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by Manny Schecter, IBM Chief Patent Counsel

As the leading recipient of U.S. Patents for 20 consecutive years, we take pride in knowing that over the last 20 years the innovative talents of IBM inventors have generated thousands of original ideas and inventions that will enable fundamental advancements in technology and society. We are also proud because we believe patent leadership comes with a responsibility to continuously strive to improve the patent system, and we have taken many steps with a goal of fulfilling that obligation.

Patent leadership is an important reflection of IBM’s commitment to R&D and innovation. We believe our role as a leader places us in a unique position to help shape the patent system in the U.S. to promote innovation. Of course, this is a task that is never truly finished.

Among the steps we’ve  taken were to unilaterally commit to raise the bar on the technical content of business method patent applications; organize the Peer to Patent project to validate the ability of the public to assist patent examiners in identifying prior art (a capability now codified in the America Invents Act);  promote open innovation by pledging not to assert our patent rights in select areas of societal importance such as open source software, health care, and the environment; and demonstrate how metrics can be used to improve patent system transparency. We have also submitted numerous amicus briefs urging courts to interpret the law so as to best encourage innovation.

These were not actions that promoted our self interest or favored our short term business prospects.  We believed, however, that they were in the long-term interest of the health of the patent system and that what is good for innovation is ultimately also good for IBM.   That is why we continue to strive to optimize the patent system for all constituents.

Today, with many pundits arguing for the elimination of patents relating to software, we are advocating for the need to continue to protect this pervasive platform for innovation, and pointing out the inconsistency of protecting processes implemented mechanically or electrically (but not protecting the same processes implemented using software).

While some may question our motives, we will continue to take actions that we believe aid the patent system in fulfilling its objective of promoting innovation.  We view that as one of the responsibilities of patent leadership.

 

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by Manny Schecter, IBM Chief Patent Counsel

As the patent community attempts to navigate the complex set of rules associated with new proceedings under the America Invents Act that enable challenges to issued USPTO patents, there is a simpler and potentially more effective way to improve patent quality — submitting prior art references as a third party under the pre-issuance submissions provisions. The provisions are designed to improve the third party submissions process to enable higher quality, more efficient patent examination. Yet, key features of these new provisions are often overlooked and, upon closer evaluation, it’s evident that taking advantage of these provisions is a good idea.

Under prior law, a third party could submit a prior art reference to the USPTO, but could not include an explanation of its relevance to a pending patent application without the consent of the applicant. A third party was thus discouraged from making a submission out of fear that a patent examiner would not recognize the significance of a submitted reference to a patent application and issue a patent anyway. The America Invents Act now requires a third party to submit an explanation of the relevance of a prior art reference, thereby improving the likelihood that a patent examiner will recognize how it relates to a patent application to the fullest extent possible. A prior art reference already identified to the USPTO by an applicant may even be a candidate for a submission: for example, it may have been incompletely or inaccurately characterized and submitting it with a statement better characterizing its relevance may help a patent examiner apply it correctly.

In considering whether to make a third party submission of prior art, one must still weigh the opportunity to eliminate or narrow claims of a patent against the risk that a patent will be strengthened because a submitted reference will be “of record.” That is, if the reference is considered by an examiner and recorded in the patent file, but the claims are unaffected, it may be more difficult to bring a successful challenge to those claims based on the same reference after a patent issues, as compared to a reference the examiner never considered. Some organizations opt to withhold references to save them for later use upon assertion of a patent against them. Although a reference may have more value after patent issuance if it had not been previously considered by a patent examiner, submission of a reference during patent application examination allows it to be considered by the patent examiner without having to overcome the “clear and convincing” standard for proving patent invalidity that will apply in court once a patent issues.

Other benefits of a pre-issuance submission are also worth considering. As members of the public and patentees, we all have an interest in improving the efficiency of patent examination. Once applicable prior art references are made available to patent examiners they are apt to perform a better examination not only on the patent application then under examination but with respect to later patent applications relating to the same technical area because the examiners will add the references to their arsenal of applicable prior art. In this way the benefits of active public participation promise to enhance the quality of patent examination generally and not just for a specific patent application for which a reference was submitted. We should also favor getting examination correct at the outset rather than trying to fix a problem later (after patent issuance) when the expense of doing so increases significantly and the burden of proof may be higher. Even if a post-issuance challenge is successful, during the interim the public is needlessly forced to concern itself with a meritless patent.

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by Manny Schecter, IBM Chief Patent Counsel

Am I the only person who noticed that the USPTO opened its first ever satellite office in Detroit on Friday, July 13? Friday the 13th! I am not superstitious. Apparently, neither is USPTO Director David Kappos.

More seriously, much has been written about the Detroit satellite office and the subsequently announced offices to be located in Dallas, Denver, and Silicon Valley. How will the satellite offices improve our patent system?

It will be impossible for the satellite offices to allow for local examination of all patent applications filed by all local inventors. Consider that many inventors collaborate with other inventors located around the world. In addition, as the size of the patent application pipeline varies over time, it may be asking too much of the USPTO to employ precisely the number of patent examiners in precisely the appropriate mix of technologies at a satellite office servicing the local community.

