patent application will be entitled to the patent. An earlier inventor, who delays too long, will not be able to have any rights to their invention. The rest of the world has had a first to invent system, and this change is in part to harmonize U.S. law with international law.

Why was this Law Passed

The primary problem that is addressed by changing to first to file is the issue of interferences. Interferences are procedures in which “first to invent” conflicts are resolved. The Board of Appeals publishes interference statistics, and in 2010, a total of 52 interference cases were filed, in 2009 it was 55, in 2008 it was 66, in 2007 it was 59. ( Compare this with a total number of patent infringement cases of 2,896 in 2008, a rate which is increasing at 5.6% per year.

Unfortunately, the proposed solution of changing to First to File has a number of very serious problems, for inventors as well as for attorneys. These problems are likely to include a change of incentives, a cost and timing, a significant malpractice exposure, and an increase in litigation expenses. Solving the problem of interferences by switching to First to File is swatting a mosquito with a howitzer.

Continue reading “First to File: Trading a Small Problem for a Host of Big Ones”