Patently-O Bits and Bytes

Next PTO Directors: The PTO has 200 years of inertia and set expectations. Today, the PTO is a billion-dollar enterprise and the PTO Director’s first job is to manage that ship. However, the director should also have a visions and goals for the future of the PTO and the patent system. Along with Chief Judge Michel and a few other key players, the PTO director is seen as the leader of the US patent system. The vision of the next director will have a great impact on the potential for patent reform; international patent cooperation; and the role for industrial design protection. Part of Obama’s overall agenda is to move toward an open and transparent government. The PTO has come a long way, but the new director and deputy should be on board with ways to increase the communication channels and the ability for third parties and competitors to monitor the patenting process. Many are calling for the next PTO director to have patent prosecution experience. I agree that such experience will be helpful – both in understanding the system and for credibility. However, being a career prosecutor does not necessarily coincide with having the vision and leadership necessary for the job. Lots of speculation on upcoming PTO Officials.

  • But first: The National Academy of Science published a book suggesting guidelines for the “most critical” Science and Technology Appointments of the new administration. PTO appointments do not make the list.
  • John Doll is expected to become the PTO director temporarily until a new director and deputy are appointed. At that point, he will most likely move back to his role as Commissioner of Patents.
  • Several sources (perhaps stemming from the same core) have identified former PTO trademark examiner Shanna Winters as a potential successor to either Mr. Dudas or Ms. Peterlin. Ms. Winters played a key role in the passage of the properly maligned House Patent Reform Act of 2007. Her staff position in the House is necessarily shifting as the IP subcommittee is being abolished. Patent reform in the next Congress will be dealt with directly by the Judiciary Committee – led by Rep Conyers.
  • Some are calling for Todd Dickinson to return to his former post. He recently took over as executive director of the AIPLA.
  • Professors Rai, Lemley, Noveck, Lesseg (and the vast majority of other law professors) have been strong Obama supporters. Professor Rai was a classmate of Obama at Harvard Law School. She was Executive Editor of the Harvard Civil Rights-Civil Liberties Law Review while Obama led the Harvard Law Review.
  • I would be fully behind the nomination of Kevin Noonan.  (* Full Disclosure – Kevin is a partner at MBHB, my former employer and the primary Patently-O advertiser).
  • I suspect that none of these folks will get the call.
  • Notes: Joff Wild (qualities of PTO director); Gene Quinn (Nominating Paul Kamenski); Hal Wegner (“If you had a very good, honest broker that both sides could admire and respect, then common elements could be found in a solution.”)

Stanford IP Litigation Clearinghouse: Speaking of Mark Lemley – He and attorney Joshua Walker (who also knows Obama…) are leading an amazing new project titled the Stanford IP Litigation Clearinghouse. The free service tracks over 23,000 US District Court cases filed since 2000 and includes in depth real time information “that cannot be found elsewhere in the public domain.” [Invitation to Launch]

Wii Infringing? Motiva has sued Nintendo in the Eastern District of Texas. The young superstar plaintiff’s attorney Mark Lanier is representing the patentee. U.S. Patent 7,292,151. In his blog, Blaise Mouttet noted the potential that the Wii infringed back in 2007. [Link]

31 thoughts on “Patently-O Bits and Bytes

  1. 30

    Kevin Noonan? That does not sound like a reformer’s choice. As a frequent reader of his Patent Docs blog, it seems to me that Mr. Noonan is not even aware that the system is broken. Add to that the fact that the guy is totally in the tank for Big Pharma and you’ve got about as uninspiring a choice as I can imagine. Am I missing something?

  2. 29

    Oh poop, Dennis. 😉

    Guess I should have come back to review all the wonderful comments the “Prop 8” “string within a string” Malcolm kicked off yesterday must have generated…

    Work does so get in the way of things at times…

    O.K. Back to patent stuff.

  3. 28

    Please corect me if I’m wrong, but as I understand it, the “IP Czar” position was created as part of Senate Bill 3325 (the so-called Pro IP Act) which was signed in law by President George W. Bush on October 13, 2008.