The satellite offices will enable the USPTO to provide community education and outreach. The public may gain access to USPTO resources such as search tools and facilities for communicating with the remainder of the USPTO and patent examiners may gain access to local industry information. And, naturally, the satellite offices will provide local jobs.

The most important benefit of the satellite offices is access to talent. IBM has research labs around the globe for the same reason – to attract and employ world-class scientists. The USPTO has a deep bench in Virginia, but certainly there are a wealth of talented people unwilling to live in the Washington, DC metro area. Improving the patent examiner talent pool will surely improve the quality and efficiency of patent examination. For this reason, the successful implementation of USPTO satellite offices is both a USPTO and US patent system imperative.

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Last September, years of effort by the patent community led to passage of the America Invents Act (AIA). The AIA’s sweeping reforms include significant changes to patent office practice, new definitions of prior art, and fee-setting authority for the U.S. Patent and Trademark Office (USPTO). These reforms have the potential to enhance and transform USPTO operations and, in turn, improve the patenting experience for inventors.

While the USPTO and the public are currently tackling a daunting array of rules packages to implement the AIA, the USPTO’s proposed fees have come under attack — from within the patent community. It is disappointing that users of the patent system would oppose the USPTO’s authority to recover its costs, yet nevertheless expect the patent office to fulfill its expanded responsibilities under the AIA .

There is no dispute that the USPTO should have sufficient funding to operate efficiently and effectively. During the years of wrangling over more controversial elements of the AIA, the vast majority of stakeholders agreed that USPTO fee diversion should be prevented. The AIA doesn’t go that far, but it does give the USPTO the power to set fees, a power that was also widely supported (particularly if the USPTO could keep those fees). The USPTO also succeeded in obtaining an appropriation from Congress sufficient to recover its fees, so it seems that for this fiscal year at least, the stars have aligned.

Under the AIA, the USPTO is required to set fees to recover aggregate costs. In an initial fee proposal, the USPTO did just this, with some adjustments designed to encourage certain activities such as filing new patent applications. While some have raised concerns over whether the method for calculating costs or the value proposed for the USPTO reserve fund is optimal, few dispute the USPTO’s goals in establishing them, i.e. to effectively and efficiently examine patent applications and review issued patents.

The USPTO has already put in place a number of procedures required by the AIA, such as accelerated examination and the new threshold for granting inter partes reexamination. In the upcoming months, the USPTO will begin to conduct an array of new post-issuance proceedings. Just as the patent community should have the opportunity to provide input on how these new procedures and proceedings work, we also need to work with the USPTO on how much they should cost. Sufficient funding at the right stages of the patent process is a requirement for a well-functioning patent system.

Members of the public should be encouraged to share views regarding specific fees proposed by the USPTO as part of the overall framework for the USPTO to recover its costs. As this process moves forward, the USPTO is expected to publish a final proposed fee schedule in June so the public can submit comments directly to the USPTO. By doing so, those with concerns about the fees should constructively engage in the fee setting process to help the USPTO help itself. But we shouldn’t expect the USPTO to get the job done without the fees.

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By Manny W. Schecter

Chief Patent Counsel, IBM Corporation

The recently-released tally of US Patents awarded in 2011 gives those who are concerned about America’s global competitiveness plenty to think about. Only two US companies, IBM at No. 1 and Microsoft at No. 6, appear on the top 10 list. Hewlett-Packard and Intel have dropped off. The rest of the companies in the top 10 are headquartered in Asia.

This news reminds us that we live in a highly competitive, global economy and it is vital that we remain vigilant about preserving and fostering an environment for US companies to innovate. That includes strengthening science, technology, engineering, and math curricula at all levels, investing in fundamental scientific research, making it easier for entrepreneurs to launch and grow their companies, and strengthening our patent system.

There is another message hidden in the rankings. The results show that the United States is a magnet for global innovation. Why do foreign companies apply for so many patents here? Simple: The US has balanced intellectual property laws, a fair patent system and a strong rule of law that protects the creative work of inventors.

The recently-enacted America Invents Act (AIA) is the most significant reform to the patent system in 60 years.  The AIA improves the fairness of the system and the quality of patents by giving third parties the opportunity to submit information related to a pending application for consideration by the patent examiner and by expanding the ability to challenge existing patents. These reforms will help ensure that patents are issued  and enforced only for inventions that are truly novel and deserving of a patent. The Act also harmonizes US patent law with those of other major countries by switching to a first-inventor-to-file system from a first-to invent system. This is important for businesses that must operate in an increasingly global economy and will help speed examination by promoting work sharing between patent offices.

