Thursday, July 29, 2010

Bill To Provide PTO With Additional Funding Advances

The House late Wednesday evening passed legislation that would allow the U.S. Patent and Trademark Office to retain funding from fees it collects in fiscal year 2010 above the amount allocated by Congress. The Senate could take up a similar bill possibly as soon as Thursday.

The bill would allow the PTO to keep $129 million in extra fees it expects to collect this year. It would be offset by cancelling the same amount in unused funds from the Census Bureau, which like the PTO is also a Commerce Department agency.

The PTO's annual appropriation from Congress is based on fees the agency estimates it will collect. Fees for 2010 are now expected to come in above the $1.887 billion level set by Congress in the agency's annual spending bill.

The legislation is backed by business groups and authorizers, who say it will help the agency begin to address the massive backlog of pending patent applications. Brian Pomper, executive director of the Innovation Alliance, which includes such firms as Dolby Laboratories and Qualcomm, praised the measure saying, "Greater funding means that patent quality can increase and the 36 month backlog of unexamined patents can decrease. The stakeholder community knows that improving the ability of American innovators to obtain patents, means that U.S. manufacturing and overall competitiveness is enhanced."

During House consideration of the bill, House Commerce, Justice and Science Appropriations Subcommittee Chairman Alan Mollohan, D-W.Va., echoed this view. The additional funding "will begin to help the agency address the ongoing patent pendency and backlogs," he said. "What this bill will not do is fix the underlying structural flaws in USPTO's revenue mechanisms that are the major cause for the patent pendency and backlog problems that have plagued USPTO for years."

Tuesday, July 27, 2010

Business Groups Urge Congress To Provide More PTO Funding

Five business groups and trade associations sent a letter to House and Senate leaders Tuesday urging lawmakers to allow the U.S. Patent and Trademark Office to use fees it has collected above the amount allocated to the agency in its fiscal year 2010 spending bill.

The Obama administration submitted a formal request to lawmakers earlier this month for supplemental funding that would allow the PTO to use $129 million in additional fees the agency collected above the amount it estimated it would collect this year and that was set by Congress in the fiscal 2010 spending bill.

The administration has proposed offsetting the funding by canceling $129 million in unspent Census Bureau funding. In their letter to House and Senate leaders, the International Trademark Association, the Motor & Equipment Manufacturers Association, National Association of Manufacturers, the National Treasury Employees Union, and the U.S. Chamber of Commerce voiced support for the administration's proposal.

"In order for USPTO to continue the progress it has made, it is imperative that the agency have access to this revenue to hire new examiners, pay current employees overtime and invest in necessary upgrades to IT infrastructure," according to the letter. "Without this supplemental authority to spend the fees it is collecting, USPTO will not only be forced to further delay hiring the examiners it needs to meet its long term goals, but will also have to cut current patent examination resources in order to stay within its current spending authority."

However, appropriators have criticized the PTO for providing overly optimistic budget projections in the past.

Continue reading Business Groups Urge Congress To Provide More PTO Funding.

Monday, June 28, 2010

BREAKING NOW: U.S. Supreme Court Issues Narrow Patent Decision

The U.S. Supreme Court ruled today in Bilski v. Kappos that the business method central to the case cannot be patented -- but the narrow decision did not address the wider issue of whether other abstract ideas can be patented.

The litigation centers on efforts by inventors Bernie Bilski and Rand Warsaw, beginning in 1997, to patent a method for businesses to better manage their energy bills by factoring in weather-related price fluctuations. When the U.S. Patent and Trademark Office rejected their request, they took the case to the Court of Appeals for the Federal Circuit, which upheld the USPTO.

Concluding that only the so-called "machine-or-transformation test" should be used to determine the patent eligibility of a "process," the court said it applied the test and determined that the petitioners' claimed invention "was not patentable." Nevertheless, it emphasized that "there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age."

The court further noted that today's decision is not a commentary on the "the patentability" of any particular invention. "The patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover," it added.

"Today's decision preserves a delicate but important balance. It keeps the door closed to patenting mere abstract ideas, which many 'business method' patent applications have been," said Scott Bain, an attorney with the Software & Information Industry Association, in a statement. "But just as importantly, it affirms the continued viability of patenting useful software applications."

To read today's decision, click here

See CongressDaily's coverage (subscription required) of last November's oral arguments here

Friday, June 25, 2010

The Week Ahead Features Discussions On E-Health

There are several tech and telecom-related events next week. Here are some of the highlights:

Monday:
The National eHealth Collaborative holds a conference call at 3 p.m., to discuss the National Health Information Network.

Tuesday:
The Health and Human Services Department's Office of the National Coordinator for Health Information Technology holds a meeting at 8 a.m. to hear testimony from current users of technologies that enable consumer choice for sharing their information in health information exchanges.

The Coalition Against Counterfeiting and Piracy will hold a panel discussion at 9:30 a.m. on intellectual property enforcement and the impact of the national intellectual property enforcement strategy released by the White House intellectual property enforcement coordinator. Speakers include NBC Universal General Counsel Rick Cotton.

Wednesday:
The FCC and the Wireless Communications Association hold a two-day summit beginning at 10 a.m. on the national broadband plan's impact on broadband innovation and investment.

Thursday:
The Senate Commerce Committee's Protection, Product Safety, and Insurance Subcommittee will hold a hearing at 10 a.m. on protecting youth in an online world.

The Commerce Department's National Telecommunications and Information Administration and the U.S. Patent and Trademark Office hold a meeting at 8:30 a.m. to discuss the relationship of copyright policy, creativity, and innovation in the Internet economy.

The FCC and the Wireless Communications Association host the second day beginning at 10 a.m. of their summit on the national broadband plan's impact on broadband innovation and investment.

Friday, June 11, 2010

The Week Ahead Features FCC Meeting On Broadband

There are several tech and telecom-related events next week. Here are some of the highlights:

Tuesday:
Rep. Tim Murphy, R-Pa., and other lawmakers are among those scheduled to appear at a congressional briefing at 11 a.m. on health information technology and its potential benefits.

Analysis Group, McKool Smith, and Georgetown University are holding a panel discussion at 8:30 a.m. on patent reform issues. Among those scheduled to appear include retired Federal Circuit Chief Judge Paul Michel, former U.S. Patent and Trademark Office Director Jon Dudas, and Rep. Dana Rohrabacher, R-Calif.

The Senate Homeland Security and Governmental Affairs Committee will hold a 2:30 p.m. hearing on cybersecurity legislation introduced by Chairman Joseph Lieberman, I-Conn., and others.

Wednesday:
Americans for Technology Leadership hosts a panel discussion at 3:30 p.m. on consumer and policy issues around cloud computing. Speakers include Homeland Security Chief Privacy Officer Mary Ellen Callahan.

Thursday:
The FCC will hold a public meeting at 10:30 a.m. on regulatory proposals related to the commission's authority over broadband.

The House Energy and Commerce Communications, Technology, and the Internet Subcommittee is holding a 10 a.m. hearing on a discussion draft that would authorize funding for the construction and maintenance of a nationwide, interoperable public safety broadband network.

Microsoft along with the National Consumers League, the American Bankers Association, and others will be launching at 10 a.m. a new Internet Fraud Alert program.

Thursday, June 3, 2010

PTO Proposes Three-Track Patent Examination Process

The U.S. Patent and Trademark Office Thursday unveiled a new initiative aimed at giving patent applicants more control over how quickly their applications will be processed.

The new proposal calls for creating a three-track process from which applicants can choose to decide how quickly they want their applications processed. Track one aims to give applicants "prioritized examination" for a fee, which will be set to pay for the cost of expediting the examination and be high enough to deter inventors from using it for all their patent applications, PTO Director David Kappos said in a conference call. The PTO aims to finalize examinations of applications handled under track one within a year.

Track two is the agency's traditional examination timeline. On average, it took the PTO nearly 35 months in fiscal year 2009 to complete examination of a patent, according to the PTO. Kappos, however, said he expects the process will reduce patent times overall and the agency hopes to lower track two pendency rates to 20 months.

Track three would allow applicants to delay examination for up to 30 months. A delay might give the applicant time to market their product or improve on the technology, Kappos said. He said the fee for this track would be reduced and might be separated out so an applicant could first pay an application fee and then a search fee before deciding whether to move forward with a full examination.

The new initiative will allow the "patent application community to help the PTO to order our workflow so we can be more effective in processing patent applications that are the most important" to the applicants, Kappos said.

When asked if the PTO is concerned that most applicants will choose track one, Kappos said: "I see no risk we'll get overwhelmed with uptake (in track one)...If we calibrate the fees right, we will get an application demographic that is spread out nicely across tracks one, two and three."

Continue reading PTO Proposes Three-Track Patent Examination Process.

Wednesday, June 2, 2010

PTO Teams With Google On Trademark, Patent Database

The U.S. Patent and Trademark Office Wednesday announced it has reached a two-year "no-cost" agreement with Google to make patent and trademark data electronically available for free to the public in bulk form.

Saying it currently lacks the technical capacity to offer such a service itself, the PTO said the two-year agreement with Google is a temporary solution while the agency seeks a contractor to build the PTO its own database that would allow the public to access such data in electronic machine-readable bulk form.

PTO Director David Kappos said in a statement that the move is part of its efforts to comply with President Obama's Open Government initiative by "making valuable public patent and trademark information more widely available in a bulk form so companies and researchers can download it for analysis and research."

Some of the information that will be available on this new online site operated by Google includes: patent grants and published applications; trademark applications; trademark trial and appeal board proceedings; patent classification information; patent maintenance fee information; and patent and trademark assignments. Up until now, the PTO only provided such data in bulk form for a fee.

Friday, May 21, 2010

The Week Ahead

There are several tech and telecom-related events next week. Here are some of the highlights:

Monday:
The Progress and Freedom Foundation will hold a Capitol Hill briefing at noon on online privacy and advertising and on draft privacy legislation released earlier this month by House Energy and Commerce Communications Subcommittee Chairman Rick Boucher, D-Va.

Tuesday:
Google will hold a news conference at 9:30 a.m. to release a report detailing Google's economic impact in all 50 states. Senate Small Business Committee Chairwoman Mary Landrieu, D-La., will join Google and other small business representatives at the event.

The House Judiciary Crime, Terrorism, and Homeland Security Subcommittee will hold a 2:30 p.m. hearing on H.R.3040, the "Senior Financial Empowerment Act of 2009," aimed at preventing mail, telemarketing, and Internet fraud targeting seniors in the United States.

Wednesday:
The Federal Trade Commission, Justice Department and the U.S. Patent and Trademark Office will hold a joint public workshop beginning at 9 a.m. on the intersection of patent policy and competition policy and its implications for promoting innovation. Among those speaking at the event include PTO Director David Kappos, Assistant Attorney General for Antitrust Christine Varney and federal Chief Technology Officer Aneesh Chopra.

The House Judiciary Crime, Terrorism, and Homeland Security Subcommittee will hold a hearing on the Supreme Court's decision invalidating the crush video statute in United States v. Stevens. The time for this event has not been announced.

Thursday:
Wired Safety holds its 10th annual WiredKids Summit beginning at 8:30 am, which will feature presentations and panel discussions about online safety issues impacting American youth.

The House Science Subcommittee on Technology & Innovation holds a hearing at 10 a.m. on interoperability in public safety communications equipment.

Thursday, May 20, 2010

U.S., China Aim To Boost Patent Cooperation

The U.S. Patent and Trademark Office announced Thursday that it has signed a memorandum of understanding establishing bilateral cooperation on patents with its Chinese counterpart.

The Commerce Department agency said in a statement that the agreement provides a framework for increasing cooperation between the PTO and China's State Intellectual Property Office (SIPO). They said they hope the effort will improve the administration and effectiveness of the two countries' intellectual property systems through the exchange of information and development of best practices. The agreement also calls for developing work-sharing programs and a bilateral "patent prosecution highway" aimed at reducing patent application backlogs at the USPTO and Chinese SIPO.

"This memorandum reconfirms and further strengthens our commitment to the growing cooperative relationship between our two offices," PTO Director David Kappos said.

Tuesday, May 18, 2010

House Judiciary Leaders Offer Revised Fee-Setting Bill

House Judiciary Chairman John Conyers, D-Mich., and Judiciary ranking member Lamar Smith, R-Texas, announced Tuesday they are introducing a revised bill that would give the Patent and Trademark Office authority to set its own fees while including language barring the diversion of agency funds for other government programs, CongressDaily reported.

A narrower measure that would only give the PTO fee-setting authority was expected to be considered by the House Tuesday under the suspension calendar. It was pulled after several industry groups opposed it on grounds it did not include a provision that would bar such a diversion of funds.

In addition to giving the PTO overall fee-setting authority, the new bill would give the agency authority to impose a 15 percent temporary surcharge for all of its fees and prevent PTO funds from being diverted from the agency for unrelated government programs.

Several groups, including the Pharmaceutical Research and Manufacturers of America, American Intellectual Property Law Association and the Coalition for 21st Century Patent Reform, which includes such companies as General Electric, Texas Instruments and 3M, voiced opposition to the original bill because it did not include the ban on fee diversion.

All three groups back a broader compromise Senate overhaul bill, which includes the PTO fee-setting language. To read more, click here. (Subscription required).

Monday, May 17, 2010

IT Coalition Backs PTO Fee Bill

A coalition of big tech firms that oppose the latest version of a Senate patent overhaul bill said Monday they back a stand-alone measure that would allow the Patent and Trademark Office to set its own fees.

The House Tuesday is set to take up the bill, drafted by House Judiciary Chairman John Conyers, D-Mich., that would give the PTO fee-setting authority.

In a letter Monday to House Speaker Nancy Pelosi, D-Calif., and House Minority Leader John Boehner, R-Ohio, the Coalition for Patent Fairness noted the huge backlog - more than 750,000 - of patent applications awaiting examination and said allowing the agency to set its own fees, using an appropriate rulemaking process, will give the agency the resources it needs to reduce the time it currently takes innovators to obtain a patent.

The coalition's support comes on the same day that two other groups that back the broader compromise patent overhaul measure offered by the Senate Judiciary Committee's leaders came out against the stand-alone fee setting bill because it does not include language barring the diversion of PTO fees for other government activities. The Coalition for Patent Fairness agrees this is an important concern but said the PTO's need for additional funding outweighs the issue. In the letter, the coalition said the PTO's need for additional funding should not be held back by those who favor a broader patent overhaul bill.

"Some oppose this simple, common sense legislation on the ground that it is limited to
providing needed funds to the PTO and does not include other proposed reforms of the patent system that supposedly have received 'widespread support,'" the coalition said. "...Relief for the PTO--and for the thousands of companies and individuals unable to bring their inventions to market because of the agency's backlog--should not be held hostage to these other issues."

The coalition, which includes firms such as Apple, Google, Intel and Oracle, supported the patent overhaul bill approved by the Senate Judiciary Committee last year, but pulled that support after Senate Judiciary Chairman Patrick Leahy, D-Vt., and ranking member Jeff Sessions, R-Ala., unveiled a compromise package in April that made several changes aimed at bringing some lawmakers and groups on board.

Conyers, House Judiciary ranking member Lamar Smith, R-Texas, and other House Judiciary members have been negotiating with their Senate counterparts in an effort to address many of the same issues raised by the coalition, but so far the talks have yet to yield a deal. Conyers noted this lack of progress during a hearing earlier this month at which he said he was considering drafting a stand-alone PTO fee-setting bill.

Monday, May 17, 2010

Groups Oppose Bill To Give PTO Fee-Setting Authority

At least two groups that favor overall patent overhaul legislation said Monday that they oppose a stand-alone bill that would allow the U.S. Patent and Trademark Office to set its own fees to pay for its operations, arguing the measure would not bar Congress from diverting some of those funds for other purposes.

The House is expected to take up the bill on Tuesday that would give the PTO fee-setting authority. The provision is in a broader compromise patent overhaul bill backed by the American Intellectual Property Law Association and the Coalition for 21st Century Patent Reform, which is made up of such companies as DuPont, General Electric, Motorola, Texas Instruments, and 3M. The broader patent reform bill is awaiting action by the full Senate.

