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Patent System Reform(s)

Patent System Reform(s). 2007 EDUCAUSE Policy Conference May 16, 2007 E.R. Kazenske Microsoft Corporation. Why “Reform” may have an “s”. Legislation Rule Making Operational Judicial. Microsoft Position on Patent Reform(s). Ensure the quality of patents and the patent system

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Patent System Reform(s)

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  1. Patent System Reform(s) 2007 EDUCAUSE Policy Conference May 16, 2007 E.R. Kazenske Microsoft Corporation

  2. Why “Reform” may have an “s” • Legislation • Rule Making • Operational • Judicial

  3. Microsoft Position on Patent Reform(s) • Ensure the quality of patents and the patent system • Minimize abusive litigation • Promote international harmonization • Improve accessibility to the patent system for all innovators

  4. Bicameral, Bipartisan Legislation • H.R. 1908 and S. 1145 (PTO/Prosecution) • First-inventor-to-file • Grace period • All applications published at 18-months • Assignee filing & inventor oath requirement • Third party prior art submissions with comments • PTO Expanded Rulemaking Authority • Inter parte Re-exam expansion • Post-Grant Review Procedures • “Second-window”

  5. Bicameral, Bipartisan Legislation • H.R. 1908 and S. 1145 (Litigation) • Expansion of Prior User Right • Apportionment of damages • Willful Infringement • Venue

  6. Past Legislation Issues • NOT in H.R. 1908 or S. 1145 • Eliminating Best Mode Requirement • 271(f) Repeal • Inequitable Conduct

  7. USPTO Proposed Rule Changes • USPTO Stated Objective • Focused Examination • Operational Efficiency • Improved Quality of Issued Patents

  8. Rule Changes • Limit number of claims examined • 180 comments received • Final package at OMB • Limit number of continuations • 330 comments received • Final package at OMB • New Accelerated Examination Procedure • Effective August 25, 2006 • Information Disclosure Statement (IDS) • 55 comments received • Remains under consideration

  9. USPTO Patent Peer Review Project • Connecting the Scientific/Legal Community to the Patent Examination Process • Goal: Improve the quality of issued patents by giving the examiner access to better information/prior art • An open network designed to bring the best prior art information to the forefront • Manageable for the examiner • Relevant to the community • Final decisions made by the USPTO on the basis of statutory standards

  10. Project Development • U.S. Patent and Trademark Office • New York Law School Academic Advisors and Project Team • Steering Committee/Sponsors • Advisory Board • http://dotank.nyls.edu/communitypatent

  11. The Pilot • Summer 2007 • USPTO Technology 2100 (Computer Architecture and Software) • 250 applications with participant consent over 1 year timeframe • Participants to date: CA, GE, HP, IBM, Intellectual Ventures, Microsoft, RedHat • Project Lead: NY Law School with the USPTO

  12. How will it work

  13. Concentrating on the Claims • The software is designed to focus attention on the claims • Designs, directions, and tutorials focus on this goal • With the found prior art, assess relevance to the claims

  14. Evaluation • What is the level of expertise of those participating • What is the impact on examiner decision-making • Is there an impact on patent quality • Is there an impact on pendency or examiner productivity • Is there gaming with the system

  15. Judicial Focus Today • Supreme Court • eBay v. MercExchange (injunctive relief) • Microsoft v. AT&T (271(f)) • KSR v. Teleflex (non-obviousness) • CAFC • In re Kahn (non-obviousness) • In re Nuijten (pat. eligible subject matter)

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