Posts Tagged ‘patent reform’

by Manny Schecter
IBM Chief Patent Counsel

IBM congratulates the White House and the US Patent & Trademark Office (USPTO) for recently announced Executive Actions relating to crowdsourcing prior art and more ro-bust technical training and expertise for patent examiners. IBM supports these initiatives to improve patent examination quality.

As members of the public and patentees, we all should have an interest in improving patent examination, and thus patent quality. We should favor correct examination at the outset rather than trying to address a wrongly granted patent after issuance – when both the burden of proving invalidity and the cost of doing so are higher and the public has already expended considerable resources avoiding infringement.

For 21 consecutive years, IBM has been the leading recipient of US patents and, through-out this period, we have consistently supported efforts to advance and enable robust pat-ent examination. We organized the Peer to Patent pilot project, in conjunction with New York Law School and the USPTO that demonstrated the feasibility of crowdsourcing prior art, and was particularly effective at identifying non-patent technical literature. We promoted the third-party submission of prior art provisions of the America Invents Act to enable the benefits of crowdsourcing prior art to become part of the examination process for all patents. In addition, we have for several decades published technical journals and documentation — including the IBM Technical Disclosure Bulletin — that are among the non-patent technical literature most widely cited by patent examiners during patent ex-amination. Finally, we have long cooperated with the USPTO in providing technical education for patent examiners and we will continue to do so.

The patent system benefits us all by promoting innovation. We call on other users of the patent system to join IBM in supporting and assisting the USPTO in enhancing the qual-ity of patent examination.

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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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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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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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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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