US, WIPO Officials Assess Patent Reform, PCT, Copyright Priorities

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NEW YORK – Republican and Democratic lawmakers in the United States are “hotlining” colleagues to ascertain if there is any objection to moving patent reform quickly through the US Senate, a representative of a major stakeholder in the debate said here Friday. Meanwhile, the US Copyright Office is working to get its priorities through a restructured Congress, and a World Intellectual Property Organization official warned of a possible divide in WIPO’s norm-setting activities.

Philip S. Johnson, chief patent counsel for the Johnson & Johnson company, told those attending the 7 May American Intellectual Property Law Association’s (AIPLA) spring meeting that there is “fairly widespread stakeholder acceptance” of S. 515 as it stands now, with the manager’s amendment introduced in March. Some of the “worst” provisions that have slowed patent reform have been stripped from the bill, he added. While thus far there are no strong lawmaker objections to the bill, it is estimated that four to five lawmakers may like to at least put a hold on the bill for now, Johnson added. At least two of those members are from Idaho. The Obama administration supports the bill. A letter to Senate Judiciary Committee leaders from US Commerce Secretary Gary Locke is available here.

The next step is procedural, and since there is very little free Senate floor time left, with Congress still dealing with health care reform and other legislative issues, some lawmakers are trying to remove whatever procedural barriers there may be to passing patent reform. Most of the House action has been “back channel” talks with members of the Senate Judiciary Staff, Johnson said.

“I would say it’s uncertain what will happen to the bill. There’s certainly a huge amount of support,” Johnson continued. “It would be a bipartisan bill and one that’s related to job creation that would cost the government nothing – that is, no out-of-pocket expenditures.”

He added: “From that standpoint it’s a no-brainer but I’ve learned that nothing in Washington is a no-brainer.”

With the manager’s amendment, S. 515 would, among other things: create a first-inventor-to file system in the United States aimed at simplifying the patent examination process and reduce costs; a new post-grant review procedure to be handled by administrative patent judges with estoppel; a strengthened inter-partes reexamination procedure; and a one-year grace period. The United States would like to see the rest of the world move toward a uniform grace period.

“This would be the first time a clear incentive would be provided if we want to get the rest of the world to become harmonised with us,” Johnson said.

However, there is no anti-diversion language in the bill that would prevent fees collected by the US Patent and Trademark Office (USPTO) over its anticipated budget from being diverted to other non-USPTO uses by Congress. This has raised the ire of the USPTO, AIPLA and other organisations and stakeholders working to increase the efficiency of the agency.

“I think to the stakeholder community who will be paying those fees, this is not acceptable,” Johnson said.

At last week’s House Judiciary Committee hearing on USPTO issues, some House members asked USPTO Director David Kappos whether the patent office would consider a standalone fee-setting bill with an anti-fee diversion measure if a broader patent reform bill remained stuck. Kappos declined to say yes or no, instead reiterating that he would like to forge ahead and get the broader patent reform bill passed.

“There may be some sort of standoff if fee-setting is not part of a comprehensive bill,” Johnson said Friday.

Meanwhile, the USPTO has revamped or instituted several pilot programmes aimed at increasing efficiency and transparency of the examination process: the examiner count system, first action interview pilot; and a patent application backlog reduction pilot.

“There seems to be an emphasis on getting examination right the first time,” said Manny Schecter, chief patent counsel for IBM. “The PTO, we need to keep honest with the way they report the progress of these pilots.”

USPTO Strategic Plan

Sharon Barner, deputy director of the USPTO, detailed her agency’s strategic plan – the details of which are included in the USPTO’s proposed fiscal 2011 budget. But, she said, “The devil is in the details.” She said the agency has a “long way to go” to getting a draft plan ready to roll out, but that plan will be available for comments from agency employees and management, a well as stakeholders. Barner expects the feedback and drafting process to be finished by the end of the year.

Barner highlighted a few priorities, including reducing patent pendency and backlog – a problem for which, she said, “we cannot simply hire [examiners] our way out of.” By redirecting some agency funds from other patent business units, the USPTO could hire some examiners this year; the agency is operating on “life support,” she said – echoing what Kappos has previously told Congress – since its 2010 appropriations level was about the same as its collections in 2009. One move the agency is making is to re-hire former, highly-performing examiners to decrease training time and attrition rates. USPTO attrition rates are “significantly reduced” as compared to this time last year, Barner said, and the agency is on pace to cut attrition by 50 percent in 2010.

Barner also said the trademark office is working on a long-term strategy of managing workload and personnel, and that the USPTO is working to find technological solutions that could increase the efficiency and quality of the patent process.

Copyright Office Priorities

Meanwhile, the US Copyright Office is trying to push other legislative priorities. There no longer exist any congressional subcommittees dealing solely with copyright issues, which may partially explain why little copyright legislation has moved this year, explained Michele Woods, senior counsel for policy and international affairs at the agency. However, passing a performance rights bill is still a priority for the office, as is eventually passing orphan works legislation.

Congress has passed temporary extensions of Satellite Home Viewers Extension and Reauthorization Act (SHVERA), which allows satellite subscribers to receive local stations from their satellite carriers. A Senate measure calls for a 10-year licence but it is expected Congress will pass a five-year extension instead.

“There is a hope that relatively soon, within a few months, we will actually get a final version” of that bill, Woods said.

The Copyright Office is also working with the World Intellectual Property Organization (WIPO) on various issues, including limitations and exceptions. WIPO is considering a treaty for the visually impaired, which would increase accessibility to works in forms accessible by this population on a cross-border basis. The United States would like to do something in the interim, and is working on other possible ways to address the cross-border transfer issue, Woods said. She added that disability rights are a “big priority” for the Obama administration. Woods also said there is new movement within WIPO to revive work on an audiovisual treaty regarding work-for-hire.

View from WIPO

On the issue of norm-setting at WIPO, Deputy Director General for Patents James Pooley (a former US patent attorney) said the process has been challenged by a “North-South divide.”

“There is a general but very, very substantial difference” in opinion between industrialised countries and regions like the United States and Japan on one hand, and Brazil and Africa on the other, he added. The “mutual distrust is palpable and it interferes with real communication … and trying to find areas of common interest which we know are there.”

Pooley credited the new administration at the USPTO with much of the progress made at WIPO on several fronts, alluding to the fact that the previous administration was not as cooperative.

“The USPTO has signalled loud and clear its commitment to WIPO, the PCT and the multilateral process,” he said, adding that he is grateful for the “new opportunities this new attitude represents.” The PCT is the Patent Cooperation Treaty administered by WIPO.

WIPO this year will launch a major project to connect with current and potential PCT customers on the advantages of using the system and how to improve it, he said.

Pooley said that the Group B+ countries next month will meet to consider “international proposals made in view of improving the PCT system” (referring to their 18 May Working Group II, third session, in Washington, DC). Up to now, Group B+ has dealt almost exclusively with issues relating to harmonisation of substantive patent law. Group B refers to the developed country members of WIPO.

Pooley also said WIPO’s Development Agenda is still in the works but said there is a “developing mistrust” between countries. It shouldn’t be an “us-them proposition … we’re all in this together,” he said, adding that the developing countries need to become “real players in the game” for the benefit of all countries when it comes to enhancing the world’s intellectual property capacity.

Liza Porteus Viana may be reached at lizapviana@gmail.com.

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