Both AIPLA and the coalition said in separate statements Monday that while they back the idea of allowing the PTO to set fees to adequately fund its operations and improve the time it takes to review patents, they opposes the House bill because it does not include a provision that would prohibit PTO fees from being diverted for other government programs.

"We need legislation that guarantees that the fees paid by the users of the patent system are adequate to hire and train needed examiners and to provide them with the modern information technology necessary to conduct thorough examinations and grant valid patents. Unfortunately, the [PTO measure] is not that bill. Although it authorizes the USPTO to set fees to recover its estimated costs, it contains no safeguards to prevent those fees from being diverted to support other totally unrelated government programs," the coalition said in a statement.

AIPLA President Alan J. Kasper also said that the stand-alone bill "would essentially raise the fees paid by users to the USPTO while significant monies will be diverted unless something is done." He added that his group "supports a comprehensive approach to patent reform now working its way through the Congress, and not the piecemeal approach represented by this bill."

That broader effort, however, appears to be stalled. Key House Judiciary members including Chairman John Conyers, D-Mich., and ranking member Lamar Smith, R-Texas, unhappy with provisions included in a compromise Senate patent bill have been negotiating with the measure's authors, Senate Judiciary Chairman Patrick Leahy, D-Vt., and ranking member Jeff Sessions, R-Ala., but have yet to announce a deal.

Wednesday, May 5, 2010

Conyers: Patent Talks Appear 'Stalled'

House Judiciary Chairman John Conyers, D-Mich., said Wednesday that talks on addressing concerns he and other House Judiciary members have raised about a Senate compromise patent overhaul bill appear to be "stalled."

The patent bill "seems to be stalled somewhere between the House and Senate," Conyers said during a hearing on the Patent and Trademark Office. He said after the hearing that he and ranking member Lamar Smith, R-Texas, and Judiciary members are considering offering a standalone bill on one of the less controversial provisions in the Senate compromise to allow the PTO to set its own fees and to bar Congress from diverting fee revenues to other government programs.

Conyers added that House Judiciary members "normally" can resolve their differences with their Senate counterparts but on the patent overhaul issues that "seems not to be happening."

Smith was more optimistic about the talks with the Senate on the compromise patent bill unveiled last month by Senate Judiciary Chairman Patrick Leahy and ranking member Jeff Sessions, R-Ala. He said House and Senate staffers have been meeting to narrow differences over such issues as the post-grant review process and willfulness language. The Leahy-Sessions compromise is expected to be offered as a manager's amendment when the bill hits the floor.

"I'm still hopeful," Smith said. "But changes are needed on the Senate bill before we'll sign off." Smith has said previously that if they reach a deal, the House would likely take up the Senate-passed patent measure.

Regardless of how the talks turn out, Smith said Congress needs to help the PTO address the backlog of patent applications and efforts to improve patent quality, which is why he and Conyers are considering the standalone fee-setting bill.

Friday, April 30, 2010

The Week Ahead

There are several technology and telecom-related events this week. Here are some of the highlights:

Tuesday:
The New America Foundation will hold a noon discussion on "Federal Communications Commission: Toothless Regulator or Cop on the Beat?"

Wednesday:
The House Judiciary Committee will hold a 10:15 a.m. hearing on the U.S. Patent and Trademark Office.

The House Judiciary Constitution, Civil Rights, and Civil Liberties Subcommittee is holding a 2 p.m. hearing on reforming the Electronic Communications Privacy Act.

Thursday:
The Senate Commerce Committee will hold a 10 a.m. hearing on building a high-tech workforce in the United States.

Joel Gurin, the chief of the FCC's Consumer and Governmental Affairs Bureau, will hold his first press availability at 11 a.m. at the FCC.

FCC staff host a workshop at 3 p.m. to release a technical paper on the cost estimates related to deploying broadband.

Friday:
The American National Standards Institute and the Internet Security Alliance will hold a congressional briefing at 11:30 a.m. on the economics of cybersecurity.

Friday, April 23, 2010

The Week Ahead

Monday:
Microsoft is helping to sponsor the Imagine Cup US Finals at the Newseum at 9 am. Students from across the country compete to use technology to solve societal problems.

To help celebrate World Intellectual Property Day, the Institute for Policy Innovation is holding a day-long event starting at 9 a.m. with remarks and panels featuring U.S. Register of Copyrights Marybeth Peters, Rep. Robert Goodlatte, R-Va., and others.

The U.S. Chamber of Commerce's Global Intellectual Property Center will host another World IP Day event at 9:30 am where Deputy U.S. Trade Representative Miriam Sapiro will help unveil a new report on the effects IP has on the U.S. economy.

The Patent and Trademark office along with the American Intellectual Property Law Association and the World Intellectual Property Organization will host a Capitol Hill World IP Day event starting at 2:30 pm. Speakers include House Judiciary Committee Chairman John Conyers, D-Mich., U.S. Commerce Under Secretary David Kappos and U.S. Trade Representative Ron Kirk.

Under Secretary of State for Economic, Energy, and Agricultural Affairs Robert D. Hormats will speak about the importance of IP at the U.S. Chamber of Commerce at 3 p.m.

Tuesday:
TechAmerica holds a briefing at 10 a.m. to discuss its 2010 Cyber State report on the high-tech economy.

Transportation Secretary Ray LaHood, Grammy-nominated singer Jordin Sparks and others will discuss the dangers of texting and driving at an 11 a.m. news conference.

Judiciary Chairman John Conyers, D-Mich., House Education and Labor Chairman George Miller, D-Calif., AFL-CIO President Richard Trumka, Peter Yarrow of the Peter, Paul and Mary folk group and others hold a news conference at 3 p.m. to discuss a new effort to build support for performance rights legislation.

Wednesday:
The House Science Committee holds a 10 a.m. markup of the America COMPETES Reauthorization Act of 2010.

The House Judiciary Committee holds a 10 a.m. hearing on H.R.2695, the Credit Card Fair Fee Act of 2009, which would amend antitrust laws to ensure competitive market-based rates and terms for merchants' access to electronic payment systems.

Thursday:
Government Executive magazine holds a briefing at 7:30 a.m. on health information technology focusing on the use of virtual reality software and other new technologies in the treatment of returning veterans.

The Senate Commerce Committee holds a 10 a.m. hearing on children's online privacy protection.

The House Energy and Commerce Communications, Technology, and the Internet Subcommittee holds a 10 a.m. hearing on "The National Broadband Plan: Competitive Availability Of Navigation Devices."

House Oversight and Government Reform Committee holds a 10 a.m. hearing, "Running Out of Time: Telecommunications Transition Delays Wasting Millions of Federal Dollars."

Wednesday, April 21, 2010

Administration Backs Senate Patent Compromise

The Obama administration is supporting a compromise on patent overhaul legislation unveiled last month by Senate Judiciary Committee leaders, CongressDaily reported. In a letter Tuesday to Judiciary Chairman Patrick Leahy, D-Vt., and ranking member Jeff Sessions, R-Ala., Commerce Secretary Gary Locke said the compromise "improves the reported bill and incorporates critical elements of patent reform."

Senate Judiciary members approved the panel's version of patent overhaul legislation last year. The Leahy-Sessions compromise, expected to be offered as a manager's amendment on the Senate floor, has helped attract a broad range of supporters, including labor groups, some information technology firms, biotech companies and pharmaceutical manufacturers.

However, a coalition of large IT companies known as the Coalition for Patent Fairness, which includes firms such as Apple, Intel and Google, said it opposes some of the changes in the compromise -- concerns that have been echoed by key members of the House Judiciary Committee. These House lawmakers have been working with Leahy and Sessions to address their concerns.

Locke said he was pleased with provisions included in the compromise to allow the PTO to adjust patent and trademark fees as needed and with post-grant review procedures for "reviewing questions about patent validity that will serve as a faster, lower-cost alternative to litigation."

Leahy urged Senate leaders in a statement Wednesday "to schedule floor time soon for this important job-creating legislation."

A new paper released Tuesday by the Patent and Trademark Office claims the patent overhaul legislation will help spur innovation and economic growth. "By enhancing the ability of America's innovators to secure high-quality patents with greater speed and certainty, this legislation will speed the delivery of innovative goods and services to market and fuel economic growth and job creation," PTO Director David Kappos said in a speech Tuesday.

The paper notes that 76 percent of startup managers say venture capital investors consider patents when deciding whether to provide funding and it also points to reports that argue that the backlog in approving patent applications could cost the U.S. economy billions in "forgone innovation."

Friday, April 16, 2010

ACTA Draft Coming Next Week

Countries negotiating the Anti-Counterfeiting Trade Agreement will release a draft of the copyright treaty on April 21, the Office of the United States Trade Representative announced Friday. It does not include a rumored three-strikes approach to copyright violations, USTR said, noting that "no participant is proposing" such a provision.

The decision to release a draft comes on the heels of talks in New Zealand this week over a document that has raised concern that stringent policing standards on Internet piracy could be enacted, including a graduated response regime that would have Internet service providers block users from the Web if they repeatedly violate copyright law. Suspicion of this possibility grew this year as negotiators released few details about ACTA's contents, but USTR was firm on Friday that such a provision is not included.

Still, disagreements over enforcement measures appear to be a holdup, according to USTR's statement. The office hailed the progress on the treaty, but said more is needed, "particularly in confirming the focus of key provisions of the agreement on enforcement measures against trademark counterfeiting and copyright piracy."

ACTA efforts got some support from the Hill on Thursday when House Foreign Affairs Chairman Howard Berman and ranking member Ileana Ros-Lehtinen, R-Fla., wrote a letter commending U.S. Trade Representative Ron Kirk for his efforts to reach international agreement on copyright. "It is our hope that ACTA will help establish improved international standards for protecting intellectual property rights, which will prevent illegal activity from undermining legitimate trade and business," they wrote.

The negotiators hope to conclude their talks in 2010, with the next round of talks to be held in Switzerland this June. The partners include Australia, Canada, the European Union, Japan, Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland and the United States.

Tuesday, April 6, 2010

Supporters Encourage ACTA Negotiators

Two key members of Congress are voicing support for an international agreement aimed at curbing anti-counterfeiting despite lingering concerns from public interest groups and other lawmakers in the United States and Europe about the secrecy surrounding the negotiations.

In a letter last week to U.S. Trade Representative Ron Kirk, Sen. Orrin Hatch, R-Utah, and Rep. Adam Schiff, D-Calif., the co-chairmen of the Congressional International Anti-Piracy Caucus, commended Kirk's agency for its "continued commitment in negotiating an Anti-Counterfeiting Trade Agreement with our trading partners."

Hatch and Schiff, members of the Judiciary Committee in their respective chambers, added that "protecting intellectual property rights is vital to our country's continued success as a world leader in innovation. ... We believe that a more robust framework is needed to thwart the criminal enterprises engaged in IP theft."

A group of about 100 small and medium-sized businesses and organizations echoed this view in their own letter to Kirk Tuesday. "If the administration is to achieve its goal of spurring economic recovery through doubling exports over the next five years, it is imperative to more effectively combat counterfeiting and piracy," the letter said. They and others such as the U.S. Chamber of Commerce are urging the administration to work to finish the agreement by the end of the year.

Continue reading Supporters Encourage ACTA Negotiators.

Tuesday, March 23, 2010

European Court Rules For Google In Trademark Case

The European Union's highest court ruled Tuesday that Google is not infringing trademarks by allowing advertisers to bid for keywords corresponding to their competitors' trademarks.

"Google has not infringed trademark law by allowing advertisers to purchase keywords corresponding to their competitors' trade marks," the European Court of Justice said in a statement. However, it also warned that advertisers "cannot, by using such keywords, arrange for Google to display ads which do not allow Internet users easily to establish from which undertaking the goods or services covered by the ad in question originate."

The case stems from a trademark infringement suit filed against Google in France by luxury designer Louis Vuitton. Google brought the case to the EU court after losses in the French court system.

"Some companies want to limit choice for users by extending trademark law to encompass the use of keywords in online advertising," Google Senior Litigation Counsel Harjinder S. Obhi said in a blog post Tuesday. "Today, the court confirmed that Google has not infringed trademark law by allowing advertisers to bid for keywords corresponding to their competitors' trademarks."

Obhi added that the court also said that "European law that protects Internet hosting services applies to Google's AdWords advertising system. This is important because it is a fundamental principle behind the free flow of information over the Internet."

Friday, March 19, 2010

ANA CEO Apologizes For Google Comments

The president and CEO of the Association of National Advertisers sent out an e-mail to those who attended the group's advertising law and public policy conference this week for the tone of comments made by Microsoft against rival Google.

In a speech to the ANA Wednesday, Microsoft Deputy General Counsel Mary Snapp blasted Google's advertising and trademark protection policies. She claimed Google uses its dominant position to force companies "to pay inflated prices" for online advertising, and to deter them from placing advertisements on Microsoft's networks.

In an e-mail obtained by Tech Daily Dose, ANA's Bob Liodice said his group was "disappointed with the comments made by speakers from Microsoft about one of its competitors (Google)." Microsoft is an ANA member and sponsored the policy conference. Google's online ad firm, Doubleclick, also is an ANA member.

"ANA works hard to focus conference speakers on providing marketplace insights, marketing best practices and leveraging innovation for the benefit of marketers," Liodice said in the e-mail Thursday to conference attendees. "While we are not opposed to two companies debating industry issues at ANA events, we firmly believe that a respected public platform for that type of exchange should include both parties. We regret that at yesterday's lunch session, that was not the case."

He also apologized for the fact that the group did not disclose before or during the speech that another conference speaker, Harvard assistant business professor Benjamin Edelman, also works as a Microsoft consultant. "We apologize to our attendees as well as to Google that such a disclosure was not made," Liodice said.

Following Snapp's speech on Wednesday, Google spokesman Adam Kovacevich said Google works "hard to compete fair and square, and our policies are intended to provide users with the most relevant results possible, and give advertisers the best possible return on their investment."

The ANA did not respond to a request for comment on Liodice's e-mail.

Microsoft spokesman Jack Evans said, "We certainly thought our remarks were pertinent and appropriate at the conference given its focus on advertising law and public policy, and the positive response we received afterward from attendees. And we believe that the principles we outlined - openness, transparency and respect for intellectual property - are critical for healthy competition and the growth of the online advertising industry."

Wednesday, March 17, 2010

Microsoft Blasts Google's Ad Policies

Microsoft's deputy general counsel Wednesday chided rival Google, claiming the search giant's policies hurt advertisers by blocking them from being able to move their data to a competing platform.

In prepared remarks to the Association of National Advertisers law and public policy conference, Mary Snapp discussed three principles Microsoft sees as key to the future growth of online advertising: transparency, openness and respect for intellectual property.

Snapp said that Microsoft supports the ability of advertisers to be able to "port your data freely and openly between online ad platforms and to ... efficiently [manage] campaigns across these platforms." She criticized Google in its terms of service for AdWords for barring the use of third-party tools that copy data into a non-AdWords account.

"These and other similar sorts of restrictions raise your costs, they reduce competition, and they prevent anyone but Google from giving you, the advertisers, the scale and choices you want and need," Snapp said. She added that given Google's dominance in the online ad market, "few of you can afford to give up using Google because of these restrictions. But that doesn't mean you should have to accept them either."

She also criticized Google for not providing adequate protection of trademarks, a policy she claims benefits Google's bottom line.

Continue reading Microsoft Blasts Google's Ad Policies.

Friday, March 12, 2010

ICANN To Create Trademark Clearinghouse

The group that manages the Internet's address system approved a proposal that would create a database of trademarks aimed at improving their protection on the Internet, the Internet Corporation for Assigned Names and Numbers announced Friday.

The Trademark Clearinghouse is expected to serve "as a central repository for information to be authenticated, stored, and disseminated" relating to the rights of trademark owners.

"In forming this trademark clearinghouse, we've listened to our community about providing trademark protection," ICANN board Chairman Peter Dengate Thrush said in a statement following the nonprofit corporation's meeting this week in Nairobi, Kenya. "We've also adopted an extremely rapid process by which people or organizations can challenge trademark infringement."

