US Elections, Global Economy Are Major Challenges For US IP Association

By Dugie Standeford for Intellectual Property Watch
THE HAGUE, NETHERLANDS – The American Intellectual Property Law Association faces profound political, legislative and administrative challenges in coming months, new Executive Director Q. Todd Dickinson said in a 13 November interview in The Hague. Key among them are major changes at the United States Patent and Trademark Office (USPTO) in the new Obama administration, the fate of patent reform in the new US Congress, and the impact, if any, of the global economic downturn on patents, he said.

The incoming administration wants reform of the USPTO, Dickinson said. A group of former agency directors is preparing a proposal on internal reform issues such as attrition and work-flow management that could yield better patent quality results, he told Intellectual Property Watch. The draft, whose authors include Dickinson, is expected by next week, he said.

Dickinson was in the Netherlands as part of the US representation to the European Patent Office’s User Day on 13 November. In private meetings Friday with patent officials from Europe, the US, Japan, industry representatives were expected to lobby for greater coordination among agencies in processing patent applications.

Meeting at their 26th annual Trilateral Conference, the heads of the the European Patent Office, US Patent and Trademark Office and Japan Patent Office agreed to contribute to further developing the Patent Cooperation Treaty, and implement a number of worksharing projects, according to a release.

“Trilateral cooperation will be an important driver of the IP5 process,” said EPO President Alison Brimelow. “Coordinating the efforts of the IP5 offices [with China and Korea] and the Trilateral will make worksharing more efficient. This will help to ensure efficient processing of patent applications and high quality search and examination, and will benefit companies and individual entrepreneurs who want to protect their inventions in several parts of the world.”

The presidential transition process is also taking a fresh look at federal agencies, Dickinson said. During his campaign, President-elect Barack Obama signalled interest in a “peer-to-patent,” or community patent, system that gives scientists and others in the knowledge arena more input into patents before they are issued, he said. IBM is piloting a scheme, he said.

The impending appointment of a new USPTO chief will be “critical,” Dickinson said. The patent community is politically energised around what the next directorship will look like, he said. Additionally, four to eight slots could open soon on the US Court of Appeals for the Federal Circuit (CAFC), the lead patent court, giving the AIPLA an opportunity to help reshape it, he said.

Another hot issue is how patent reform will fare in the new Congress, starting in January. The full House Judiciary Committee recently wrested control of intellectual property issues from its Subcommittee on Courts, the Internet and IP, but Dickinson said the move makes educating old and new members on arcane patent issues “a little more cumbersome.” He predicted that the Senate will be the chamber to wrestle with the remaining tough issues of patent reform, unless the courts step in to resolve them.

Patent Harmonisation “Frustrating”

On the international level, AIPLA must address issues of patent harmonisation and the World Intellectual Property Organization (WIPO) Patent Cooperation Treaty (PCT), Dickinson said. Efforts to standardise procedural and substantive rules for processing patent applications have stalled so badly that a key question is whether the PCT can be modified to serve as a de facto form of harmonisation, he said. But the treaty still has not been adopted worldwide. Dickinson and others will meet with Latin American countries on 18 November to urge them to move to the PCT.

Asked if, as others have suggested, the US should pull out of WIPO if patent rules are not harmonised, Dickinson said countries should continue to pursue the issue. It is not clear whether harmonisation will take the form of the PCT, bilateral negotiations or some other mechanism, he said, but the lack of clarity is “frustrating.” And even if the idea of harmonisation is still on the table, the main issues remain undecided, he said. Francis Gurry’s election as WIPO director general is a positive development because Gurry is committed to working at some level of harmonisation, he said.

A Patent Slump?

Some aspects of the patent system, such as the backlog of applications, are in crisis worldwide, but there are talented people dealing with the problems, Dickinson said. The crucial question is whether the economic turmoil will spark a significant drop in newly filed patent applications, he said. That could allow patent offices to catch up on their workloads, but lost fees could mean staff cuts, he said. The most daunting task the new USPTO director faces is to manage through what could be a major patent slump, he said.

The financial situation could also affect the membership and member services of AIPLA and similar organisations, Dickinson said. AIPLA is considering ways to enhance its offerings by, for instance, making regular meetings available online via webcasts or creating a professional social networking site for members, he said.

AIPLA will continue to press for patent reform, and has set up a new committee to develop a legislative agenda and find ways to present it to lawmakers and the administration, Dickinson said. Another committee is scouting potential cases to use as vehicles to bring key issues before the CAFC, he said.

The “Prioritising Resources and Organisation for Intellectual Property Act” signed into law by President George Bush in October creates an “IP tsar” to coordinate US enforcement efforts worldwide, Dickinson noted, adding that enforcement remains a “huge problem” that is likely to get worse in times of economic stress.

Dugie Standeford may be reached at info@ip-watch.ch.