On the judicial front, America’s court system provides patent holders ample opportunities to enforce their patent rights while at the same time providing fairness and balance in the remedies applied. The US Supreme Court decision in eBay Inc. v. MercExchange LLC established firm guidance for the lower courts: the balance of hardships between plaintiff and the defendant—and the public interest—must be considered before issuing an injunction preventing the sale of products. In cases where the plaintiff does not use the patented invention in products, lower courts’ application of eBay has resulted in fewer injunctions.  As the Federal Trade Commission indicated in its recent Evolving IP Marketplace report, the eBay decision allows courts a more nuanced analysis that recognizes injunctions may in some situations unnecessarily raise costs and deter innovation.

Reform isn’t a one-time act. It must be continuous in response to changing circumstances. So we applaud US PTO Director David Kappos’s vow to produce what he calls a “National IP Strategy” this year. He aims to outline the Obama administration’s key IP priorities, its plan to improve patent protection for small businesses and efforts to increase engagement with China on issues of IP enforcement.

It’s a remarkable time for innovation globally. Think of IBM’s Watson data management and analytics technology, Samsung’s advances in flat-screen TVs, Apple’s iPad, and Facebook’s social media. The future will be bright, too, and the United States will continue to be a locus for innovation, if American companies and foreign firms alike get world-class protections for their inventions and fairness in resolving competing claims. Government and industries must continue to work together to preserve and strengthen U.S. innovation.

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IBM congratulates the U.S. Senate and House of Representatives for reaching a consensus on patent reform legislation today. This landmark action is an important step toward preserving American innovation leadership and stimulating economic growth.

As the leading recipient of U.S. patents for the past 18 years, IBM has supported patent reform since the moment the legislation was first introduced over five years ago. An efficient and effective patent system is vital to the American inventors and innovators who help fuel our nation’s competitiveness in the global economy.

The America Invents Act, which will become law when it is signed by President Obama, marks the most extensive and important update to the U.S patent system in nearly 60 years. This legislation balances the needs of patent system participants and will enhance the quality of patents issued by the USPTO.

Following years of deliberation and revisions, our elected officials have produced balanced, common-sense legislation that will lead to significant improvements to our patent system, which has not kept pace with dramatic changes in technology and innovation over the last half century. The patent bill is poised to usher in a variety of changes that will improve the patent system, such as:

  • Expanding rights for third parties to submit information related to published applications to a patent examiner, and establishing a post-grant review process, which will improve the quality of issued patents.
  • Increasing U.S. competitiveness by transitioning to a more objective first-inventor-to-file system, which is used throughout the rest of the world.
  • Providing fee setting authority to the USPTO, which will give it the ability to implement the new programs, address the backlog in patent applications, etc.

This patent legislation, together with the recent court decisions, puts the US patent system in a much better position to spur innovation in the 21st century.

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The U.S. House of Representatives today approved The America Invents Act, which will enhance the U.S. patent system, strengthen American competitiveness, and help generate job growth. IBM asserted its support for the House passage and urged quick adoption of the legislation.

The patent reform legislation, H.R. 1249, passed in a 304 to 117 vote.

President Obama has said he will sign the legislation into law, which will mark the most significant update to the U.S. patent system in almost 60 years.

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House Judiciary Committee Chairman, Lamar Smith, today announced a compromise on the “fee diversion” provision of The America Invents Act (H.R. 1249).

IBM supports the compromise and encourages the House of Representatives to act swiftly and approve H.R. 1249.

“We are very pleased that Chairman Lamar Smith and his colleagues today have achieved a reasonable compromise on the fee diversion provision, clearing the path for House floor consideration of the America Invents Act.  As the leading recipient of U.S. patents for 18 consecutive years, IBM strongly supports the legislation and urges speedy passage on the House floor,” said Christopher A. Padilla, vice president of Government Programs for IBM.

For the past 18 years, IBM has been the leading recipient of U.S. patents and is the largest user of the U.S. Patent Office.


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In an op-ed running on The Hill.com, IBM Senior Vice President and Director of Research, Dr. John E. Kelly III, calls for the U.S. House of Representatives to vote in support of the America Invents Act (H.R. 1249) patent reform legislation which will stimulate U.S. innovation, economic competitiveness and jobs.

Dr. Kelly’s op-ed, asserts that H.R. 1249 is important legislation that will facilitate improvements to the U.S. patent system, while balancing the needs of inventors of all sizes in all industries.

As the leading recipient of U.S. patents for 18 consecutive years, IBM understands and appreciates the importance of strong intellectual property laws, and encourages swift passage of H.R. 1249.

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IBM congratulates House Judiciary Committee Chairman Lamar Smith and the Committee for overwhelmingly approving the America Invents Act, H.R. 1249, by a vote of 32-3.

IBM strongly supports H.R. 1249 and urges the House to act quickly to pass this patent reform legislation. H.R. 1249 is important legislation that will create a contemporary patent system, spur innovation and create jobs. In addition, this legislation balances the needs of inventors of all sizes in all industries and will enable essential and significant improvements to the operation of our nation’s patent system. This common-sense set of reforms will update patent laws to keep pace with the cutting edge of innovation and will significantly enhance patent quality.

It is crucial that the House enact H.R. 1249 now to preserve American innovation leadership and spur economic growth.

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