The board also rejected a proposal to implement an "expression of interest," a pre-registration process for those wishing to apply for new generic Internet addresses, also known as domain names. Under procedures it previously approved, ICANN plans to expand the number of generic top-level domain names from the current list of 21, which include .com, .net, and .org, and could include almost any word in most languages.

Thursday, February 25, 2010

Leahy: Patent Deal Is Close

Senate Judiciary Chairman Patrick Leahy, D-Vt., announced Thursday that he has reached a tentative agreement on patent overhaul legislation with the panel's ranking member Jeff Sessions, R-Ala. "We have reached a tentative agreement in principle that preserves the core of the compromise struck in committee last year," Leahy said in a statement. Leahy said he hoped to release details of the agreement "in the coming days" after consulting with other senators and House lawmakers.

Leahy noted that when he began working on the issue several years ago with Sen. Orrin Hatch, R-Utah, House Judiciary Chairman John Conyers, D-Mich., and others "we wanted to improve patent quality and the operations at the [Patent and Trademark Office], and address runaway damage awards that were harming innovation. We are close to a compromise that will address these issues."

He added, that "No one will think this a perfect bill, but we are close to a comprehensive patent reform bill that benefits all corners of the patent community." The patent bill approved by the Senate Judiciary Committee in April 2009 aimed to address the PTO's chronic application backlog and improve internal efficiencies. It also would change the protocol for challenging patents - a move that has divided small innovators, the life-sciences sector and the IT industry.

The Innovation Alliance, which has been critical of the bill, said the changes "appear to be a positive step in the right direction." The group's executive director, Brian Pomper, said in a statement "We have advocated for significant changes to the post-grant review provisions of the legislation that would prevent repeat legal challenges to patents because allowing repeat challenges would dampen U.S. job creation at the worst possible time." Sessions also has raised concerns about the language related to challenging patents after they have been granted that was included in the bill passed by the committee.

Thursday, January 7, 2010

USPTO Seeking More Funding

The U.S. Patent and Trademark Office is urging Congress to increase its funding for fiscal year 2010 in light of new projections that the agency said shows it will receive in excess of $100 million more from patent fees than it estimated in September. Appropriators used the September projection of $1.887 billion to set the agency's fiscal 2010 spending level.

"Absent further congressional action, the USPTO will not be able to expend this fee income to address its urgent fiscal needs," Patent and Trademark Office Director David Kappos wrote in a Monday letter to House and Senate appropriators. He added that, unlike past years, appropriators removed language from the 2010 spending bill that allowed the agency to spend up to $100 million more in fees than the set spending level.

Despite the projected increase in fees, Kappos warned that the dire fiscal problems the agency faced last year when it was forced to "cut spending sharply" will likely carry over into 2010. He said unless the agency, which is funded by fees, receives more funds, it will be forced to operate on a "bare-bones budget" that would allow it to replace only a small percentage of the 500 patent examiners expected to leave this year.

But lawmakers may not be swayed by Kappos' warnings. USPTO fee projections have been overly optimistic in recent years, a congressional source said. House and Senate appropriators chided the agency in the fiscal 2010 Commerce, Justice and State appropriations conference report for using a budget process that does not adequately plan for economic downturns when fees may be less than anticipated.

Thursday, December 17, 2009

Broadband Plan Criticized

From this morning's Earlybird:

• The Federal Communications Commission "was criticized Wednesday over the direction of its sweeping national broadband plan from an unlikely source: Consumer advocates worried it has abandoned the idea of curbing the market domination of telecommunications and cable companies," CongressDailyAM (subscription) reports.

• "Counterfeiters in recent years have become increasingly savvy about reproducing holiday lights with logos purporting to be from independent safety-certification laboratories, industry and safety groups say. Such products also may have fake trademarks of reputable manufacturers," the Wall Street Journal reports. "No federal law mandates third-party testing for electrical products, but many retailers require it. The Consumer Product Safety Commission advises consumers to look for safety certification on products like holiday lights and extension cords."

Tuesday, December 15, 2009

Meeting Leaves Some Unhappy

Public interest and tech industry advocates voiced disappointment about being left out of a round table discussion Tuesday afternoon being hosted by Vice President Biden and several cabinet officials to discuss enforcing laws against the piracy of intellectual property.

In addition to the vice president, the event will feature a who's who of Obama administration officials who have a role to play in enforcing IP laws. They include Attorney General Eric Holder, Homeland Security Secretary Janet Napolitano, Commerce Secretary Gary Locke, FBI Director Robert Mueller, U.S. Secret Service Director Mark Sullivan, U.S. Patent and Trademark Office Director David Kappos and the White House's new IP enforcement coordinator, Victoria Espinel. The industry participants include executives from the movie studios, record companies, book publishers, television networks and the heads of the Motion Picture Association of America and Recording Industry Association of America, as well as unions representing actors and directors.

Both Public Knowledge and TechAmerica released statements arguing that they have important roles to play in the debate. "Hopefully the administration can avoid this oversight in the future and include all of the stakeholders," said TechAmerica President Phil Bond, who described being left out of the meeting as receiving a "political lump of coal" for the holidays. "The technology and content industries depend upon each other in the digital economy. We will have to work together to protect privacy and to help the government enforce the law."

Public Knowledge President Gigi Sohn noted that the White House touted the meeting as bringing together "all the stakeholders" on ways to combat piracy. But public interest groups, technology companies and Internet service providers were not invited nor was anyone "who questions the need for Draconian governmental policies on behalf of the privileged special interest group for whom this meeting is being held is on the guest list," Sohn said. "If Vice President Biden is truly interested in learning more about intellectual property, we hope he will continue his consultations with a group of people who share a wider range of views than those with whom he will meet today." In response, a White House official said Tuesday's discussion is "the first of what we expect to be several meetings between those who are affected by the theft of intellectual property and the administration."

Wednesday, December 9, 2009

French Anti-Piracy Law Here?

At least one House lawmaker has raised the issue of whether the United States should adopt a law similar to one approved in France allowing a judge to block an individual's access to the Internet if the person is accused of being a serial Internet copyright infringer. Rep. Diane Watson, D-Calif., chairwoman of the House Oversight and Government Reform's Government Management, Organization and Procurement Subcommittee, asked a panel of U.S. government officials at a hearing Wednesday if "this is a potential legislative remedy to our own significant peer-to-peer file sharing problem."

Officials from both the U.S. Patent and Trademark Office and the Justice Department appeared to reject the idea. PTO Commissioner for Patents Robert Stoll said he didn't think such a measure would be "palatable in the United States." Deputy Assistant Attorney General Jason Weinstein said he agreed with Stoll, saying "it's my view that technology is not the problem, it's the way it's used that creates the problem. This is no exception." He added that while the department is "increasingly concerned about online piracy," law enforcement officials are working aggressively to target those who post or sell pirated content online.

Britain is weighing a measure similar to the French law. The French law has been widely criticized by Internet free speech advocates and others and was initially struck down by France's high court but a new version passed this fall.

Monday, December 7, 2009

Green Tech Initiatives Announced

Energy Secretary Steven Chu Monday announced his department's Advanced Research Projects Agency will use $100 million from the economic stimulus package to accelerate investment in green technology. At the same event, Commerce Secretary Gary Locke also announced that the Patent and Trademark Office will launch a pilot program to accelerate the examination of certain green technology patent applications. "By ensuring that many new products will receive patent protection more quickly, we can encourage our brightest innovators to invest needed resources in developing new technologies and help bring those technologies to market more quickly," Locke said in a statement.

The Energy Department's initiative is the second round of funding aimed at promoting the development of green technologies. It will focus on research into biofuels, carbon capture, and batteries for electric vehicles. The first round of funding announced earlier this year provided money for 37 projects focused on such areas as energy storage, biofuels, carbon capture, renewable power, building efficiency and vehicles.

Wednesday, November 11, 2009

EFF To Represent Yes Men

The Electronic Frontier Foundation said Wednesday that it will represent the Yes Men in fighting a lawsuit filed by the U.S. Chamber of Commerce against the activists for staging a fake news conference claiming the business association had changed its stance on climate change legislation. The chamber's lawsuit, filed in October, claimed the Yes Men unlawfully used the group's trademark and other intellectual property by using the chamber's logo in a press release and at the fake news conference.

At the October event, the Yes Men, who describe themselves as targeting "leaders and big corporations who put profits ahead of everything else," announced the chamber had reversed its position on climate change legislation and pledged not to lobby against a strong bill. The staged event was interrupted by a chamber official who notified those gathered that it was a fake news conference and that the chamber had not change its position on the issue.

EFF argued that the Yes Men, which will also be represented by the Davis Wright Tremaine law firm, engaged in political theater that is protected by the First Amendment. "Trademark rights do not encompass the right to silence criticism," said EFF senior staff attorney Matt Zimmerman. The chamber, in announcing its lawsuit, said that while it supports free speech, the Yes Men deliberately broke the law to sell their books, movies and other merchandise.

Tuesday, November 10, 2009

PTO Director Launches Blog

U.S. Patent and Trademark Office Director David Kappos launched a new blog Tuesday to "provide an open channel for sustained dialogue and the exchange of ideas." Kappos' first blog post focused on the agency's annual independent investors conference, which he recently attended. He also called on Congress to pass a patent reform bill and addressed concerns raised about the legislation. "I know that many independent inventors, like most segments of the [intellectual property] community, have concerns about some of the provisions in the bill, and I had the opportunity to address some of these concerns at last week's conference," Kappos wrote, adding that the legislation is "a vast improvement over what we have now - and there is a strong consensus that the status quo is simply unsustainable."

Tuesday, November 10, 2009

Business Methods Argued At High Court

The Supreme Court heard arguments Monday in a patent law case examining whether a business method can be patented. CongressDaily's David Hatch reported that a decision in the case could have sweeping ramifications for a wide array of industries, including the high-technology sector. During oral arguments in Bilski v. Kappos, some justices expressed concern about the impact of awarding patents for innovations that are not related to manufacturing or technology. Justice Ruth Bader Ginsburg suggested that under the petitioners' argument, something as abstract as a strategy for resisting a corporate takeover could be patentable.

The litigation centers on efforts by inventors Bernie Bilski and Rand Warsaw, beginning in 1997, to patent a method for businesses to better manage their energy bills by factoring in weather-related price fluctuations. When the U.S. Patent and Trademark Office rejected their request, they took the case to the Court of Appeals for the Federal Circuit, which upheld the USPTO. Experts said the case could provide the most substantial update on which inventions deserve patent protection since a 1981 high court decision that defined what constitutes a patentable process. Read more in CongressDaily here. (Subscription required)

Thursday, November 5, 2009

Leahy: Much To Achieve, Little Time Left

Senate Judiciary Chairman Patrick Leahy said members of his committee have their work cut out for them as winter recess nears. His panel made a big stride Thursday when it passed a pair of data security bills (see CongressDaily's PM Edition for details) and several measures that have cleared the committee and await floor action. Leahy said the Senate needs to take up a bill that would modify and reauthorize expiring provisions of the USA PATRIOT Act and the Satellite Home Viewer Act before they expire Dec. 31.

He noted he has been working with Senate Minority Whip Jon Kyl and other leaders from both parties to help make that happen. Leahy said last month that he wants to work with Majority Leader Harry Reid to schedule, before the end of the year, floor debate on legislation that would overhaul the U.S. patent system. The Obama administration has thrown its support behind the bill. Patent and Trademark Office Director David Kappos recently told a group of IP attorneys that a legislative fix is needed immediately.

A dozen senators, including Sens. Sam Brownback, R-Kan., Tom Coburn, R-Okla., and Senate Finance ranking member Charles Grassley, sent a letter to Reid and Minority Leader Mitch McConnell stating the bill needs more work before it is brought to the floor. Judiciary ranking member Jeff Sessions and Kyl have questioned the bill's approach to challenging a patent after it is granted.

Tuesday, November 3, 2009

Obama IP Czar Heads To The Hill

Former U.S. Assistant Trade Representative Victoria Espinel who was tapped in September by President Obama to serve as the first White House intellectual property enforcement coordinator will appear before the Senate Judiciary Committee on Wednesday. Espinel, who taught at George Mason University after leaving USTR in the Bush administration, is expected to easily win approval of the panel, which is considering an appeals court judge and several district judges the same day.

Senate Judiciary Chairman Patrick Leahy received letters in support of Espinel's nomination from a range of stakeholders including the Copyright Alliance, National Music Publishers' Association, American Intellectual Property Law Association, International Trademark Association, Motion Picture Association of America, U.S. Chamber of Commerce and others.

The Chamber called Espinel's confirmation "an important step towards fulfilling the promise of the PRO-IP Act," an IP enforcement bill that Congress passed and Bush signed into law last year. MPAA Chairman Dan Glickman called her an "excellent choice" for the office and said his experience with her at USTR was top notch. AIPLA hailed her "impressive and substantive background."

Continue reading Obama IP Czar Heads To The Hill.

Monday, October 26, 2009

ICANN Focuses On Domain Expansions

The Internet Corporation for Assigned Names and Numbers' proposed expansion of top-level domains -- such as .biz, .info and .us -- as well as the group's introduction of non-Latin language Web addresses are still "some months away," ICANN Chairman Peter Dengate Thrush told reporters Monday in Seoul, South Korea at the organization's 36th global meeting. He said ICANN officials and the Internet community at large are "going through a problem solving phase" to address concerns about potential malicious use, trademark abuse and other issues.

Thrush was hesitant to offer more specificity about when the first round of applications for new generic top-level domains would be accepted. The timing "is up to the community [and] when the community is satisfied, they'll tell us," he said. ICANN has argued that bringing potentially hundreds of new domains to market will benefit consumers and companies that do business online but intellectual property owners have expressed skepticism. The U.S. Chamber of Commerce, National Association of Manufacturers and others in Washington have been highly critical.

ICANN's board is poised to approve the related international domain name proposal when it meets on Friday. Thrush said that after several years of hard work by stakeholders, he was "reasonably confident that the board will find [the IDN plan] ready to launch." ICANN President Rod Beckstrom said the first non-Latin script entries into the so-called root zone would likely be in mid-2010.

Continue reading ICANN Focuses On Domain Expansions.

Monday, October 19, 2009

Rai Officially Joins Patent Office

Duke Law School professor Arti Rai quietly reported for work at the Patent and Trademark Office on Monday as administrator for external affairs, according to sources within the agency. Rai, an expert in patent law and legal issues facing the biopharmaceutical sector, will make her maiden speech at an award ceremony for collegiate inventors in Chicago on Tuesday. She will talk about the importance of a strong intellectual property regime, economic recovery and job growth. At PTO, Rai will oversee domestic and international policy and intergovernmental relations and will be a strong voice for the agency as Congress advances legislation to overhaul the U.S. patent system.

Rai has close ties to the administration. She was a classmate of President Obama's at Harvard Law School and served on his transition team as a member of the agency review team on science, technology, space, arts and humanities. Computing Technology Industry Association Director for Global IP Chris Katopis, who previously served as PTO deputy administrator for external affairs, said Rai is a "provocative choice" for the administrator job since she hails from academia, which is seen as "notoriously anti-patent."

Monday, October 19, 2009

New Push Seen For Patent Measure

Lawmakers backing a stalled patent overhaul bill are looking at fresh ways to move the measure by the end of the year, despite GOP opposition, CongressDaily reported Friday. The bill, which cleared the Senate Judiciary Committee in April, seeks to address the Patent and Trademark Office's chronic application backlog and improve internal efficiencies. It would also change the protocol for challenging patents - a move that has divided small innovators, the life-sciences sector and the IT industry.

Senate Judiciary Chairman Patrick Leahy said Thursday he wants to work with Majority Leader Harry Reid to schedule debate before the end of the year. Leahy made his comments the same day that PTO Director David Kappos told the American Intellectual Property Law Association's annual meeting that a legislative fix is needed immediately. "Not everyone is getting everything they want" in the bill, Kappos said, but it is a "major positive step" for the stakeholders involved.

But on the same day, 12 senators, including Sens. Sam Brownback, R-Kan., Tom Coburn, R-Okla., and Senate Finance ranking member Charles Grassley, sent a letter to Reid and Minority Leader Mitch McConnell stating the bill needs more work before it is brought to the floor. Judiciary ranking member Jeff Sessions and Minority Whip Jon Kyl have questioned the bill's approach to challenging a patent after it is granted and want to modify the language.

