James Pooley is a U.S. patent attorney with over 35 years’ experience as a successful Silicon Valley trial lawyer. Most recently, however, Pooley spent 5 years in Geneva, Switzerland as a diplomat and manager of the international patent system. In his capacity as Deputy Director General of the World Intellectual Property Organization, Pooley was responsible for management of the Patent Cooperation Treaty (PCT), managing staff from 60 countries and working with the governments and NGOs in every region of the world.
I caught up with Pooley on January 22, 2015. In our wide-ranging discussion, we talked about his time at WIPO, harmonization, the need for a true international grace period, the European financial crisis and the likelihood that Congress will take up federal trade secret legislation in 2015. To read the complete 3-part interview, please visit IPWatchdog.com. What follows are some of the highlights of our discussion.
Pooley on harmonization and the need for an international grace period:
The actual changes that we might have to accept in a truly globalized, harmonized system are not going to be that difficult for us. The real difficulty is getting everybody to agree on one set of best practices. That, it turns out, is a political road that is just as difficult now as it ever has been. But the goal is clear, the goal is compelling and I think all of us need to work as hard as we can to push things in that direction. First of all, we’ve got to get the industrialized countries to agree on a single approach, or at least an understood and aligned approach, to a grace period. Once that happens I think the other issues that we have to deal with will fall into place. We have to keep in mind that while the politicians or diplomats argue with one another, we have sitting on the sidelines all of our clients who are cheering for harmonization. They want to see this happen. And at the end of the day, politicians need to recognize it’s the users of the patent system that own it and we need to make sure that they get the system that they deserve.
Our discussion relating to whether the European financial crisis and Euro troubles will create more headwinds for a unitary patent and a truly unified European patent system:
QUINN: I suspect that if the common currency had been a success, then I think there would probably be a larger appetite for taking other steps that would unify Europe, at least in certain ways. With the common currency not being a success, I wonder how that’s going to play out with the unitary patent for example. It seems from where I’m standing that it’s a little bit of a fragile endeavor and people in European countries are having to some extent a bit of buyer’s remorse.
POOLEY: Yes, I think you’re right. If everything had gone swimmingly with the common currency and Europe was just moving as they say here towards ever closer union, and they weren’t experiencing the problems and the resentments that now exist among some of the countries, I think it would be better, it would be easier for them to do a whole lot of things, the unitary patent included. As it is, yes, I imagine that the current environment is creating a lot of suspicion and making agreement on many, many issues more difficult than it would be otherwise.
Our discussion on the likelihood that Congress will again take up federal trade secret legislation:
QUINN: Now I’ve heard some rumblings that there may be some federal trade secret legislation that will move during the next congress. Have you heard anything about that?
POOLEY: Yes, and of course there was a lot of action on this in the last Congress. And you know, it’s interesting that when the Economic Espionage Act was first introduced in 1996 it moved very quickly through Congress. There were people at the time that said, well, why don’t we just make this both a criminal and civil statute and provide another tool. And I remember at the time people saying, well, you know that adding a civil claim would be too heavy a political lift because we will run into opposition from the federal judges who don’t want to take on extra issues as part of their original jurisdiction. I don’t think that’s the problem anymore. There is a group of law professors that have expressed some opposition to the proposal to add a civil remedy, in spite of widespread support among industry stakeholders. There was some controversy around some seizure provisions that were suggested in one version of the legislation. And I think those discussions will usefully inform what will be done in this Congress. But I believe there is a great deal of support for making that basic change to allow companies to have another—not a displacement, not preemptive of state law, but an additional place to go to get the benefit of nationwide service of process and other special advantages of being in federal court.
Pooley on what lies ahead for his return to the private sector:
QUINN: Where do you see your practice going forward from here?
POOLEY: Well, thanks for asking, Gene. I have three things that I’m very interested in doing and where I think my experience can give me some special perspective. One of those you’ve mentioned, which is formulating international IP strategies particularly when it comes to the patent/trade secret interface, something that’s much more dynamic now than it has been in the past. And so I’m looking forward to working with clients to help formulate and reexamine those strategies.
The second area relates specifically to trade secrets, for all the reasons we’ve already talked about. Information security is the issue. How do you handle this very important but vulnerable asset in a globalized market with fractured supply chains? So I hope to be working with some companies to help examine and design their information protection systems, particularly in cyber security where the risks are so great and constantly changing.
And then the third area relates to my experience as a litigator and my interest in dispute resolution. So I can see myself helping with pre-litigation investigations and analysis, review of ongoing litigation, co-counseling as a specialist in patent and trade secret cases, and acting as an ADR neutral or special master.
Recently, the United States Patent and Trademark Office released several patent eligible subject matter examples, which together with the recently released patent eligibility guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all-important area.
To recap, in December 2014, the USPTO released Interim Eligibility Guidance, which provided information about how the Office interprets 35 U.S.C. 101 in light of recent Supreme Court decisions. This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).
Jeff Kichaven (pictured left) is one of California’s leading mediators. I met Kichaven several months ago while I was in Newport Beach, California, to speak at the Orange County Bar Association. At the conclusion of our breakfast meeting I asked if he would be interested in an on the record conversation for publication. He agreed. What follows are except from our conversation, which took place on Monday, December 22, 2014. To read the full transcript of the interview please see Working toward settlement wherever possible.
Here is our dialogue on the reality that in most circumstances neither party really wants a court to make a decision and would be better off reaching a negotiated resolution.
QUINN: … And my experience usually when the judge or the jury makes the decision neither party is happy.
KICHAVEN: That’s true. So many times it has cost so much, taken so long and been so grueling along the way, that even the winner questions whether it was worth it.
KICHAVEN: It’s especially true in intellectual property cases because when people get too involved in litigation focusing on the past and perhaps lose their focus on the marketplace, new competitors can come in and beat them in the marketplace. So it’s important, particularly for technology companies in fast moving industries, to keep their eyes focused on the future and competing in the marketplace rather than focused on the past and competing in the courtroom, other than in a small number of cases where that focus really is absolutely necessary.
A review of Hewlett-Packard’s recently issued patents show a variety of technologies related to cloud computing, including one system that enables those purchasing cloud services to find the most cost-effective option suited to their needs. Another patent protects a method for establishing perceived eye contact among participants of a video conference. Also intriguing is a mechanism for clearing dust from an electronic display screen using ionized air.
Recently I had the opportunity to interview Efrat Kasznik (pictured left), who is President of Foresight Valuation Group. Kasznik specializes in performing valuations of intangible assets for financial reporting, tax compliance, transfer pricing, litigation damages and business liquidations. She is also starting to work with start-up companies at earlier stages in order to help them develop a strong IP portfolio and to prevent them from making mistakes that later cannot be fixed.
What follows are the highlights of my long form interview, which took place on Tuesday, December 23, 2014, and was published on IPWatchdog.com on January 7, 2015.
I spent some time discussing whether investors should seek patent protection or whether they should freely share their ideas, which is what some VCs actually recommend.