US Companies, Officials Discuss Policies To Boost IP Value, Cut Costs18/09/2010 by William New, Intellectual Property Watch Leave a CommentShare this Story:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Google+ (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)IP-Watch is a non-profit independent news service and depends on subscriptions. To access all of our content, please subscribe now. You may also offer additional support with your subscription, or donate.LAS VEGAS – Private-sector experts and key government officials in the United States came together this week to discuss strategies for improving rules and procedures on intellectual property, and look for ways to maximise the value of company IP assets while cutting costs. The IP Law Summit was held in Las Vegas, Nevada from 12-14 September.Law professor Pamela Samuelson opened the conference with an argument for copyright reform, describing the somewhat awkward path to the current copyright law. She cited the widely differing damages awards – some extraordinarily high – that are arising from infringement cases, calling them “part of what’s giving copyright law a bad name with the public.”Samuelson said efforts are underway to improve the system, mentioning a multistakeholder project that developed principles of copyright law and 25 proposals for reform. The National Academy of Sciences also is undertaking copyright reform, as are others, she said. It may be useful to look at due process cases where courts could review damages granted by juries and to establish guideposts such as considering the actual harm to the plaintiff. In the end, she said there should be a “reasonably protective” copyright regime.US Trademark Commissioner Lynne Beresford and US Patent Commissioner Robert Stoll outlined initiatives underway at the US Patent and Trademark Office to improve services and provide a boost to innovation and jobs. President Obama and top administration officials have stated support for the office, which has received $129 million of the fees it generated and is still seeking to recover another $70 million.The USPTO has made reducing patent application pendency a top priority, and the office plans to hire 1,000 more patent examiners each in 2011 and 2012, Stoll said. The plan was welcomed by the company IP lawyers in the audience. But that hiring will not happen in 2011 if the additional funds are not approved by Congress, Stoll said.Among the other patent initiatives, the green technology pilot programme now has about 1,500 applications, many of them expedited, he said. The limit will be 3,000. In the First Action Interview Program, he said that phone interviews directly with applicants are showing a positive impact, and that “if you get a call, take the call.” On another front, efforts are being made to strengthen the role of the ombudsman by among other things reducing the fear of retribution through increased anonymity for those with complaints inside the office.Stoll also highlighted progress in several internationally focussed initiatives, such as the Patent Prosecution Highway (PPH), under which the USPTO now has 11 bilateral agreements with other IP offices. The PPH is a work sharing programme that “lets examiners use search and examination results from other offices, reducing duplication of work,” and application backlogs everywhere, according to USPTO materials.“Under the PPH,” the materials said, “an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants to obtain corresponding patents faster and more efficiently.”The office also continues to look for ways to increase work-sharing with key IP offices such as those in the so-called IP5 (Europe, Japan, China, Korea, US).Stoll also said the slow economy has had a positive effect on the usually disruptively high turnover among examiners at the USPTO, cutting attrition in half since he took office. And he said the patent appeals process is being reorganised to prevent unnecessary appeals if the initial rejection is certain to be the outcome anyway.Beresford provided a number of performance statistics showing positive progress toward department goals. For instance, she said filings under the Madrid System for International Registration of Marks continues to increase, now number over 22,000 US trademark owners since the US joined the treaty in October 2003. There also have been some 85,000 requests for extension for protection. She also reported on an independent study on quality done by IP trade associations that showed the USPTO is doing well on trademark filings. The office will now pilot a project of comprehensive excellence, that includes among other things more phone calls to address questions.And the trademark office continues to become increasingly automated and will soon propose a fee for paper correspondence. It also is planning to propose several changes to processes, such as to allow the post registration examiner to ask for additional specimens in applications (only one is required now).Microsoft’s Richard Wilder also focussed on the impact of patent application pendency, which he said can change corporate strategies and significantly impact the value of patents. Longer pendency shifts the focus of capturing value from the grant to the application. It also lowers the likelihood of licensing of the patent-protected product.Wilder praised the new USPTO Data Visualization Center and Patent Dashboard, which is intended to bring greater transparency to pendency and backlog reduction efforts said by USPTO Director David Kappos to be the office’s top priority.Monopolising on the IP PortfolioSeveral panellists suggested forming teams across the company to work on maximising the company’s IP portfolio, and that a culture of IP must come down from the senior management. Perennial patent leader IBM and others described systems they have – such as a “dashboard” for identifying trends – for finding new IP within the company and evaluating whether to keep or unload IP in the portfolio. One speaker described in detail how filing for a patent on a single invention will ultimately cost $100,000, so the decision must be a good one. Patent protection is more important for products that leave a “big footprint” and are easily reverse engineered.“The practice of IP management continues to evolve as the economic environment shifts,” Arvin Patel, global leader in IP at IBM, said afterward. “IP practitioners are more focused than ever on maximising the quality and value of their company’s portfolio, which requires optimising every stage of the invention lifecycle.”This optimisation includes “the planning stage with IP strategy development and deployment; the creation stage with inventor enablement; and the leverage stage with mechanisms to assign or licence dormant IP, maintain an appropriate mix of high-quality IP across product and geographic lines, and continually loop back to the IP strategy and adjust the deployment tactics as needed,” he said.Harry Gwinnell of food producer Cargill, the largest private company in the world, presented a pyramid of IP Creation. At the bottom going up it included: IP foundation, integration, value creation – cost control, value creation – additional income, and finally visionary (where companies like IBM are “lonely at the top”).The subject of international IP came up continually, but particularly with regard to China. Naomi Abe Voegtli, vice president for global IP strategy and standards at SAP, said China is working to create its own unique IP and is “playing a most sophisticated game” involving enforcement and standards. “China wants to be an IP superpower,” she said. She said there some problems, such as that if a foreign patent owner makes any restrictions or improvements to their product the patent is null and void.China was also put at the top of the list for IP infringement. Dan McKinnon, trademark counsel at New Balance sport shoe makers, described efforts to stop copies of their shoes from being made and marketed. He made an informal distinction between counterfeits – exact replicas of the real shoe, with the New Balance logo, name and packaging – and infringement – a close copy but not exactly the same, giving the producer a “get-around” from punishment. He said his company only have resources to go after the biggest counterfeiters, so one that was “not greedy” could do very well. But most are greedy, going for the most sales possible, he said, which is their downfall.But now some counterfeiters who make closely similar but not identical products are filing for their own trademarks outside the United States. His company uses a watch service to track these filings. It also employs a service called MarkMonitor to track activity online, as that now accounts for half of the problem. In particular, there are widescale online auction sites overseas allowing large orders of counterfeit products anonymously. New Balance goes after the biggest infringers there.A panel discussion on US patent reform efforts brought doubt that a bill before Congress intended to improve US patent law could be passed this year, especially as this Congress (which reconvened this week) is in its last weeks before an election and then ends in December. But some participants predicted that some form of legislation would still go through this year.Georgetown Law professor Jay Thomas said the outcome of the recent Supreme Court decision on In re Bilski v. Kappos could motivate the tax lobby to become more active. He also said if patent reform fails to pass this year, it will have to be reintroduced in the next Congress, which begins in January.Next time, there might be a move away from a broader reform bill to tackling pieces. But this might not be a problem, as the fear that this is the only time Congress will take on patent issues for many years seems to have faded. Rather, he said, it looks like “Congress is in the patent system to stay.”Share this Story:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Google+ (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)RelatedWilliam New may be reached at email@example.com."US Companies, Officials Discuss Policies To Boost IP Value, Cut Costs" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.