  4. 27

    ” I mean c’mon, since when does making it wireless versus wired allow you to overcome prior art? ”

    But … but … it’s so popular! It must be non-obvious.

    /graham inanity off

  5. 26

    link to

    my bad that is the actual link.

    In any case, um no, I’m not too scared of my salary doubling, and I was joking about fearing for my job security. It’s hard to say that anything he would implement, other than the way high fees, would impact the number of filings. People would still probably try to patent things in the techs that are part of the “most techs” that “shouldn’t be patentable”. Lol, that guy is such a joker.

  6. 25

    Hundt’s first suggestion about slashing the number of issued patents by 90% isn’t going to happen (and if it did, the U.S. patent system would fatally wounded). First, what’s he going to do about all those 6500 or so examiners who are currently employed? Once they saw that they have no job security, they would all leave this sinking ship. Put differently, a proposal that creates job loss isn’t going to go over too well politically in our current “sour” economic atmosphere.

    Second, the “small entities” would probably scream loud enough to get the attention of their respective Congressman. Making the examination process this expensive is going to look very unfriendly to the “small entities” and that isn’t going to go over very well politically. Again, this will look like a “job loss” proposal.

    Third, a dracoian cut in patent issuances is going to create another “firestorm” with whether this is compliant with our international IP treaty obligations under TRIPS. If the U.S. patent system allowance rate looks “artificially” low relative to the ROW, we’ll hear about it in spades, including retalitory measures that we won’t like either.

    Fourth, and most importantly, the Obama administration will have enough issues, including an economic crisis, they need to spend political capital on. In other words, that leaves little, if any, political capital to spend on a “dracoian” reform measure such as that proposed by Hundt.

  7. 24

    I’m quite mystified by macho talk of rejecting 90%. In my practice, before the EPO, it is seldom that the EPO can establish that the app is devoid of novel and unobvious matter. Most apps get through to issue, although many have claims of narrow scope. But that accords with reality. Corporates these days are working very hard continuously and incrementally to improve their technology. We all benefit from that. We should therefore encourage the corporates to carry on with that behaviour. But everything needs checks and balances. In the patent system, the solution to its present travails is not “reject, reject, reject” but, rather, “be careful what you ask for” from the court. If you the patent owner ask the court for relief, and the claim you sue on turns out (on a preponderance of evidence)to be invalid, it should cost you very very dearly. If you the infringer ask for the patent owner’s suit to be dismissed, and it turns out that the suit was well-founded, it should cost you very very dearly. Put in place a sensible balance of litigation power, between those with patents, and those threatened by them, and not only will the backlog at the PTO will sort itself out automatically but also “the Progress of the Useful Arts” will resume.

  8. 23

    6K wrote, “I don’t know if I should laugh, or be watching my job security with a close eye.”

    No need to worry about your job initially. Someone has to reject the 90% of applications until the filings drop. But when the filings drop, the shoe will too.

  9. 22

    “One piece of relevant prior art for that Wii case may be US patent 4,264,072”

    The claims of the 7,292,151 patent are all about sensory feedback from the remote control to the user by way of light, sound, etc. Wii remotes vibrate and emit sounds during play, which is really cool actually. The basic concept of controlling a game via a wireless remote is probably very old, as evidenced by ‘072.

  10. 21

    “Here’s a sound byte from a man with ‘power’ that should make the most hardened [prosecution attorney] examiner shudder”

    Typo corrected.

  11. 20

    link to

    Jebus, this guy just keeps on getting better. I don’t know if I should laugh, or be watching my job security with a close eye.

    Here’s a sound byte from a man with “power” that should make the most hardened prosecution attorney shudder:

    “First, we should slash the number of patents granted each year by 90%. In 2004 the U.S. Patent &Trademark Office issued 165,000 patents. Sixteen thousand is more like an optimal number. This should be easy to accomplish because most technology should not be patentable.”

    bada bing

    link to

    link to

  12. 19

    Lol, you guys though reject reject reject was bad. Listen to this guy, he’ll straight up tell you that patents should only have a certain number to hand out, no secrets, he’ll tell you to your face bucko.

