An interview with Microsoft’s Chief Patent Counsel

Micky Minhas (pictured left) is Chief Patent Counsel for Microsoft Corporation. He is also someone that I have known for more than 20 years. Like me, Minhas is a graduate of Franklin Pierce Law Center (now part of the University of New Hampshire). What follows are excerpts from my interview with Minhas, which took place on February 20, 2015. You can read the entire interview here.

Minhas on the current state of the law and why Microsoft has adopted the European technical standard as a safe harbor approach to drafting software patent applications:

MINHAS: I think we’re in a period of uncertainty where many participants in the field are wondering where that line on subject-matter eligibility is. I view this debate as a pendulum that had State Street on one end and now it is swinging or has already swung back to the other side with Alice. That depends on how you interpret and if you see any cohesion among all the cases that we’ve seen. So I think the patent practitioner community is in a somewhat uncertain place with respect to U.S. law. In terms of our patent cases – they have been written to satisfy various standards of patentability. A few years ago we ramped up our foreign filings and recognized that we’re writing this one document, this one patent application, for so many different audiences. We started settling in on the European technical standard as a guide for how to draft, how to cover the innovation from that vantage point, in order to try to write this document that would satisfy the USPTO as well as the EPO, Chinese Patent Office, the Japanese Patent Office, and so on. So for me, what this environment means as a practitioner has more to do with how the patent is drafted and how we capture the innovation, and not really a huge difference about what the underlying innovation is or how it’s implemented.

(more…)

On the record with former WIPO Deputy Director Jim Pooley

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.

(more…)

On the Record with Sherry Knowles

I recently had an opportunity to speak with Sherry Knowles (pictured left) on the record. Most in the patent community are familiar with Knowles as the former Senior Vice-President of GlaxoSmithKline who took on the United States Patent and Trademark Office during the claims and continuations fight back in 2007 and 2008.

In 2008, Managing IP magazine named Knowles one of the top 10 most influential people in Intellectual Property, and  in 2010, the New Jersey Intellectual Property Lawyers Association awarded her the Jefferson Medal for exceptional contribution to Intellectual Property. In November 2011, Intellectual Asset Management magazine listed Knowles among the top 50 individuals, companies and institutions that shaped the IP marketplace over the preceding eight years.

Knowles left GSK several years ago and is now the head of her own strategic patent consulting firm. I caught up with her for a telephone interview on November 20, 2014. What appears below are several of the highlights of our conversation.

(more…)