2010 US Industry Group Priorities: Patent Reform, USPTO Funds, Genes, Green Tech

Along with a domestic agenda that includes patent reform and improving the efficiency of the US Patent and Trademark Office, the American Intellectual Property Law Association (AIPLA) this year also is eyeing issues at the international level, such as genetic resources, environmental technologies and international patent harmonisation.

During a wide-ranging recent interview with Intellectual Property Watch, Q. Todd Dickinson, who took over as executive director of the AIPLA in September 2008, highlighted several key issues his organisation was working on this year. One of his group’s top priorities is pushing comprehensive patent reform through this year. S. 515 was passed out of the Senate Judiciary Committee in April 2009 and is awaiting floor time in the full chamber.

“We’re hopeful the Senate will take it up promptly in the new year and that the House will soon move after the Senate does,” Dickinson said, adding they are seeking “a few little tweaks.”

Another urgent issue AIPLA is working to address is fee diversion at the USPTO (IPW, US Policy, 21 January 2010). The US Congress this year stripped out the usual language in an omnibus spending bill that would have allowed the agency to spend up to a certain amount more than it estimated it would earn via user fee collections. That means anything over the $1.8 billion brought in by the USPTO would go into some sort of general fund to be distributed to non-USPTO related activities. The agency is looking to apply a 15 percent surcharge on USPTO fees to help it get out of the budget hole it is currently in.

AIPLA is supportive of considering fee increases both on an emergency and longer-term basis, “but a condition concurrent to that is … that the possibility of diversion is ended permanently,” Dickinson explained. “That’s really our number one issue – ending fee diversion permanently.”

As a former head of the USPTO under President Clinton, Dickinson said he routinely talks to USPTO Director David Kappos, and gives him the basic message: “Keep doing what you’re doing. You have a window of opportunity at the start – a honeymoon, like the president does,” to get things accomplished.

“The challenge is keeping up with it” in terms of holistic reform, Dickinson continued. “He really needs to fix the finances – that should be priority one through 10.”

Looking Inward and Outward

As an organisation, AIPLA is also undergoing several changes, although Dickinson said the group “needed very little reorganisation and tweaking” after he came aboard. But one change he implemented was creating the position of communications and marketing specialist, “to make sure our members understand the value we bring to them given the tough economic times,” as well as external communications, Dickinson added. “We want to become outward-facing in a lot of ways.”

To that end, the new “Q. and A” webcast [‘Q.’ for Dickinson’s first initial] was launched, during which AIPLA members can log on and ask questions of Dickinson and featured guests – such as Kappos.

The AIPLA’s Special Committee on Genetic Resources, Traditional Knowledge and Folklore, established last October by President Alan Kasper, studies those issues in relation to the development of intellectual property laws and standards, and investigates recent developments both in the US and internationally with regard to legal mechanisms and tools proposed to address these issues. The special committee is looking at what was proposed during December discussions before the World Intellectual Property Organization (WIPO) Intergovernmental Committee on IP and Genetic Resources, Traditional Knowledge, and Traditional Cultural Expressions (IGC) (IPW, WIPO, 14 December 2009). That committee was mandated by the annual WIPO General Assemblies to negotiate the text of an “international legal instrument (or instruments) which will ensure the effective protection of” genetic resources, traditional knowledge, and traditional cultural expressions.

AIPLA’s Emerging Technologies Committee is now also focusing on green technology. A large part of AIPLA’s work ahead will be educating its members on activities in developing countries in these two areas. Albert Tramposch travelled to Geneva in December to listen in on these discussions. As AIPLA deputy executive director, Tramposch is responsible for all international issues, including WIPO, and serves as AIPLA’s interface with the USPTO on many issues.

AIPLA will host its first IP Practitioners Association Summit in March to discuss nuts and bolts of patent practitioners issues concerning global patent backlogs and other issues. AIPLA and the International Federation of Intellectual Property Attorneys (Federation Internationale des Conseils en Propriete Industrielle – FICPI), will also cohost a June symposium in Edinburgh, Scotland, which will focus on patent backlogs and ways to smooth out the patent application and approval processes, as well as other global patent office issues. Speakers invited to that event include Kappos and new WIPO deputy director for patents and former AIPLA Director James Pooley, as well as the head of the Australian patent office. More heads of offices are expected to attend as well.

AIPLA has been heavily involved in the trilateral discussions between the USPTO, Japanese Patent Office (JPO) and the European Patent Office (EPO). That group is now working on “common format, common work” issues, and administration harmonisation activities like common search requirements, search documents and citation documents for all participating offices to use.

“We’ve been at this for a long time,” Dickinson said, adding that Kappos is very committed to the project “to get this administration harmonisation moving forward.”

The Patent Cooperation Treaty (PCT), managed by WIPO, is also on AIPLA’s agenda. The PCT, which allows patent applicants to file international patent applications, will see several changes this year (IPW, Patent Policy, 19 January 2010). For example, applicants can now ask the receiving office or the WIPO International Bureau to prepare and transmit or to obtain, respectively, a certified copy of the previous application(s) from a digital library. As deputy director of WIPO, Pooley has the PCT at the top of his priority list; AIPLA has been working on PCT reform, along with the USPTO.