The America Invents Act (AIA) ushered in a new era for patent law and procedure at the United States Patent and Trademark Office. Among the changes that took effect were the much-debated shift away from the first-to-invent standard and to a first-to-file standard that is far more consistent with the rest of the world, although not identical.
Philosophically, the shift to a first-to-file system represents a major shift, but in truth, the U.S. had a de facto first-to-file system already. It had been years since a small entity (i.e., a company with 500 or fewer employees) had been able to prevail by demonstrating that they invented before another party filed a patent application. For the most part, much of the focus on first-to-file has done nothing more than divert attention from the most significant change from the patent owners perspective….
There is little doubt that the largest change ushered in by the AIA was the creation of administrative patent trials, namely Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review.
Recently, IPWatchdog.com has published a series of articles relating to Mark Cuban’s activities and views relative to the patent system. (See here, here and here.) Cuban is no stranger to the patent policy debate, and has gone on the record numerous times explaining that he thinks software patents should be abolished. In fact, he famously donated $250,000 to the Electronic Frontier Foundation for the creation of the Mark Cuban Chair to Eliminate Stupid Patents.
In the comments to the aforementioned articles, Mark Cuban engaged in a spirited back and forth with readers, and with me. I invited him to do an interview with me. He agreed and we conducted an e-mail interview. To read the full interview, please see A patent conversation with Mark Cuban.
The United States Patent and Trademark Office (USPTO) recently published a short Federal Register notice titled Change in Practice Regarding Correction of Foreign Priority Claims.
The USPTO has required that any correction of the application number in a domestic benefit claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed benefit claim. Notwithstanding, the USPTO has not historically required a petition with respect to the correction to a foreign priority claim after the time period for filing a priority or benefit claim. This dissimilar treatment of the correction of foreign priority claims and domestic benefit claims results in the publication of a corrected patent application publication reflecting the accurate domestic benefit claim information whenever an applicant corrects the application number in a domestic benefit claim in a pending application, but not whenever an applicant corrects the application number of the foreign application in a foreign priority claim.
On Wednesday, October 7, 2015, I moderated a live Google Hangout with U.S. Senator Chris Coons (D-DE) and Congressman Thomas Massie (R-KY). The conversation took place in Senator Coons’ office in the Russell Senate Office Building in Washington, DC. Our conversation, hosted by the Innovation Alliance’s save the inventor campaign, focused on the major pending patent reform bills – the Innovation Act (H.R. 9) in the House of Representatives and the PATENT Act (S. 1137) in the Senate.
The first question I posed to Senator Coons and Congressman Massie was a broad-based, philosophical question. Unlike with virtually all other issues, patent reform is not a partisan political issue. Allegiance does not break down along party lines, but rather seems to depend philosophically on whether the individual believes patents promote innovation or whether patents hinder the progress of innovation. To start, I asked that simple question. Do patents promote or hinder innovation?
Senator Coons, who is a believer in s strong patent system, didn’t directly answer the question presented, although he did acknowledge that the question is “whether or not you think patents are essential and being able to defend those patents are essential to the vibrancy of our innovation system.” While he did not specifically say that he thinks patents are essential in this exchange, Senator Coons is on record with such views in many different forums. He is also the author and primary sponsor of the STRONG Patents Act, which presents an alternative patent reform that is widely recognized as being pro-patent and pro-innovator.
Coons, who spoke without notes and in a way that demonstrates a deep understanding of the issues, continually reiterated the need for patents to be defendable in court. He said, for instance:
Common across the advocates for a strong patent system in the House and the Senate is a profound belief that this constitutionally created and vital property right has to be defensible…that patent litigation has to remain capable of defending unique inventions, thus the Save the Inventor campaign. And those who are advancing the bills both in the House and the Senate that would change the patent litigation system are gravely concerned about what they view as so-called patent trolls and in the only hearing that we had in the Senate Judiciary Committee to discuss the bill in the current Congress, they really focused in on abusive patent litigation practices that do exist and that are a problem, but that I think can be dealt with more narrowly in a more focused and targeted way that just deals with abusive litigation practices…
On the issue of whether patents promote innovation, Congressman Massie’s response was hardly surprising to anyone familiar with the patent debate and Massie’s history. Massie is an inventor and one of only a few members of Congress to be a patent owner. He comes by his deeply rooted opinions out of experiences as an inventor and struggling entrepreneur. He said:
Well, you don’t have to believe or not believe, right? We’ve got 250 years of history in this country of innovation and we have the most innovation because we have the strongest patent system. The deal that our founding fathers gave us that was different from all the European models was what you create you own. And the charge that our Founding Fathers gave us in Congress was to promote the useful arts and sciences by granting for a limited period of time the exclusive use of an inventor’s works. So what we have to do is to decide, within that charter, how do you promote useful arts and sciences, and for what period of time? There are some people that believe that zero period of time is the correct period of time. That does not work.
Massie would then pivot to explain his own story, which is a very familiar story of an inventor starting from nothing to create a business built on the back of patented technology. Massie explained:
I’m not a lawyer, I’m an engineer. I went to MIT and I studied electrical and mechanical engineering because I love creating and right there in the laboratory and in the labs next to me people were inventing stuff all of the time and the great thing about being there in that hotbed at MIT is everybody wanted to start a company and the way you started a company was you had to go get capital and nobody was going to invest unless you had some intellectual property. So my startup that I spun out of MIT, my wife and I…we started right there in a married student housing dormitory…was licensed from MIT, from the Technology Licensing Office. Then, we went out and got venture capital and they believed in us and they knew we had a chance, but we had this limited period of time to get a return on that investment before the invention became public domain. That’s the great thing about patents. The deal you make with society is I’m going to tell you everything about how to copy this idea, and when my exclusivity lapses, everybody in the world can have it.
Recently, the United States Court of Appeals for the Federal Circuit issued another in the long list of judicial decisions in the ongoing patent saga between Apple and Samsung. See Apple v. Samsung Electronics (Fed. Cir. Sept. 17, 2015).
This latest appeal arises from a suit filed by Apple against Samsung in February 2012 alleging infringement of five patents directed to smartphone and tablet interfaces. The district court held on summary judgment that Samsung infringed U.S. Patent No. 8,074,172. The case proceeded to trial, and a jury found that nine Samsung products infringed one or both of Apple’s U.S. Patent Nos. 5,946,647 and 8,046,721. The jury awarded Apple a total of $119,625,000 for Samsung’s infringement of the three patents.
Following the verdict, Apple filed a motion seeking a permanent injunction that would bar Samsung from making, using, selling, developing, advertising, or importing into the United States software or code capable of implementing the infringing features in its products. Apple did not seek to enjoin Samsung’s infringing smartphones and tablets, but only the infringing features. Moreover, Apple’s proposed injunction included a 30-day “sunset period” that would stay enforcement of the injunction until 30 days after it was entered by the district court, during which time Samsung could design around the infringing features. This “sunset period” coincided with Samsung’s representations at trial that it could remove the infringing features from its products quickly and easily.