Read the full story here (subscription required).

Thursday, October 15, 2009

PTO Chief: 'Get Patent Reform Done Now'

Patent and Trademark Office Director David Kappos on Thursday urged industry stakeholders and lawmakers to "move together in the spirit of compromise and get patent reform done now." Speaking at the American Intellectual Property Law Association, he pressed the group's members to "show leadership" because "50 years is long enough to wait" for meaningful overhauls to the U.S. patent system. He stressed that "not everyone is getting everything they want" from the bill that emerged from the Senate Judiciary Committee in April but the measure is a "major positive step" for the life sciences sector, small innovators and the IT industry.

Senate Judiciary Chairman Patrick Leahy earlier this month said he wants to work with Majority Leader Harry Reid to schedule, before the end of the year, Senate debate his bill. His announcement came as Commerce Secretary Gary Locke indicated the Obama administration's support of the controversial measure. House Judiciary Chairman John Conyers introduced a companion bill but it remains to be seen how the bill will evolve and whether it will look similar to the compromise that Leahy brokered with Sens. Arlen Specter, D-Pa., and Dianne Feinstein, D-Calif.

Continue reading PTO Chief: 'Get Patent Reform Done Now'.

Wednesday, October 14, 2009

PTO: Rai Coming Soon, Pappas Present

Duke Law School professor Arti Rai should be landing at the Patent and Trademark Office any day now to take the reins as administrator for external affairs (see original Tech Daily Dose post here) -- but in the meantime another familiar name has surfaced at PTO. Peter Pappas, who previously served in several capacities in the Clinton administration, has been brought on to head up the agency's communications and public outreach operation.

During the Clinton years, Pappas was associate chief of the FCC's international bureau, developing international telecommunications policy on a broad range of issues, including satellite regulation and licensing, international spectrum management, and third generation wireless standards and licensing, according to a bio. He also served as the State Department's director of communications for economic affairs and at one point was assistant White House counsel.

In September 2000, the Georgetown Law School graduate joined Pappas Telecasting -- which at the time was the largest privately-held, commercial television broadcast group in the United States -- where he served as executive vice president for legal and governmental affairs. He was responsible for overseeing all federal government and federal agency regulatory affairs of the company, including the supervision of all filings before the FCC and other agencies.

In related PTO personnel news, Jefferson Taylor, director of congressional relations, has moved on and a permanent replacement has not been named.

Wednesday, October 14, 2009

Hatch Calls For Patent Office Changes

Sen. Orrin Hatch, R-Utah, on Wednesday called for Congress to "act in the best interest of the economy" and Patent Trademark Office users by permanently ending fee diversion at the agency. Such a change would let the PTO set fees and recover costs, which Commerce Secretary Gary Locke and PTO Director David Kappos have said would better address the agency's operational funding needs in a time of economic uncertainty.

Hatch's remarks came at a ceremony recognizing the PTO's grant of the 600,000th design patent to Goal Zero, a subsidiary of Provo Craft and Novelty, and a small business located in his home state. The patent was issued for the design of a battery system, which works in conjunction with a solar briefcase that recharges in the sun.

Lawmakers should improve the quality of patents at the front end so as to avoid costly and counterproductive litigation that stifles innovation at the back end, Hatch added. "Improving patent quality and reducing litigation uncertainty are the central tenets of the bipartisan congressional mandate for patent reform," he said, arguing that consensus is possible "but it will take willing partners from within Congress, the administration, and the patent community."

Tuesday, October 6, 2009

PTO Backs Leahy Bill, Fee-Setting Ability

Patent and Trademark Office Director David Kappos reiterated on a call with reporters Tuesday the Obama administration's support of a Senate bill that would make big changes to the U.S. patent system. Kappos said that while no industry stakeholders have gotten exactly what they want out of the measure, "it moves us forward [and] that is better than the status quo." Major high-tech and pharmaceutical companies spent months divided over the bill's handling of how damages are assessed in infringement lawsuits and recent debate has focused on administrative procedures for challenging granted patents.

Commerce Secretary Gary Locke wrote to Senate Judiciary Chairman Patrick Leahy on Monday saying the bill "incorporates the essential elements of patent reform," but lawmakers should go further to address related issues as it heads toward the floor. Leahy, whose panel approved the measure in April, said he wants to work with Majority Leader Harry Reid to tee the bill up for a vote before the end of the year. Read more in CongressDaily here (subscription required).

On the same teleconference, Commerce Department General Counsel Cameron Kerry, who is the younger brother of Sen. John Kerry, D-Mass., told reporters that provisions of the Leahy bill are "important to jump-starting the economy again and getting innovation going again." He said the bill is "long overdue" and, if passed, would help the PTO "make the American patent system function the way that it ought to."

Continue reading PTO Backs Leahy Bill, Fee-Setting Ability.

Monday, October 5, 2009

Briefs Filed In High Court Patent Case

The final round of friend-of-the-court briefs have been filed in a case pending before the Supreme Court that will mark the first time since 1981 the panel has ruled on the types of innovations covered by the U.S. Patent Act. The high court agreed in June to consider what types of business methods qualify for patent protection after the Federal Circuit Court of Appeals upheld a decision by the Patent and Trademark Office's appeals board. The case has sweeping ramifications for the software, biotechnology and financial services sectors.

At issue is the PTO's rejection of an application by inventor Bernard Bilski, who tried to patent what some believe is an abstract idea to reduce risk in buying and selling commodities. The case has generated immense interest in the high-tech and intellectual property communities. Among those submitting briefs were the Electronic Frontier Foundation, Computer and Communications Industry Association, American Bar Association, Bloomberg, and Microsoft. Click here to read the Patently-O blog's summaries of amicus briefs.

Thursday, October 1, 2009

Senate Patent Reform Battle Reignites

As the Commerce Department works on the near-term release of a letter providing the Obama administration's views on a Senate bill aimed at overhauling the U.S. patent system, key Republicans are pressing Senate Judiciary Chairman Patrick Leahy and ranking member Jeff Sessions to resist proposals they believe could weaken the measure.

Sens. Orrin Hatch, R-Utah; Mike Crapo, R-Idaho; James Risch, R-Idaho; Michael Enzi, R-Wyo.; and Robert Bennett, R-Utah, asked them to build on "careful compromises" reached when the panel approved the bill in April, 15-4. At the time, Leahy lost the support of Hatch, a key ally who was upset the amended version failed to address the issue of "inequitable conduct" claims at the Patent and Trademark Office.

Hatch, who chairs the Senate Republican High-Tech Task Force, said Wednesday that he voted against the bill because he "wanted to make sure patent reform was done right." Nonetheless, he said there were good provisions in the bill and he wants to make sure Leahy and Sessions are "vigilant in preserving what has been achieved." Stakeholders are divided over the bill's approach to administratively challenging a patent's validity after it is granted.

Read the full story in CongressDaily's AM Edition here (subscription required).

Thursday, October 1, 2009

Berman Riffs On IP Rights, Patent Reform

House Foreign Affairs Chairman Howard Berman capped off Wednesday's U.S. Chamber of Commerce intellectual property summit by touching on a range of issues -- from patents to copyrights to trademarks. How does the former head of the now defunct Judiciary Courts, the Internet, and Intellectual Property Subcommittee keep abreast of the flurry of IP activity while heading up a panel with broad jurisdiction over international and diplomatic issues? "I can walk and chew gum at the same time," he said.

Berman said he hoped that the Senate will act on a version of a foreign relations reauthorization bill that would include language to increase resources and training for enforcement of IP rights. A bill he introduced, which overwhelmingly passed the House in June, would require the Secretary of State to appoint 10 new IP attachés to serve in embassies or other diplomatic missions with priority placement given to countries with particularly egregious IP regimes.

On the ongoing debate over whether and how to overhaul the U.S. patent system, Berman said he was hopeful that legislation could move forward. He noted that the Senate is poised to pave the way in the 111th Congress. Berman also said President Obama's nomination of the first White House IP enforcement coordinator last week should lead to "a more coherent and comprehensive federal policy." Rigorous enforcement and a focus on digital piracy should be at the top of that office's agenda, he said.

Wednesday, September 30, 2009

Patent Office Unveils Streamlining Plan

Patent and Trademark Office Director David Kappos shared with employees on Wednesday a package of proposed initiatives that he hopes will move the agency down the path toward a more efficient examination environment. The pending plan would give examiners more time for a first action on the merits; time for examiner-initiated interviews with lessened credits for requests for continued examination; and providing consistent credits for transferred or inherited amendments.

Process changes would increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems, he said in a PTO newsletter. The proposal, drafted by PTO managers and union representatives, includes measures that will help examiners to do a high-quality first action, and shift resources from a focus on examiner recertification to front-end quality improvements, he wrote. Examiner briefings on the proposal will begin on Monday, Oct. 5.

Wednesday, September 23, 2009

ICANN Defends Domain Expansion Plan

Internet Corporation for Assigned Names Chief Operating Officer Doug Brent defended his group's planned expansion of top-level domains -- such as .biz, .info and .us -- at a House Judiciary Courts and Competition Subcommittee hearing Wednesday, arguing that bringing potentially hundreds of new domains to market will benefit consumers and companies that do business online. He said multiple parties from around the world have already expressed interest in securing new domains (like .eco, .nyc, and .basketball) and there have been numerous venues for public comment.

But Nike, Verizon and Marriott along with trade groups like the National Association of Manufacturers and U.S. Chamber of Commerce have built up opposition to the ICANN plan, claiming that it could exacerbate cyber-squatting, fraud, and consumer confusion while forcing trademark owners to spend more money to defend their brands. ICANN had targeted February to begin accepting applications for new domains but Brent said that date would likely be missed due to ongoing discussions about how to protect intellectual property rights.

IP concerns are crucial, he said, noting "we cannot and will not allow the expansion if it does not protect trademark holders." Steve DelBianco of the e-commerce group NetChoice said the domain name expansion controversy is indicative of the larger issue of ICANN not being fully accountable to the entire Internet community. He apologized to lawmakers for "dragging you into this food fight" and said it "shouldn't take a congressional hearing to get ICANN to focus on fraud and abuse."

Read a related story in CongressDaily's Wednesday AM Edition here and look for more in the PM Edition (subscription required). More on the hearing testimony can be found here.

Wednesday, September 16, 2009

GOP Lawmakers Want Answers From ICANN

Two of the House Judiciary Committee's top Republicans wrote to the new head of the Internet Corporation for Assigned Names and Numbers on Tuesday to express concerns about the proposed introduction of many new top-level domains -- such as .biz, .info, and .us -- and the expiration later this month of a memo formally joining the Commerce Department and the California-based entity that administers the world's Web addresses.

In their letter to ICANN CEO Rod Beckstrom, Judiciary ranking member Lamar Smith and Courts and Competition Subcommittee ranking member Howard Coble, R-N.C., said they are worried that a vast expansion of domains will carry "serious negative consequences" for U.S. businesses and consumers. The U.S. Chamber of Commerce, National Association of Manufacturers and others have complained that adding hundreds of new domains could exacerbate cyber-squatting, fraud, and overall confusion in the Internet marketplace.

Smith and Coble said the absence of price caps in the new registry deals could mean that legitimate businesses could be discriminated against and asked to pay a premium for each domain they register or renew. ICANN, which has said it plans to begin accepting applications for new domains in early 2010, could bring in an initial $90 million from the plan, according to some estimates. The letter argued the only economic justification put forth so far is an ICANN-commissioned report that has been criticized for failing to include empirical data to support of its claim that the project will benefit consumers.

Continue reading GOP Lawmakers Want Answers From ICANN.

Wednesday, September 9, 2009

Duke Law Prof Headed To PTO?

Duke Law School professor Arti Rai -- an expert in patent law, administrative law and legal issues facing the biopharmaceutical industry -- is expected to be named administrator for external affairs at the Patent and Trademark Office, sources close to the issue told Tech Daily Dose on Tuesday. The position, which has been vacant for some time, oversees domestic and international policy and intergovernmental relations for the agency. Officials at the PTO, Commerce Department and White House officials would not confirm or deny the report.

Rai was a classmate of President Obama's at Harvard Law School and she served as a member of the agency review team on science, technology, space, arts and humanities as part of administration's transition project. Her current research on innovation policy in areas such as green technology, drug development, and software is funded by the National Institutes of Health, the Kauffman Foundation, and Chatham House, according to her Duke bio. Rai has testified in the Senate on innovation policy and, before entering academia, clerked for U.S. District Court Judge Marilyn Hall Patel of California and was a litigation associate at Jenner & Block.

Thursday, September 3, 2009

Patent Office Unveils Leadership Changes

The Patent and Trademark Office will undergo a significant change in senior management next month when Commissioner for Patents John Doll retires after 35 years at the agency. Doll, who is responsible for all aspects of the patent granting process, will depart Oct. 2, the agency said Thursday. He previously served as deputy commissioner for patent resources and planning and earlier led a group of examiners who studied organic chemistry, pharmaceuticals, and biotechnology patent applications.

New PTO Director David Kappos has nominated longtime agency executive Bob Stoll to become commissioner for patents and has named Peggy Focarino as his deputy. Stoll has spent 27 years at the PTO and Focarino has been with the agency for more than 32 years. Commerce Secretary Gary Locke, who is responsible for appointing Doll's replacement for a five-year term, expressed support for Stoll's nomination. His deep knowledge of the PTO will make him an important addition to the senior management team, Locke said.

"Working hand-in-hand with Peggy, who has shown incredible skill in patents management and operations, I know they will meet the formidable challenges facing the patent organization, including the need to drastically reduce pendency, improve quality and boost efficiency, all while managing costs in a tough budgetary environment," Kappos said. Early in his tenure, Locke asked the PTO to be aggressive in reducing the time it takes to process patent applications and Kappos has made it a priority.

Thursday, August 20, 2009

Berman Bashes China's IP Regime

Days after visiting with South Korean leaders and praising them for their progress on the intellectual property enforcement front, House Foreign Affairs Chairman Howard Berman admonished the Chinese government for its failure to provide adequate protections for IP rights. Berman and others met Thursday with the National People's Congress Standing Committee Chairman Wu Bangguo, Vice Premier Wang Qishan, NPC Foreign Affairs Chairman Li Zhaoxing, Foreign Affairs Minister Yang Jiechi and Commerce Minister Chen Deming in Beijing.

"China's efforts to stop intellectual property theft have been weak and ineffective - heavy on tough talk but light on implementation," said Berman, whose congressional district houses a number of TV and movie studios. "Hundreds of Web sites provide downloads and links to pirated movies, recordings and games. And sales of 'hard goods' such as illegally duplicated CDs and DVDs continue at close to ninety percent of what they were before China launched its vaunted anti-piracy campaign. It's time for more serious action."

Optical disc plants in China produce and export millions of CDs, DVDs, software and videogames in violation of Chinese law, his office said, while Web services such as Baidu provide direct links to recordings and video games without paying the people who produced them. The country's infamous track record for IP infringement costs U.S. creative communities anywhere from $2.2 to $3.5 billion in each of the past four years, Berman said, urging Chinese authorities to impose stiff fines and meaningful criminal penalties. The country routinely ranks among the world's top offenders in evaluations of global IP like the Office of the U.S. Trade Representative's annual "Special 301" report.

Continue reading Berman Bashes China's IP Regime.

Friday, August 7, 2009

Senate Confirms Kappos As PTO Chief

The full Senate late today confirmed IBM Assistant General Counsel David Kappos as the next director of the Patent and Trademark Office, following Kappos' approval Thursday by the Senate Judiciary Committee on a voice vote. The Senate's action came as it wrapped up business prior to a month-long August recess. Kappos will also hold the title of undersecretary for intellectual property at the Commerce Department. In a written statement following the Judiciary Committee's action, Chairman Patrick Leahy emphasized the importance of getting a PTO director in place quickly. "The PTO needs strong and accountable leadership," he said, pointing to the agency's growing backlog of patent applications and economic woes - which required recent passage of emergency legislation, due to a drop in user fees that fund PTO operations. Leahy said he also looked forward to working with Kappos on a bill the senator introduced that would overhaul the U.S. patent system.

