u.s. patent reform for fast-moving technology washington internships for students of engineering...
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U.S. PATENT REFORM FOR FAST-MOVING TECHNOLOGY
Washington Internships for Students of Engineering
August 4, 2011
Sponsored by IEEE-USA
Jolene L. WangYale University
OUTLINE
Introduction
Background Information
Key Concerns & Issues
Suggested Proposals
Current Legislation
Policy Recommendations
Questions
Acknowledgements
INTRODUCTION
Technological innovation – 75% of U.S. growth rate
Intellectual property – 40% of economic growth
Role of patents
innovation
economic growth
international competitiveness
BACKGROUND
Intellectual Property Matters
Type of IP Rights Covered
Copyrightoriginal works of authorship fixed in a tangible medium
of expression
Patentthe exclusion of others from making, using, offering for sale, or selling as invention
Trademark
the use of a word, phrase, symbol or design that identifies a particular
product, brand or service
Trade Secretprivacy of any form of
information that is to be maintained as confidential
PATENT HISTORY
“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.”
U.S. Constitution Article 1, Section 8,
Clause 8
“Whoever invents or discovers any new and useful process, machines, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent…”
United States Code, Title 35, Section 101
FAST-MOVING TECHNOLOGY
Product life cycles of less than 36 months
High-tech companies: IBM, Microsoft, Intel
Most common types of fast-moving
technologies: Hardware Software
Diamond v. Diehr (1981) Business Methods
State Street v. Signature Financial Group (1998) “automated financial or management data processing
methods”
KEY CONCERNS
Rise in fast-moving technology patents Increase in lawsuits and litigation costs
http://snapvoip.blogspot.com/2011/06/software-patents-and-associated-legal.html
http://en.wikipedia.org/wiki/File:Growth_in_Business_Method_Patents.jpg
KEY ISSUES
U.S. Patent & Trademark Office
Funding and diversion of user fees
more than $875 million in redirected fees
Shortage of experienced patent examiners
1/3 with less than 3 years experience
Length of pendency
average 36 months
Growing backlog
KEY ISSUES
IT Industry & Market Defensive patenting and patent thickets High litigation costs and market entry barriers
SUGGESTED PROPOSALS
Software Copyrights
Deferred Examination
Multi-tiered Patent System
Multi-track Examination
DEFERRED EXAMINATION
• administrative inefficiencies
• insufficient prior art
• patent standards
MULTI-TIERED PATENT SYSTEM
• administrative costs
• excessive filings
• increase backlog
CURRENT LEGISLATION
USPTO “Three-Track” Patent Program
Track One – prioritized examination within
12 months for $4000 fee
America Invents Act 2011
S. 23 & H.R. 1249
4th attempt at sweeping patent reform
POLICY RECOMMENDATIONS
Internal Reforms
Prior Art Reconstruction
Institutional Modifications
External Reforms
End Diversion of Fees
Open Post-Grant Review
IMPROVE PRIOR ART DATABASES
Establishing a supplemental repository of non-patent prior art
more complete prior art collection
IMPROVE CLEARANCE SEARCH
Implementing external task force and search specialist groups
Encouraging greater uniformity in language and claim terminology
enhanced search capabilities
CREATE OPEN POST-GRANT REVIEW
Congress should advise the USPTO to establish a post-grant review that allows challenges
based on any grounds of patentability
within a certain number of months of patent issuance
S. 23 (9 months)
H.R. 1249 (12 months)
END DIVERSION OF FEES
Congress should increase the appropriations of funds to the USPTO through the discontinuation of fee diversion Increase examiner retention rate
Decrease growing backlog
Improve quality of patents
Promote innovation
Stimulate economy
QUESTIONS
?
ACKNOWLEDGEMENTS