  13. 18



  14. 17

    Blaise: Classification based searching is so 20th century. Get with it… just type your favorite 8 words from claim 1 into Google and the best art comes up (or “and” them all together in a different search tool). Three minutes, slam, bam, 1 count for the books baby.

  15. 16

    One piece of relevant prior art for that Wii case may be US patent 4,264,072 the abstract of which reads:

    An electronic game apparatus for use with circuitry which position controls a game object on the screen of a cathode-ray tube, such as is used in standard television receivers. The apparatus translates player’s position and movement, and in particular a player’s hand, to corresponding movement of the game object on the screen. The apparatus is capable of non-tactile sensing of the player’s movement and in the preferred embodiment utilizes a field effect transistor with an antenna member coupled to the gate of the transistor, with the player’s position and movement relative to the antenna member resulting in corresponding game object movement on the tube screen.

    Other applicable prior art may be found by searching class 463 subclass 39 of the US patent classification schedule

  16. 15

    Poor Nintendo… At least this one shouldn’t take more than a few hours of search work to knock out. Those claims are great (though presumably valid!). I mean c’mon, since when does making it wireless versus wired allow you to overcome prior art? Even us lowly searchers know that one doesn’t fly!

  17. 13

    My original fear was that it would be Lemley, since he was an IP advisor to Obama.

    Now my current fear is that it will just be some no-name Congressional staffer political hack.

    There appears to be movment for the “IP Czar” to come from Hollywood, because the REAL IP problem is copying of music and movies (probably because alot of REAL campaign dollars came from the entertainment industry).

  18. 12

    I agree that the Director should be a Registrant with broad experience, and few could match Dickinson’s history at Sun, Dechert, Howrey and GE. (Nitpicking items: it’s Commissioner _for_ Patents, and Lessig is misspelled.)

  19. 11

    When Q. Todd was Commissioner my colleagues actually said positive things about the USPTO. Imagine that. Under Q. Todd, the USPTO didn’t try to avoid hiring new examiners, allowed applications without breaking the back of the attorney, and listened to what the patent bar had to say. Is there a chance he would really come back?

  20. 10

    I have never heard of Shawna Winters and did a Google search to find out more about her. It looks like there is a porn star with the same name. Just what the USPTO needs…

  21. 8

    Seems to me that if Obama goes ahead and creates a technology czar then that individual is going to be more important than the director of the PTO and will have a lot of input into who the director is. So – who becomes the tech czar?

    Obama should create the tech czar. If Obama’s team really thinks that the US needs to double the number of engineering graduates then they really need someone in the White House who understands technology.

  22. 7

    I hope the likes of Lemley and Lessig stay on the left coast, as far away from the Patent Office as humanly possible without setting them adrift.

  23. 6

    I know Obama, I sat next to him once in a restaurant. Perhaps I should be considered for Commissioner…

  24. 5

    Nnnnnoooooo!!!! Not Shawna Winters!
    For the past 3 years, whenever I got a crap Office Action with irrelevant prior art (or especially a crap PCT search report that was 2 years late), I explained to my client that the PTO, like FEMA, is a government agency that has been stocked with incompetent Bushie political appointees.
    If Shawna Winters gets the PTO, the only thing we are doing is replacing Republican hacks who know NOTHING about science, IT and patent prosecution with DEMOCRAT hacks who know NOTHING about science, IT and patent prosecution!
    I thought Obama was supposed to stand for CHANGE – I though Obama was supposed to be the “BROOM” that would “clean out” the Bush administration corruption.
    If Obama gives the PTO to Shawna Winters, Obama is a FARCE.
    PS – Dennis – please don’t delete this comment again – thank you.

  25. 4

    The next PTO director IMHO should be a registered patent attorney and have a minimum ten years patent prosecution experience.

  26. 1

    “I would be fully behind the nomination of Kevin Noonan.”

    So would I. That would make my day… my whole year actually.

    Another favourite, though I realize he is not a practioner, is Chris Holman.

    Sadly, I also think neither would get the call.

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