Tuesday, August 4, 2009

Judiciary Sets Vote For PTO Nominee

President Obama's pick to head the Patent and Trademark Office could be confirmed before the August recess, CongressDaily's AM Edition reported on Tuesday. Senate Judiciary Chairman Patrick Leahy has scheduled a Thursday morning business meeting for his panel to vote on IBM Assistant General Counsel David Kappos, tapped by Obama in June to become PTO director and undersecretary for intellectual property at the Commerce Department. The committee, which held Kappos' confirmation hearing Wednesday, is also scheduled to consider three other nominees. If the nomination is approved by the Judiciary Committee, Leahy would have to work with Senate leaders to find time for a floor vote before they leave town Friday.

Wednesday, July 29, 2009

Kappos Calls For Strong IP Enforcement

IBM Assistant General Counsel David Kappos, President Obama's pick for Patent and Trademark Office director, appeared before a congratulatory and largely sympathetic Senate Judiciary Committee on Wednesday. During the hearing, he outlined his priorities for the agency, should he be confirmed, and answered questions about the PTO's internal turmoil while offering thoughts about various legislative proposals before Congress that are intended to update the U.S. patent system for the 21st century. Details are available in CongressDaily's PM Edition here (subscription required).

But Kappos, who has a broad knowledge of intellectual property issues, also weighed in on the economic import of IP protection and spoke about the piracy and counterfeiting challenges faced by the movie, music and software industries. In response to a question from the committee's newest member, Sen. Al Franken, D-Minn., Kappos said the United States "unquestionably" faces IP theft problems on a global scale. He hinted at "new capabilities" in the Obama administration -- presumably the yet-to-be-named White House IP czar -- that he expects will lead to "aggressive actions" against bootleggers and more collaboration with foreign counterparts.

He went on to say that, if confirmed, he would work with various administration officials "to engage with whatever countries are needed" including IP offenders in Asia, Eastern Europe and Africa. Kappos said the Office of the U.S. Trade Representative's annual "Special 301" report, which documents countries doing poorly on IP and those that are improving, is "clearly an important part" of the effort. Education is also essential. He said the U.S. government should work with the governments of other countries to help put in place new laws and enforcement scenarios that protect the rights of content creators.

Tuesday, July 28, 2009

PTO Court Battle Could End Soon

A high-profile case involving a dispute over Patent and Trademark Office rules announced last fall aimed at increasing patent system efficiency could soon come to a close. The Justice Department on Friday filed a motion with the court handling the case to stay proceedings for the purpose of permitting the new Patent and Trademark Office director to reconsider implementation of the rules, which limit applicants to filing two new continuing applications and one request for continued examination. The change was challenged by drug manufacturer GlaxoSmithKline and an independent inventor, Triantafyllos Tafas.

Since all parties consented to the motion, it is expected to be granted, Foley & Lardner intellectual property attorney Hal Wegner said in a memo. Even if the case is not settled, oral arguments before the U.S. Court of Appeals for the Federal Circuit are scheduled for Oct. 7, prior to which the new PTO chief could take other actions. IBM executive David Kappos, President Obama's pick to head the PTO, will appear before the Senate Judiciary Committee on Wednesday then has to be confirmed by the panel and the full Senate. It is uncertain whether the confirmation process could be complete before Congress is scheduled to leave town for August recess next Friday.

Monday, July 27, 2009

This Week In Tech: PTO, P2P And More

• More than six months since President Obama took office, the process of filling key positions in his administration continues. Obama's nominee for director of the Patent and Trademark Office, IBM Assistant General Counsel David Kappos, will appear for questioning Wednesday before the Senate Judiciary Committee. The session gets underway at 10 a.m. in Room 226/Dirksen Senate Office Building.

• The House Oversight and Government Reform Committee Wednesday will resume its examination of inadvertent file-sharing over peer-to-peer networks, with a hearing that will focus on how the popular platform LimeWire could adversely affect both privacy and national security. The session takes place at 10 a.m. in Room 2154/Rayburn House Office Building.

• The Senate Homeland Security and Governmental Affairs Committee plans to mark up legislation Wednesday that would replace a 2005 law -- popularly known as 'Real ID' -- which required states to issue new secure drivers' licenses and identification documents to their residents. The session kicks off at 10 a.m. in Room 324/Dirksen Senate Office Building.

• With last month's nationwide transition to digital television signals firmly behind them, broadcasters plan to celebrate with a Tuesday reception on Capitol Hill that will trumpet their latest technology: digital broadcasts to mobile devices, including cell phones, netbooks and in-car displays. Invited dignitaries to the event -- which kicks off at noon in the foyer of the Rayburn House Office Building -- include Reps. John Dingell, D-Mich., Edward Markey, D-Mass., and Cliff Stearns, R-Fla.

Read more details at CongressDaily's TechCentral here.

Thursday, July 23, 2009

House Panel Revisits File-Sharing Security

The House Oversight and Government Reform Committee will wade back into the debate over inadvertent file-sharing over peer-to-peer networks next Wednesday. The panel has scheduled a hearing that will focus on how popular platform LimeWire and other services could endanger citizens and jeopardize national security. Lime Group Chairman Mark Gorton, Tiversa CEO Robert Boback and Progress and Freedom Foundation Senior Fellow Thomas Sydnor are scheduled to testify. The committee held similar hearings in July 2007 and four years earlier. After the 2003 hearing, the P2P industry adopted a voluntary code of conduct to prevent inadvertent disclosures of sensitive information.

In March 2007, the Patent and Trademark Office released a report suggesting that inadvertent file-sharing may still be a serious problem and that the industry might not be living up to its promises. In response to the PTO report, committee staff conducted its own probe. Using LimeWire, aides ran a series of common searches during a one month period. They were able to easily obtain personal bank records and tax forms, attorney-client communications, corporate strategy documents for Fortune 500 companies, confidential corporate accounting documents, government emergency response plans, and even military operation orders.

Meanwhile, Rep. Mary Bono Mack, R-Calif., who is not on the committee, introduced legislation earlier this year that would help educate Internet users about P2P privacy and security risks. The bill came on the heels of reports that file-sharing software was implicated in a security breach involving Marine One, the helicopter used by President Obama. Bono Mack's measure, which was cosponsored by Rep. John Barrow, D-Ga., and Energy and Commerce ranking member Joe Barton, would ensure P2P programs cannot be installed without providing clear notice and obtaining user consent. It would also make it illegal for firms to prohibit users from blocking, disabling, or removing the software.

Wednesday, July 22, 2009

Leahy Releases Kappos Questionnaire

Senate Judiciary Chairman Patrick Leahy has released the committee's completed questionnaire pertaining to David Kappos, President Obama's pick for Patent and Trademark Office director, which could signal that his confirmation hearing is around the corner. Kappos, an executive at IBM who would also serve as undersecretary for intellectual property at the Commerce Department, was selected by Obama on June 18 but his hearing was delayed due to the committee's focus on Supreme Court nominee Sonia Sotomayor.

The 16-page questionnaire doesn't include any real surprises. Kappos details his background, professional affiliations and pro bono work as well as his financials. According to the form, he owns vested IBM options valued at approximately $147,000 and those options would be sold within 90 days of his appointment as the PTO's top dog. He also owns unvested IBM options and restricted stock valued at about $1.5 million. All of that deferred income would be cancelled upon his resignation from IBM. On a more personal note, Kappos owns property in Tenants Harbor, Maine originally valued at $100,000. Read more on the committee's Web site here.

Update: Tech Daily Dose has learned that the Kappos confirmation hearing has been scheduled for next Wednesday, July 29. He will appear before the committee with a pair of judicial nominees who also require vetting.

Monday, July 20, 2009

Study: Patent Proposal Could Be Costly

Proposed changes to the Patent and Trademark Office's post-grant review process included in a bill sponsored by Senate Judiciary Chairman Patrick Leahy would increase the patent pendency waiting period by more than 25 percent, and could add to the cost of defending patent validity by billions of dollars, according to an analysis by Case Western Reserve University economist Scott Shane. Judiciary ranking member Jeff Sessions requested that Shane examine the issue earlier this month as staffers for Leahy and Sessions continue meeting with stakeholders about the topic.

The Leahy measure, which passed his committee 15-4 in April, would adopt House-passed text from 2007 that lengthens the timeline for challenging a granted patent and strips out a "public use or sale" provision that Leahy added as a basis for challenging a patent. Specifically, Shane's research found that the length of time between patent application and issuance would increase from 32 months to 40 months and the costs of defending patent validity could rise by $2.2 billion. He also argues that the proposed changes would lead to an annual reduction of $4.4 billion in industrial R&D and would make uncertain the validity of $1.4 billion to $1.7 billion of patents issued annually.

Earlier research from Shane, which was commissioned by the Manufacturing Alliance on Patent Policy, concluded that adopting House language on how damages are calculated in patent lawsuits could lead to job loss and decreased R&D. The alliance, which also bankrolled the new report, is backed by Corning, Monsanto, DuPont and others critical of Leahy's patent reform push. A recent report by the Coalition for Patent Fairness, which supports patent overhauls and counts Cisco Systems, Apple, Dell and others as its members, found that pending legislation would create 100,000 new jobs.

Monday, July 13, 2009

PTO Puts The Brakes On Patent Project

A Web-based governmental social networking project aimed at improving patent quality by connecting the Patent and Trademark Office with outside scientific and technical experts has effectively shut down after a two year test run and accolades from the White House. The Peer-to-Patent project, a joint effort between the PTO and New York Law School's Center for Patent Innovation has stopped accepting new applications but will continue processing those already in the system. The PTO elected to close Peer-to-Patent to new applications "until it can complete a full evaluation of the impact the project has had on the patent examination process," according to a NYLS press release.

There remain more than 70 applications on the Peer-to-Patent site awaiting review and interest in the program remains high as evidenced by the continued interest of applicants, the federal government, educational institutions, and international patent offices, officials said. Major companies such as General Electric, Hewlett-Packard, IBM, Intel, and Microsoft all submitted patent applications to the Peer-to-Patent process. Other patent applications were submitted by Cisco Systems, Disney Enterprises, eBay, Novel, Red Hat, Sun Microsystems, Xerox, and Yahoo, as well as smaller firms.

Peer-to-Patent was launched in June 2007 by Beth Noveck, a professor at the law school who now serves as President Obama's deputy chief technology officer and head of the White House's open government project. The project is featured in the White House Open Government Innovations Gallery, an online resource that "celebrates the innovators and innovations who are championing the President's vision of more effective and open government." IBM executive David Kappos, Obama's pick for PTO director, was one of the early proponents of Peer-to-Patent and directed IBM in providing both financial and technical assistance for the effort.

Thursday, July 9, 2009

Pressure Builds For PTO Confirmation

The Intellectual Property Owners Association on Wednesday urged Senate Judiciary Committee leaders to schedule a hearing soon on the confirmation of President Obama's pick for Patent and Trademark Office director, David Kappos. IPO said it is "critical for new management to be put in place as soon as possible" to address the many challenges currently "hindering effective processing of patent applications." The letter said Kappos meets all of the qualifications IPO has recommended for the PTO position in letters to the administration. The PTO, which is funded through user fees and is faced with a lengthy patent application backlog, recently suspended overtime pay for patent examiners and earlier instituted a hiring freeze.

The group told Judiciary Chairman Patrick Leahy and ranking member Jeff Sessions that Kappos, an IBM executive, has an exceptional record in IP law and significant experience in industry as a manager. He has worked within IPO and other associations to improve IP practice and communications with the PTO. Kappos is in line behind Supreme Court nominee Sonia Sotomayor whose Senate Judiciary Committee confirmation hearing begins next week. While the agency awaits its new leader, Commerce Secretary Gary Locke has appointed Nicholas Godici, a high-ranking Clinton administration patent official, to serve as an expert appointee and liaison between the PTO and Commerce.

Tuesday, July 7, 2009

House Passes Patent Office Bailout Bill

The House late Tuesday passed legislation under suspension of the rules that would authorize the Patent and Trademark Office to use money statutorily cordoned off for its trademark portfolio to pay for patent-related work. The PTO, which is funded through user fees and is faced with a lengthy patent application backlog, recently suspended overtime pay for patent examiners and earlier instituted a hiring freeze. PTO officials have said the loan is justified because the trademark budget has a massive surplus. House Judiciary Chairman John Conyers's bill and a companion measure sponsored by Senate Judiciary Chairman Patrick Leahy are intended to stave off potential furloughs and reductions-in-force. Under the Conyers bill the PTO could use trademark funds made available for fiscal year 2009 of up to $70 million to support the processing of patents and related activities. The measure would also establish a surcharge to repay those funds. The PTO would have until June 30, 2010 to use the authority and the surcharge would take effect no later than Sept. 30, 2011 with all funds being repaid by Sept. 30, 2014. Worth noting: The Leahy bill doesn't assign a specific dollar amount.

Tuesday, July 7, 2009

Godici Tapped For Special PTO Post

Commerce Secretary Gary Locke has named a high-ranking Clinton administration patent official to serve as an expert appointee whose job will be to assist the new Patent and Trademark Office director and act as a liaison between the office and the Commerce Department, which houses the PTO. Nicholas Godici served for five years as commissioner for patents, acting under secretary of commerce for intellectual property and director of the PTO and got his start as at the agency as an examiner 30 years earlier. His term in the Obama administration is limited to 180 days. IBM executive David Kappos was tapped to become head of the PTO last month but must be confirmed by the Senate. He is in line behind Supreme Court nominee Sonia Sotomayor whose Senate Judiciary Committee confirmation hearing begins Monday.

Godici, who has been a top advisor to Birch, Stewart, Kolasch & Birch, LLP since 2005, could be a valuable asset at PTO as the agency struggles to avoid budget cuts and furloughs. The office, which is funded through fees collected from its users, recently suspended overtime pay for patent examiners and earlier this year instituted a hiring freeze. Lawmakers have introduced legislation that would let the PTO's patent division borrow money from its trademark portfolio, which has a multi-million dollar surplus. A House bill sponsored by Judiciary Chairman John Conyers is scheduled for a floor vote under suspension of the rules late Tuesday. Senate Judiciary Chairman Patrick Leahy has introduced a companion measure in his chamber.

Godici was on Capitol Hill in December where he spoke at a Computing Technology Industry Association event that focused on the future of the PTO. Watch a video of that briefing here. Other panelists included Gerald Mossinghoff, Bruce Lehman, and Q. Todd Dickinson, all former leaders at the PTO.

Wednesday, July 1, 2009

Sessions Asks For Patent Report

Senate Judiciary ranking member Jeff Sessions has requested that Case Western Reserve University innovation expert Scott Shane analyze the potential impact of a pending bill's approach to administratively challenging a patent's validity after it is granted. The proposed changes to the Patent and Trademark Office's post-grant review process are included in a bill sponsored by Judiciary Chairman Patrick Leahy, which passed his committee 15-4 in April. Staffers for Leahy and Sessions have been meeting with stakeholders about the issue in recent weeks even as the panel focuses on the forthcoming confirmation hearings of Supreme Court nominee Sonia Sotomayor.

As amended, the measure would adopt House-passed text from 2007 that lengthens the timeline for challenging a granted patent and strips out a "public use or sale" provision that Leahy added as a basis for challenging a patent. Shane's research earlier this Congress on apportionment of damages concluded that adopting House language could lead to job loss and decreased R&D investment. Leahy's panel ultimately watered down the damages text so the bill could advance. Shane's report was commissioned by the Manufacturing Alliance on Patent Policy, a group backed by Corning, Monsanto, DuPont and others. His latest research will be ready for Sessions within two weeks, Tech Daily Dose has learned.

Click here to read recent CongressDaily coverage of the emerging conflict over post-grant review language (subscription required).

Wednesday, June 24, 2009

Leahy Offers Patent Office Bailout Bill

Senate Judiciary Chairman Patrick Leahy and ranking member Jeff Sessions came to the rescue of the Patent and Trademark Office on Wednesday night when they introduced a bill that will allow the agency to use funds designated for its trademark portfolio to be used to address its growing backlog of patent applications. The trademark budget, which is statutorily untouchable, has a $60 million-$70 million surplus. CongressDaily reported this week that Commerce Department and PTO officials had been making the rounds on Capitol Hill to let key lawmakers know how the office was struggling in the recession and offering up legislative ideas like the loan plan.

The PTO, which is funded through fees collected from its users, suspended overtime pay for patent examiners effective Sunday and earlier this year instituted a hiring freeze amid a slump in the number of patent applications filed. Under the bill, the PTO can make use of the money "to support the processing of patents and other activities, services, and materials relating to patents" if the office's director certifies to Congress the use of funds "is reasonably necessary to avoid furloughs or a reduction-in-force." The borrowed money would have to be put back in the trademark basket no later than Sept. 30, 2011.

If the agency and lawmakers deem the situation urgent enough, the bill could advance without a new PTO director in place. IBM executive David Kappos, President Obama's pick for the job, was only named last week and has to trudge through the confirmation process presumably after Supreme Court nominee Sonia Sotomayor is considered. John Doll is acting director. Meanwhile, the Senate Appropriations Commerce-Justice-Science Subcommittee on Wednesday approved its FY10 spending bill, giving the PTO full funding at $1.9 billion. Chairwoman Barbara Mikulski, D-Md., said the allotment could help attack the backlog in patent applications.

Update: A Leahy aide on Thursday said the bill did not get introduced Wednesday night but could move soon.

Wednesday, June 24, 2009

Cash-Strapped PTO Asks Hill For Help

CongressDaily's AM Edition on Wednesday reports that the Patent and Trademark Office is asking Congress to help stabilize the agency, which is facing a substantial decrease in the number of patent applications filed. Acting Director John Doll broke the news to employees in a Tuesday memo. The agency, which is funded through fees collected from its users, this week suspended overtime pay for patent examiners and this year instituted a hiring freeze. All of this has been done with an eye toward avoiding furloughs. "We're now putting forward a number of different options to bridge any possible gaps, and we'll also be soliciting ideas from members of Congress," Doll wrote, acknowledging that in the recession, fee collection could continue to decline. With the support of Commerce Secretary Locke, the PTO is seeking additional cost reduction measures that would save an additional $20 million in FY09, he said. Click here to read the story (subscription required), which details some of the options floated to aides for key lawmakers. The Senate Commerce-Justice-Science Appropriations Subcommittee is scheduled to consider the FY10 appropriations bill, which funds the PTO, later today.

Tuesday, June 23, 2009

Hatch Continues Patent Reform Work

As staffers for Senate Judiciary Chairman Patrick Leahy resume negotiations with stakeholders who are divided over sections of his bill to overhaul the U.S. patent system, (see CongressDaily's AM Edition for coverage), aides for Sen. Orrin Hatch, R-Utah, are trying to build support for a proposal that would essentially let the Patent and Trademark Office examine information that was not considered during an earlier patent review. Officials from the generic and brand pharmaceuticals industries as well as biotechnology interests met with Hatch's team on Monday. Under the longtime intellectual property crusader's plan, if a patent is issued, the information in question may not be used to hold the patent unenforceable.

Language that Hatch prepared to introduce when Leahy's panel marked up the broader bill in April also clarifies that requesting the reissue (or the decision not to) cannot alone be the basis of an "inequitable conduct" challenge. The proposal would leave untouched the underlying doctrine, which generic drug makers believe is vital to ensure timely market entry of medicines. Hatch, an original cosponsor of Leahy's bill, announced during the mark up that he could no longer support the final product and was one of four members who voted against the measure. "[The bill] has the very real potential to undermine the stimulatory effects of not only our patent system but those abroad," he said at the time.

Generics manufacturers previously argued Hatch's proposal would incentivize deception before the PTO. It's a back door "but for" test that would do away with the inequitable conduct defense, they said. But the senator's office is trying to engage in good faith negotiations with key players and hopes to reconvene the group for further talks after the Independence Day recess, sources said. One individual who attended the Monday meeting said there was "a great deal of positive interaction," with all parties trying to understand each others concerns. If the patent reissue problem can be solved, Hatch is more likely to rally his GOP colleagues in support of Leahy's bill as it heads toward the Senate floor.

Friday, June 19, 2009

Obama's PTO Pick Wins Wide Praise

President Obama on Thursday nominated IBM Assistant General Counsel David Kappos to become director of the Patent and Trademark Office. As reported in CongressDaily's AM Edition, the news was uniformly welcomed by lawmakers, industry leaders and members of the legal community. Senate Judiciary Chairman Patrick Leahy said Kappos is "exceptionally qualified" to lead the PTO, which faces serious challenges in the recession and a spokesman for Judiciary ranking member Jeff Sessions said his boss believes Kappos' credentials and experience are impressive and looks forward to evaluating him. Commerce Secretary Gary Locke issued a statement saying Kappos "will be a strong voice for patent reform" and will be charged with making a big dent in the growing application backlog, which now exceeds 750,000.

Foley & Lardner attorney Jon Dudas, who served as PTO director in the Bush administration, said Kappos is an excellent choice. "He is deeply respected in the intellectual property community, the U.S. government and internationally," Dudas said. "Dave also has the leadership and management skills to inspire the thousands of incredibly professional colleagues he will soon lead." American Intellectual Property Law Association Executive Director Todd Dickinson, who served as head of the PTO under former President Bill Clinton, said Kappos "has a genuine appreciation for the tough issues facing intellectual property policy and administration today." His nomination offers an opportunity for a fresh start, Dickinson said.

Groups involved in the ongoing congressional battle over patent reform also hailed Obama's pick. The Coalition for Patent Fairness and Innovation Alliance, which have been at odds over pending legislation, both backed Kappos. CPF said he has the experience needed to lead the PTO "at a time when it faces significant operational challenges in an ever-evolving competitive global marketplace." The Alliance said its members "look forward to working with him in what will be a very difficult, but important effort to revitalize the PTO, which all agree is under funded and overburdened." Congress should provide PTO the funds it needs to upgrade its technology, improve the patent application process, and attract and retain professional talent, the group said.

Thursday, June 18, 2009

Obama Picks IBM Exec For PTO Job

This just in... President Obama has announced his intention to nominate IBM Assistant General Counsel David Kappos to become director of the Patent and Trademark Office. His bio, included in the White House announcement, is pasted after the jump. Kappos, who joined the company as a development engineer in 1983, was among several rumored top contenders for the job. Others included American Intellectual Property Law Association Executive Director Q. Todd Dickinson, who was PTO director under former President Bill Clinton, and Jim Pooley, a Silicon Valley attorney who was installed earlier this week as the World Intellectual Property Organization's deputy director general for patents. Look for more in CongressDaily's AM Edition on Friday.
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Continue reading Obama Picks IBM Exec For PTO Job.

Tuesday, June 16, 2009

Pooley Named To WIPO Post

High-tech attorney Jim Pooley, one of several top contenders for the job of Patent and Trademark Office director, was approved by World Intellectual Property Organization leaders on Monday as deputy director general for patents. Pooley has been a partner in the litigation department of the Palo Alto office of Morrison & Forrester and has practiced in Silicon Valley since 1973. He is immediate past president of the American Intellectual Property Law Association and president of the National Inventors Hall of Fame. Other new deputy directors general are: Geoffrey Onyeama (Nigeria), cooperation for development (including development agenda and WIPO Academy); Wang Binying (China), trademarks, industrial designs and geographical indications; and Johannes Wichard (Germany) global issues (including enforcement, arbitration/mediation, communications, and the committee on genetic resources, traditional knowledge and folklore). For more, click here. (Hat tip, William New)

Tuesday, June 9, 2009

Obama Urged To Balance IP Picks

Public Knowledge President Gigi Sohn urged the Obama administration on Tuesday to employ "a nuanced, balanced" approach to naming key intellectual property posts in the federal government. President Obama has yet to name a White House IP enforcement coordinator, as mandated by a law that passed the 110th Congress, or Patent and Trademark Office director. She told the World Copyright Summit that the IP czar should not be a policymaker but instead must focus on harmonizing efforts by a range of agencies that have enforcement authority. "There needs to be someone to get them all on the same page," Sohn said, lauding the work of the Bush administration's key IP officer Chris Israel who was stationed at the Commerce Department. "We don't think the job should change -- it just has more gravitas," she said.

Copyright Alliance Executive Director Patrick Ross, who regularly finds himself at odds with Sohn's viewpoint, agreed that filling vacant IP positions are important and he has been pleased with the administration's appointments to date. His group, which represents major IP owners and content creators, was pleased to see two entertainment industry lawyers -- Thomas Perrelli and Donald Verrilli -- join the Justice Department. Sohn's group, the Computer and Communications Industry Association, the Consumer Electronics Association and other tech stakeholders complained in a letter to Obama that both previously represented "the concentrated copyright industries" and future appointments should be more evenhanded.

Monday, June 8, 2009

IP Owners Push For Patent Bill Vote

Proponents of proposed changes to the U.S. patent system are getting antsy as the increasingly packed House and Senate calendars dash their hopes for swift action on legislation this year. At its recent meeting, the Intellectual Property Owners Association board of directors adopted a resolution urging the Senate to bring a bill sponsored by Judiciary Chairman Patrick Leahy to a vote soon. The bill passed his committee in April and staffers for Leahy and Majority Leader Harry Reid have begun discussing how and when to move the measure to the floor. "We are still taking a look at this complicated issue and how it fits into the broader floor schedule," a spokeswoman for Reid said Friday. Supreme Court nominee Sonia Sotomayor and other judicial appointments will consume much of Leahy's time in the weeks ahead.

IPO's board approved a number of other resolutions for 2009, including:

• Support for legislation to repeal the qui tam cause of action of Section 292(b) of the patent statute for false marking of products.
• Support for U.S. Customs and Border Protection statutory and regulatory authority over design patents by creating a registry similar to what currently exists for goods protected by trademarks or copyrights.
• Opposition to legislation that does not respect the essentially territorial nature of patent rights by providing that it shall not be an act of infringement in the United States to use, offer to sell, or sell within the United States, or import any patented invention based on first sale abroad of the patented invention by or under authority of the owner or licensee of an applicable U.S. patent or corresponding foreign patent.

Read more IPO resolutions here.

Thursday, May 28, 2009

Rep. Honda Backs Palm Exec For PTO

The intellectual property policy parlor game of guessing who the next Patent and Trademark Office director will be has zeroed in on several names in recent months -- Q. Todd Dickinson, who already ran the agency under former President Bill Clinton; David Kappos, who is vice president and assistant general counsel for IP at IBM; and Jim Pooley, a Silicon Valley lawyer who was recently nominated to become deputy director of the World Intellectual Property Organization. But with Pooley effectively out of the mix, another name has bubbled to the surface: Doug Luftman, associate general counsel for Sunnyvale, Calif. smartphone manufacturer Palm.

Luftman has at least one cheerleader in Congress, Rep. Michael Honda, D-Calif, vice-chair of the House Appropriations Legislative Branch Subcommittee, who wrote to the White House director of presidential personnel recommending him for the job. Although the letter was not made public, a spokesman for Honda said his boss believes Luftman's key asset "is his knowledge of the patent process from idea to product." Luftman has followed the product development process from the industry viewpoint at Palm and before that as general counsel of Caspian Networks; at CIENA Corp., and at Intel. He also worked for Fenwick & West's Silicon Valley office. Honda's aide said Luftman "recognizes the disarray" of the PTO and has management experience that could help.

Wednesday, May 6, 2009

Silicon Valley's Pooley Headed To Geneva?

High-tech attorney Jim Pooley, one of several top contenders for the job of Patent and Trademark Office director, has confirmed to Tech Daily Dose his nomination to become deputy director of the World Intellectual Property Organization. Pooley is a partner in the litigation department of the Palo Alto office of Morrison & Forrester and has practiced in Silicon Valley since 1973. He is immediate past president of the American Intellectual Property Law Association and president of the National Inventors Hall of Fame. Foley & Lardner IP attorney Hal Wegner noted in an email that when an American is sent to WIPO, the final decision rests with the State Department and that is usually based upon the recommendation of the PTO. It would go against tradition to name this spot without the input of the new PTO chief, he said. Pooley is part of a slate of WIPO nominees that are subject to election. The list of candidates should be announced soon, Wegner said. Other names in the mix for the PTO job include Q. Todd Dickinson, who already ran the agency under former President Bill Clinton, and David Kappos, who is vice president and assistant general counsel for IP at IBM.

Tuesday, April 21, 2009

FedCirc Chief Judge Highlights IP Priorities

When it comes to congressional passage of a patent reform bill, the devil will be in the details, the chief judge for the U.S. Court of Appeals for the Federal Circuit told the Intellectual Property Owners Association international judges conference Monday. If a bill passes the House and Senate, Judge Paul Michel said he would expect it to include language that would change the United States from a "first to invent" to a "first to file" patent system. That modification is one of many proposed in legislation sponsored by Senate Judiciary Chairman Patrick Leahy and House Judiciary Chairman John Conyers. "On the other details stay tuned and stay involved," Michel said. Leahy's panel passed its patent bill before Easter recess and the senator's staff will soon start looking to secure floor time for a vote. But leadership aides have warned that this work period is a busy one and the legislation may have to wait. The House has not yet begun work on its bill. Michel said he believes there is a "substantial likelihood" some version of a patent bill will clear this year, potentially by the end of the summer.

During his talk, Michel pointed out several key intellectual property positions that are vacant. The Patent and Trademark Office, which he called a "highly stressed institution," still lacks a director and the newly created job of IP enforcement coordinator within the White House has not been filled. Both will be extremely important posts going forward, Michel said. On the international front, The World Intellectual Property Organization is in search of a deputy director. "It is conceivable that job could be filled by an American," the judge said. "Even in my own court, there is the prospect of a considerable changeover of membership," Michel added. Of the 12 active fulltime judges, four are already eligible to retire or assume senior status and within two years an additional four will fall into that category. Meanwhile, his court and others are struggling to keep pace with IP lawsuits and the PTO and its counterparts around the world are dealing with huge application backlogs and long pendency times. "It's ironic that in a world where the pace of commerce and news and innovation keep getting faster, the patent offices are getting slower," Michel said.

Monday, April 20, 2009

IP Hawks Counter Tech Letter To Obama

A collection of unions, artists' alliances, companies, trade associations and research organizations whose livelihoods depend on solid intellectual property protections wrote to President Obama Monday countering what they believe is a "false dichotomy" espoused by high-tech groups who suggested in a letter earlier this month that there is a conflict between the rights of authors and inventors and the need for innovation or creativity. "The authors of the April 2 letter would have you believe that you must choose between safeguarding IP protection on the one hand and promoting innovation on the other. This supposed conflict is itself an invention," the new letter stated. The communiqué was signed by Association of American Publishers, Business Software Alliance, Copyright Alliance, Motion Picture Association of America, Recording Industry Association of America and many more. The previous memo was sent by the American Library Association; Center for Democracy and Technology; Computer and Communications Industry Association; Consumer Electronics Association and others.

"Intellectual property drives innovation and creativity, from the production of new creative works to the development of consumer electronics and medicine," the group of IP crusaders wrote in the Monday letter. "Your administration, like the transition team that preceded it, reflects a diversity of experience and viewpoints on the full spectrum of issues, including IP policy. The hallmarks of your administration's appointees have been competence, substantive expertise, and a commitment to your administration's agenda." The earlier letter pointed to two senior officials in the Justice Department -- Thomas Perrelli and Donald Verrilli -- as examples of nominees who previously represented "the concentrated copyright industries." The new letter from the IP community said Obama has demonstrated knowledge about the importance of copyright, patents and trademarks to the U.S. economy. "We appreciate the fact that such knowledge will be a key qualification for any future appointee to an IP policy position in your administration," the group said.

Wednesday, April 15, 2009

Cash-Strapped PTO Awaits New Leader

From CongressDaily's Tuesday PM Edition...

The Obama administration's selection of a Patent and Trademark Office director cannot come soon enough, according to officials inside the agency. They cite serious cash-flow problems, internal cutbacks and a downturn in the number of applications filed and patents granted amid continued U.S. economic gloom. "We need a new director just as soon as we can get one," Patent Office Professional Association President Robert Budens said Monday. While the administration and Commerce Department, which houses PTO, have been tight-lipped about the appointment, sources say Commerce Secretary Gary Locke is involved and an announcement could come in the next week or two. Oft-mentioned prospects for the job include Q. Todd Dickinson, who ran the office under former President Bill Clinton, Silicon Valley attorney Jim Pooley and IBM Vice President David Kappos. During his March confirmation hearing, Locke vowed not to let urgent issues like the 2010 census crowd out topics like improving the patent office's productivity. The agency faces a backlog of more than 750,000 applications. Read the full story here.

Thursday, April 2, 2009

Groups Urge Balanced IP Appointments

A coalition of consumer advocates, library associations, and trade groups representing the technology, consumer electronics, and telecommunications industries wrote to President Obama Thursday urging him to make sure his future appointments to intellectual property positions "reflect the diversity of stakeholders affected by IP policy." The letter points out that several appointees to positions that oversee the formulation and implementation of IP policy have previously represented "the concentrated copyright industries." They cite as examples two senior officials in the Justice Department -- Thomas Perrelli and Donald Verrilli as examples.

Perrelli was tapped to become associate attorney general and Verrilli for deputy associate attorney general. Both men represented the recording industry in litigation for many years. "The fact that these individuals were litigators rather than registered lobbyists does not diminish the possibility that they may be inclined favorably towards the positions of the industries they long represented," the letter said. Key vacant positions include IP policy posts at the Patent and Trademark Office, U.S. Trade Representative, and State Department. "Individuals who support overly broad IP protection might favor established distribution models at the expense of technological innovators, creative artists, writers, musicians, filmmakers, and an increasingly participatory public," the signatories said.

Overzealous expansion and enforcement of copyright can quash innovative IT, development and marketing of new and useful devices, and the creation of new works, as well as prohibit the public from accessing and using its cultural heritage, the argued. The letter was signed by the American Library Association; Center for Democracy and Technology; Computer and Communications Industry Association; Consumer Electronics Association; Consumers Union; Electronic Frontier Foundation; Public Knowledge and others. Read the document here.

Thursday, April 2, 2009

Generics Reject Potential Hatch Patent Plan

Generic pharmaceutical industry officials are angry over an amendment that Sen. Orrin Hatch, R-Utah, might introduce Thursday as the Senate Judiciary Committee continues its mark up of sweeping patent legislation. The proposal would essentially let the Patent and Trademark Office examine information that was not considered during an earlier review. Under the plan, if a patent is issued, the information in question may not be used to hold the patent unenforceable. The amendment also clarifies that requesting the reissue (or the decision not to) cannot alone be the basis of an "inequitable conduct" challenge. The proposal does not touch the underlying doctrine, which generic drug makers believe is vital to ensure timely market entry of medicines, according to CongressDaily's AM Edition.

But generics manufacturers argue the Hatch amendment would essentially incentivize intentional deceptive before the PTO. It's a back door "but for" test that would do away with the inequitable conduct defense, they argue, calling the proposal an 11th hour effort by brand pharmaceutical companies. The plan allows patentees to effectively "sanitize" their patents from all prior cheating or lying at the PTO by submitting the concealed or misrepresented information for consideration, even long after the patent issued, generics stakeholders said. If adopted, the offering could cause great delay in litigation, will not reduce costs, and burdens the PTO with a new procedure, they argue.

Tuesday, March 31, 2009

USTR Flags Tech Trade Barriers

U.S. Trade Representative Ron Kirk's 2009 report to Congress, which describes significant barriers to U.S. trade and investment and actions being taken by officials to address them, flags a number of topics of interest to the tech sector. They include:

• Onerous testing and certification requirements on more than 1,200 consumer goods
• New requirements to register and inspect a broad range of imports
• Ineffective enforcement against trademark counterfeiting and copyright piracy
• Cumbersome and non-transparent approval processes for biotech products
• Discriminatory excise taxes requiring imported products to pay rates 10 to 43 times higher than before
• Prohibited export subsidies (e.g., for "national" brands) that are highly trade distorting
• Limitations to foreign participation in telecom markets, both basic and value added, through a multiplicity of barriers, including high basic capital requirements, and non-transparent and lengthy investment approvals.

The USTR is beginning a review of the implementation of our existing trade agreements, including the enforcement of the labor and environment provisions, the office said in a press release. It is also initiating a process to prioritize trade barriers enumerated in the National Trade Estimate Report and to address the most significant. Additionally, USTR is identifying new cases where market access for U.S. goods and services is in jeopardy because of disregard for the rule of law and is planning to prosecute those cases through multilateral and bilateral dispute resolution.

Monday, March 30, 2009

Who Will Be Obama's Patent Office Pick?

The Obama administration's choice for Patent and Trademark Office director is expected to be announced in April now that the Senate has confirmed Gary Locke, the president's pick for Commerce secretary. If the right person is named to head the PTO, the appointment "may tip the scales to move patent reform legislation from a pending bill to enacted legislation, perhaps as early as this year," Foley & Lardner attorney Hal Wegner said in a Monday e-mail. So who is in the running for the top job at PTO? Sources say the following names are prominently in play:

• Q. Todd Dickinson: Dickinson ran the PTO under former President Bill Clinton and currently heads the American Intellectual Property Law Association. Before joining AIPLA in 2008, he was chief IP counsel for General Electric.
• Jim Pooley: Pooley is a partner in the litigation department of the Palo Alto office of Morrison & Forrester and has practiced in Silicon Valley since 1973. He is immediate past president of the AIPLA and president of the National Inventors Hall of Fame.
• David Kappos: Kappos is vice president and assistant general counsel for IP at IBM. He joined IBM in 1983 as a development engineer. He serves on the board of directors for the Intellectual Property Owners Association and is active in AIPLA.

Shortly after Election Day, CongressDaily pondered Dickinson, Pooley and some other possibilities. They included Eli Lilly general counsel Robert Armitage; 3M IP counsel Gary Griswold; patent attorney Ray Millien; and law professors Mark Lemley of Stanford and Arti Rai of Duke, a classmate of Obama's at Harvard Law School.

Tuesday, March 24, 2009

Feinstein Faces Patent Reform Pressure

More than 100 Golden State companies who have serious concerns about legislation intended to overhaul the U.S. patent system are putting pressure on Sen. Dianne Feinstein, D-Calif., days before the Senate Judiciary Committee is slated to consider the bill. An array of companies including Amgen, Corning, Monsanto and Qualcomm signed the letter sent late last week by the California Healthcare Institute, which represents medical device, biotechnology, diagnostics and pharmaceutical firms. The measure, co-sponsored by Judiciary Chairman Patrick Leahy and Sen. Orrin Hatch, R-Utah, contains controversial language that would change how courts calculate damages in patent lawsuits. The signatories argue that the legislation "fails to account for a number of significant court decisions that have both transformed the patent aw landscape and addressed the supposed failings of the current system."

The companies say they support "balanced and reasonable efforts" to improve patent quality up front by modernizing operations and providing new resources to the Patent and Trademark Office. Major high-tech and media companies, however, believe more aggressive, litigation related changes are needed to keep the United States competitive. The bill is scheduled to be marked up Thursday and Feinstein serves on the committee. During a recent hearing, witnesses expressed interest in revisiting a "gatekeeper" damages provision, which was explored in the 110th Congress by Feinstein and Judiciary ranking member Arlen Specter. The proposal, which would provide courts with clearer requirements on handling evidence of infringement and determining damages, was not included in the current version or in the bill that passed Leahy's panel in July 2007.

Wednesday, March 18, 2009

Locke Confirmation Hearing Round-Up

Commerce Secretary-designate Gary Locke on Wednesday assured the Senate Commerce Committee there will be timely implementation of the transition to digital television and told Republicans that statistical sampling will not be used for apportionment purposes in the 2010 census. His confirmation hearing brought up a range of issues from the monitoring of commercial fishing to cybersecurity. Read more in CongressDaily's PM Edition (subscription required).

Other interesting tidbits:

If confirmed, Locke should pay close attention to challenges currently faced by the Patent and Trademark Office as well as to related bills moving through the House and Senate that could drastically change the patent system, Sen. Sam Brownback, R-Kan., said. "This is such a key issue for further growth of our intellectual property," Brownback said, noting that it is crucial that legislation does not favor one industry over another. "I don't think that's a wise way for us to grow," he said.

Sen. Bill Nelson, D-Fla., raised the impending expiration of the Commerce Department's formal oversight role with respect to the Internet Corporation for Assigned Names and Numbers, the group that Commerce's National Telecommunications and Information Administration has been reviewing ICANN's progress as part of a three-year agreement to extend a contract between them, which expired in September 2006. Nelson said Locke will have to help decide how the U.S. government's relationship with ICANN will evolve.

On the anti-piracy and anti-counterfeiting front, Locke said he has long been focused on intellectual property protections. In response to a statement by Sen. Maria Cantwell, D-Wash., he said bootlegging takes money away from U.S. companies and the nation has to work aggressively to stop the flow of illicit products -- from automobile parts to consumer goods to software.

Wednesday, March 18, 2009

Hatch Makes 'Inequitable Conduct' Defense

Sen. Orrin Hatch, R-Utah, on Wednesday laid out his argument for why legislation he cosponsored with Senate Judiciary Chairman Patrick Leahy should include an "inequitable conduct" provision that would rule patents invalid if owners are not forthcoming to the Patent and Trademark Office. The language was part of a bill that passed Leahy's panel last Congress but was axed from the version they reintroduced this year. "Inequitable conduct reform is core to patent reform, as it dictates how patents are prosecuted years before litigation," Hatch told a symposium on the U.S. Court of Appeals for the Federal Circuit.

The inequitable conduct defense is frequently pled, rarely proven, and always drives up the cost of litigation, he said. If an inequitable conduct claim wins, a valid patent will be held entirely void, and the infringer walks away without any liability, he added. There is "virtually no downside for the infringer to raise this type of attack." Yet Hatch acknowledged the generic drug industry deems the inequitable conduct defense sacrosanct and any attempt to change it will be met with opposition. Once compromise is reached on that issue and on how to calculate damages in a patent lawsuit, "the rest of the bill will fall into place," he said.

With respect to damages, Hatch said specific language like "apportionment, contribution over prior art, or essential features" has been dismissed by many but at last week's Judiciary hearing, Hatch said he heard agreement on a gatekeeper approach where a judge instructs juries on what factors to consider in determining damages and agreement that damages should be based on the economic value of the invention to the infringed product or process. The bill has been listed for a Thursday mark up but will likely be held over. At the event, Hatch also told a joke with the punch line: "But you're a patent attorney, you don't know enough law to hurt anybody." Follow the jump to read it...

Continue reading Hatch Makes 'Inequitable Conduct' Defense.

Wednesday, March 18, 2009

Locke: Prepare For The New Economy

Former Washington Democratic Gov. Gary Locke told the Senate Commerce Committee on Wednesday that he plans to shepherd the Commerce Department through turbulent economic times in the same way that he led Washington state when the high-tech bubble hit. "We pressed forward with a series of smart policy initiatives that set us up for future growth and created incentives to drive economic expansion. And we set a laser focus on attracting and developing the next generation of innovative and emerging industries," he said in prepared remarks. "We came out of that period stronger, healthier, and better prepared to embrace economic change."

Locke said setting a foundation for long-term economic growth and job creation is important and reducing the backlog of patent applications at the Patent and Trademark Office is also a key goal. "We must look over the horizon and prepare for the new economy that will emerge when this recession passes," he told senators. "Simply put, we must re-build, re-tool and re-invent our national strategies for sustained economic success." The Commerce Department, as President Barack Obama has noted, must be able to do multiple things at once, Locke said. "I believe we can."

Tuesday, March 17, 2009

Rockefeller: Commerce Nominee 'Gets It'

After several ill fated attempts at selecting the next Commerce secretary, President Barack Obama has found a candidate who understands what is happening on Main Street and has his "finger on the pulse of what direction America must head toward in generations to come," according to Senate Commerce Chairman John (Jay) Rockefeller. In prepared remarks for Wednesday's confirmation hearing for former Washington Democratic Gov. Gary Locke, Rockefeller said the administration has made "the perfect choice" for the job after previous selections -- Gov. Bill Richardson of New Mexico and Sen. Judd Gregg, R-N.H. -- withdrew their names from consideration.

"The people deserve to know that the person working with Congress and this committee every day, to determine the best way to reboot this economy, is a person who -- simply put -- gets it," Rockefeller said, noting that Commerce secretary is "one very big job." If confirmed by the Senate, Locke will immediately begin to tackle the national transition to digital television; management of the 2010 Census, the allocation of $4.7 billion in broadband funds; engagement on climate change; and amplification of science and technology to increase U.S. competitiveness and innovation, Rockefeller said.

The expansive influence the Commerce Department -- much like the vast jurisdiction of the Senate Commerce Committee -- is surprising, he noted. "The department is charged with promoting job creation, improving living standards by promoting economic growth, increasing competitiveness, issuing patents and trademarks, and helping to set industrial standards," Rockefeller said. "This is no small job. And there will be challenges." But the chairman feels confident that Locke will ensure U.S. workers can prosper, businesses can thrive, and the economy can grow. "We need to move quickly on this nomination because there is important work to be done and not a moment to waste," he said.

Tuesday, March 17, 2009

Spending Bill Funds IP Enforcement

When President Barack Obama approved a $410 billion omnibus spending bill for fiscal year 2009 last week, he made the first two appropriations related to legislation passed by the 110th Congress that is aimed at fighting counterfeiting and piracy. The Prioritizing Resources and Organization for Intellectual Property Act, which former President George W. Bush signed in October, increased both civil and criminal penalties for trademark and copyright infringement and created the yet-to-be-named post of an IP enforcement coordinator at the White House. Specifically, the omnibus included $9.4 million for hiring new FBI agents dedicated to work solely on IP issues, according to the U.S. Chamber of Commerce, which pressed lawmakers to pass the IP measure.

The funding will allow the addition of two agents in each of the field offices containing Computer Hacking and Intellectual Property units, which the Justice Department has determined most merit assistance in IP rights investigations, with no less than 26 agents assigned for this purpose. The money also provides for the creation of an additional and distinct operational unit at FBI headquarters with at least five full-time, permanent agents dedicated to working with DOJ's Computer Crime and Intellectual Property Section on complex, multi-district and international criminal IP cases. Additionally, the omnibus allocates $18 million for state and local grants for "economic, high-tech and cybercrime prevention." While not IP specific, grant requests for IP enforcement would be eligible.

Monday, March 16, 2009

Inventors Hall Of Fame Gets New Home

The National Inventors Hall of Fame Museum, which honors the creators of the telephone, wrinkle-free cotton, the television remote control and hundreds of other innovations, has moved to the Patent and Trademark Office's Alexandria, Va., campus. The hall of fame was founded in 1973 by the PTO and the National Council of Intellectual Property Law Associations and was originally housed at the PTO's old headquarters building. The museum outgrew its location and moved to Akron, Ohio where it opened to the public in 1995 and where it developed additional programs. The Akron building closed last year for construction of the National Inventors Hall of Fame School, Center for Science, Technology, Engineering and Mathematics Learning, which will open this fall. The organization's headquarters will remain in Ohio.

"We are delighted that the National Inventors Hall of Fame has returned to its roots at the United States Patent and Trademark Office," Acting Under Secretary of Commerce for Intellectual Property and Director of the PTO John Doll said. "The journey to induction begins here with a patent, so it is only appropriate that those innovators who have truly transformed our lives should be honored at our headquarters." The musem's opening is being celebrated with a new exhibit, "Inventive Links" -- a show that illustrates the unexpected way in which modern technology is interlinked. The museum also features an interactive kiosk with biographical profiles and information on all 390 inductees.

Thursday, February 26, 2009

Ahead Of Patent Bills, Praise For Locke

Legislation that would make sweeping changes to the U.S. patent system could be unveiled as soon as Tuesday, industry sources told CongressDaily. Congressional aides would not confirm the timing, but the bills are expected to be introduced jointly by House Judiciary Chairman John Conyers and Senate Judiciary Chairman Patrick Leahy. The measures would modify how courts handle patent disputes and would help streamline operations at the Patent and Trademark Office.

Ahead of the bill drop, groups formed by industry stakeholders to try to influence the patent debate said they have high hopes that President Barack Obama's new pick for Commerce secretary -- former Washington Gov. Gary Locke -- will be involved in the issue. On Thursday, the Innovation Alliance, which represents high-tech firms that do not want sweeping changes to the patent regime, lauded Locke's record of "working to help create an environment in the state of Washington that has nurtured the development of many small innovative companies."

The Coalition for Patent Fairness, which has championed Leahy's legislation, said Wednesday that Locke "understands the need to encourage innovation in order to create jobs and grow the U.S. economy" and his work as governor "shows that he understands the need for a strong patent system." The Coalition for 21st Century Patent Reform, which has called for more limited modifications to the system said Locke's leadership "will enhance the ability of the PTO to stimulate the innovation and manufacturing that will be instrumental to our nation¹s economic recovery."

Wednesday, February 18, 2009

ICANN Revises Plan For Web Changes

Amid fears from big brand owners about sweeping changes to the way top-level domains, such as .biz, .info, and .us, are assigned, the Internet Corporation for Assigned Names and Numbers is expected to unveil on Wednesday a revised guidebook for their plan and a 155-page analysis of public comments that is intended to show the effect input from various stakeholders has had. A range of intellectual property stakeholders from Marriott to Verizon are afraid that ICANN's Web address expansion will force them to spend hundreds of millions of dollars to protect their identities from fraud and infringement.

"This won't be the last revision," ICANN Vice President Paul Levins said, noting the extent of this analysis is a first for his organization. "This is literally thousands of voices shaping the next layer of innovation on the Internet and we're documenting it for all to see," he said. Levins said there is more work to be done on trademark issues; security and stability; worries about increases in malicious conduct; and supply and demand examination. ICANN is committed to consulting with all stakeholders -- including the World Intellectual Property Organization -- to craft the right policy, he said. "We're not rushing this. We are listening and acting," he added.

ICANN released a draft proposal in October suggesting that any entity could apply for a domain as long as they could pay a fee of about $190,000. The application process is expected to start this year, with the first of hundreds of new domains potentially coming online late this year. Earlier this month, the Coalition Against Domain Name Abuse and the U.S. Chamber of Commerce hosted closed-door meetings with executives and Capitol Hill staffers to discuss how Congress could get involved in the debate. Read more of CongressDaily's coverage here (subscription required).

Update: ICANN has posted materials here.

Tuesday, February 3, 2009

Gregg's Tech Track Record Has Highs & Lows

Senate Budget Committee ranking member Judd Gregg, who was officially tapped Tuesday to run the Commerce Department, has a reputation for being a fiscal conservative and some technology policy watchers wonder if that mindset will clash with some of President Barack Obama's spending priorities. While Gregg largely cast favorable votes on key technology issues during his tenure on Capitol Hill, he did not support U.S. competitiveness legislation that passed in the 110th Congress, which authorized major funding increases in federal R&D programs.

Throwing billions of dollars at "feel-good initiatives" would not help the country stay competitive, he argued in April 2007. The Senate passed the bill 88-8; the House voted for it 367-57; and former President George W. Bush signed the bill later that summer. Since the measure's enactment, appropriators have not kept pace with its doubling of the National Science Foundation budget and other funding boosts. Sen. Olympia Snowe, R-Maine, issued a statement saying Gregg's fiscal restraint "will certainly be missed in the halls of Congress." For his part, Senate Commerce Committee Chairman John (Jay) Rockefeller called Gregg "a compassionate leader who understands that commerce is the keystone of any of our economic recovery plans."

If confirmed, it is unclear what ideas the New Hampshire senator will bring to the table with respect to the country's upcoming transition to digital television or efforts to increase broadband Internet availability in underserved areas. "He has been supportive of these issues but has never taken a leadership role," said Ralph Hellman, a lobbyist for the Information Technology Industry Council. The Commerce Department oversees the National Telecommunications and Information Administration, which is coordinating the digital TV shift, as well as the National Institutes of Standards and Technology, and the Patent and Trademark Office.

Continue reading Gregg's Tech Track Record Has Highs & Lows.

Monday, February 2, 2009

Sen. Gregg's Tech Track Record

Senate Budget Committee ranking member Judd Gregg , who recently emerged as the top contender for Commerce secretary, has earned high marks for his stance on issues of importance to the tech sector including casting votes for key trade agreements and tax bills. He supported the Central America Free Trade Agreement as well as accords with Australia, Chile, Morrocco and Singapore and backed a permanent federal research and development tax credit. He has been an advocate for high skilled immigration and co-sponsored legislation last Congress that would allocate more visas to immigrants with advanced degrees.

Gregg also supported the high-tech industry on stock options legislation and Internet taxation issues and has voted for overhauls to the nation's securities and class action litigation regimes. He has an 82 percent lifetime vote rating on the Information Technology Industry Council's congressional scorecard, which was created in 1998. On the flip side, Gregg voted against U.S. competitiveness legislation that authorized major monetary increases in federal R&D programs, citing concerns about funding levels. He also voted against some larger omnibus bills that contained tech supported tax language.

While Gregg has not had to vote on controversial legislation that would overhaul the U.S. patent system, he has not indicated he would support the bill in the form that nearly reached the Senate floor last spring. Gregg has, however, been helpful from his position on the Appropriations Commerce-State-Justice Subcommittee to end fee diversion at the Patent and Trademark Office, sources said.

Monday, February 2, 2009

Former PTO Chief Joins Foley & Lardner

Former Patent and Trademark Office Director Jon Dudas has joined the law firm Foley & Lardner as a partner in the Washington, D.C. office, working with the intellectual property and public affairs practices. Dudas was nominated by President Bush in March 2004 and confirmed by the Senate several months later after having served for two years as deputy director. During his tenure at PTO, Dudas managed the day-to-day business of the $2 billion agency and its 9,000-plus employees and was vocal about legislative proposals aimed at overhauling the U.S. patent system.

In a Monday press release, Dudas said Foley was "a natural next step" after having served at PTO because the firm's IP practice earns high marks for litigation and prosecution. In his role as the nation's top patent official, Dudas spearheaded a number of patent cooperation and development missions with the European Union, China, Japan, Korea and other countries and made progress toward "patent work-sharing," which could enhance efficiencies in patent examination at the PTO and achieve better U.S. patent protection abroad. Earlier in his career, Dudas served as counsel to the House Judiciary Subcommittee on Courts and Intellectual Property and was staff director for the House Judiciary Committee.

"Jon brings a unique mix of talent and experience leveraging both his distinguished tenure within the federal government and his experience as a litigator established prior to his government service," Foley IP chief Sharon Barner said. "Foley's global IP practice and its increasing global patent litigation will benefit from Jon's integration with our multinational patent enforcement teams."

Monday, January 26, 2009

WTO Panel Rules On China's IP Regime

A World Trade Organization dispute settlement panel Monday found important aspects of China's intellectual property rights regime to be inconsistent with the country's obligations under a long-standing intellectual property treaty, Acting U.S. Trade Representative Peter Allgeier said. The United States brought claims against China out of concern about shortcomings in the country's legal regime for protecting and enforcing copyrights and trademarks on a range of products.

The WTO panel's ruling is an important victory, he said, because it clarifies key provisions of the IP deal that was negotiated for eight years ending in 1994. Specifically, the panel found that China's denial of copyright protection to works that do not meet its "content review" standards is impermissible. The panel clarified China's obligation to provide for criminal procedures and penalties to be applied to willful trademark counterfeiting and copyright piracy on a commercial scale. Allgeier said USTR will "engage vigorously with China on appropriate corrective actions to ensure that U.S. rights holders obtain the benefits of this decision."

Motion Picture Association of America Chairman Dan Glickman issued a statement saying the WTO decision was "welcome news for creators" but he was disappointed that the panel "did not accept the strength of the U.S. argument that China's thresholds for taking criminal action do not deter rampant piracy." Copyright Alliance Executive Director Patrick Ross also cheered the announcement but said it took too long to conclude. "The Chinese government has been passionate in its words but passive in its deeds when enforcing intellectual property rights," he said.

Monday, January 26, 2009

Tech Group Presses Obama On IP Picks

A trade group that represents Google, Microsoft, Sun Microsystems and other high-tech firms in Washington urged President Barack Obama on Monday to appoint leaders at the Commerce Department and Patent and Trademark Office to who can bring reform and encourage innovation. "We have to recognize that the entire intellectual property system - patents, copyrights and trademarks - is in crisis and loosing credibility," Computer and Communications Industry Association President Ed Black said. "IP policy has been administered with a sort of 'you're with us or against us approach' and you couldn't propose reforms without being pigeonholed as anti-IP," he said, noting that he believes too much IP protection can be as harmful as too little.

CCIA also asked the new administration to designate an undersecretary for intellectual property who can address the broad challenges in innovation policy facing the nation. "We need someone who is a visionary, as well as a manager and a diplomat," Black said. The PTO can be important to making innovation work, but it needs to be connected to broader thinking about innovation and concerned with results, not just churning out patents, he said in a press release. In addition, CCIA has advocated for an independent Institute for Innovation Economics and Patent Policy to provide evidence-based analysis -- a key element to making the system work for all. Obama's picks for Commerce secretary and PTO director have not been unveiled but buzz is building about Symantec CEO John Thompson for a Cabinet post.

Friday, January 16, 2009

Attorneys Ask Obama For PTO Improvements

President-elect Barack Obama should appoint a Patent and Trademark Office director who is a lawyer with patent and trademark experience; is knowledgeable of both domestic and international intellectual property laws; and has management skills sufficient to oversee the operations of the ever-growing agency, the American Bar Association's IP law section said in recommendations sent this week to the transition team. U.S. law contains a similar but less demanding statement of qualifications for the director, the ABA pointed out.

The group said the PTO should be statutorily allowed to keep the fees it collects from applicants and not have that money diverted to other federal projects. While congressional appropriators and the Bush administration have let the office do this in recent years, the change should be codified in law, the ABA said. Another recommendation was to expand the right of the public to submit "prior art" in pending patent applications -- a modification that would ensure an examiner has all the relevant information. The ABA also suggested the PTO take a number of steps to ensure that it retains and recruits a high- quality workforce. Read ABA's full submission here.

Wednesday, January 14, 2009

U.S. Patent Power Slipping, But Still Strong

America's longstanding dominance of new U.S. patents may be slipping but the economic downturn has not stemmed the overall flow of patent activity, according to a compilation of the world's top-ranked U.S.-patent companies released Wednesday from IFI Patent Intelligence. The analysis shows the Patent and Trademark Office issued 157,774 utility patents in 2008, up slightly over 157,284 in 2007.

IBM still tops the list and is ahead by a relatively wide margin but "the scales of patent-quantity supremacy may be shifting away from corporate America in favor of companies overseas, especially to those in Asia," the firm said. IBM set a new all-time record of 4,186 patents, up 33 percent over 2007. Samsung was in second place with 3,515, up 29 percent; followed by Canon at number three, with 2,114. Microsoft ranked fourth with 2,030, up 24 percent over the prior year. Other notable companies include Intel, Broadcom, Cisco, Hon Hai of Taiwan, Fujifilm and LG Philips LCD.

"American companies garnered a minority share of the total number of corporate U.S. patents last year, it's important not to confuse quantity with quality," IFI's Darlene Slaughter said in a press release. "Many of the world's largest companies are placing a higher priority on protecting their intellectual property. Securing patents may be even more important in a down economy, since it gives patent-holders an edge over their competitors." She noted that many of the patents granted in 2008 were applied for in 2005 and 2006, so the economy had little, if any, effect on approvals.

Wednesday, January 7, 2009

PTO Director To Remain Until Jan. 20

Despite rumors swirling in the blogosphere about Patent and Trademark Office Director Jon Dudas leaving the agency before the end of the Bush administration, a spokeswoman for his office says he is staying put until Jan. 20, the day that President-elect Barack Obama takes the reigns. The PTO is, however, having a reception next week where employees will have an opportunity to say goodbye to Dudas.

A notice that went out in the PTO's employee newsletter read:

"Director Dudas will be leaving the USPTO in mid-January. The Office of the Under Secretary and Director is hosting a farewell event from 1 p.m. to 3 p.m. on Monday, January 12, 2009, in the South Madison Auditorium, on the concourse level of the Madison building. It is an opportunity for Director Dudas to thank you for making his time at the USPTO so rewarding. If you would like to say farewell to Director Dudas in person, please feel free to stop by the auditorium on Monday afternoon."

Sunday, January 4, 2009

Richardson Withdraws As Commerce Nominee

Just weeks after being tapped by President-elect Barack Obama to be Commerce Secretary, New Mexico Gov. Bill Richardson has withdrawn his name for the position, citing a pending probe into a company that has done business with his state government. Richardson issued a statement saying the federal grand jury investigation into a firm, which contributed to his political career and won a sizable state contract, "promises to extend for several weeks or, perhaps, even months."

Richardson, who would have led an agency that oversees the National Telecommunications and Information Administration, Patent and Trademark Office, and the National Institute of Standards and Technology, said he and his administration have "acted properly in all matters" and the investigation will bear out that fact. However, he concluded the probe would have forced "an untenable delay in the confirmation process." Obama issued a statement calling Richardson "an outstanding public servant" and said it is was a measure of his willingness to put the nation first that he removed himself from the running. Read more in CongressDaily (subscription required).

Thursday, December 18, 2008

U.S. Chamber To Host PTO Roundtable

The U.S. Chamber of Commerce on Friday will host a conversation with Patent and Trademark Office attaches from around the world who will share their experiences from their respective regions and provide information about best practices in obtaining, protecting and enforcing intellectual property rights outside the United States. Attachés from Brazil, China, Egypt, India, Switzerland, Thailand, and Russia are among those who will offer insight.

At the event, the Chamber's Global Intellectual Property Center will also release its long-awaited report to President-elect Barack Obama's administration on high-priority changes to the PTO. According to a draft report obtained by CongressDaily recently, the Chamber will urge the agency to overhaul the patent examiner production system; make administrative actions timelier; strengthen the PTO's relationship with the user community; enhance organizational management; and permit applicants to defer examination.

A handful of former PTO chiefs offered their own recommendations for PTO changes last week. Read that story here.

Friday, December 12, 2008

Former PTO Heads Press For Backlog Solution

From Friday's CongressDaily AM Edition:

Reducing the Patent and Trademark Office's growing backlog of applications should be one of the highest priorities for the agency in the Obama administration, several former high-level PTO officials agreed Thursday. An array of proposals for streamlining the office have been floated in legislation introduced in recent sessions of Congress and by intellectual property stakeholders, but Gerald Mossinghoff -- who ran the office under the late President Ronald Reagan -- believes none of them will be successful until the estimated 1.2 million applications are reduced.

The PTO has maintained there is a 700,000-application backlog, which does not include applications that are currently being examined. Mossinghoff, who serves as special counsel at Oblon Spivak, called the problem "horrendous" and criticized PTO Director Jon Dudas of setting annual "soft, stair-step goals" rather than projecting where the agency will stand in four and eight years. "They achieve their goals but don't cut into backlog," he said. Read the full story here (subscription required).

Monday, December 8, 2008

Tech Talk For The Obama Administration

On Monday night, Georgetown University's Center for Business and Public Policy hosted a presentation by FCC Commissioner Deborah Taylor Tate, who will discuss "Communications Policy: Issues and Opportunities Facing the Next Administration." This was a swan song of sorts for Taylor Tate, a Republican whose term on the FCC formally expired last year -- and who must leave the commission prior to when the new Congress is sworn in.

On Tuesday, the Center for Democracy and Technology will release a set of transition documents aimed at helping the Obama administration craft a policy agenda across a range of areas -- including security, free speech, consumer privacy, health information technology, copyright protection, and Internet-related issues. The documents, already in the hands of Obama transition team members, are drawn from CDT's "Internet in Transition" project that was developed during the presidential election cycle.

On Thursday, four former officials of the Patent and Trademark Office will discuss that agency's policies and priorities in the Obama administration at a lunchtime forum hosted by the Computing Technology Industry Association. Speakers include Q. Todd Dickinson, Nicholas Godici, Bruce Lehman, and Gerald Mossinghoff.