Outgoing USPTO Director Lee Sees Legislative Changes On IP In Next Administration, Congress

Now in her final weeks in office [Update: she has continued in the role under President Trump], United States Patent and Trademark Office Director Michelle Lee today looked back over the Obama administration’s work on patents and made predictions for the next administration due to take over in January. She hailed the outgoing administration’s successes and said to expect a continued focus on a strong IP system, legislative changes on hot button issues but not right away, and continued engagement around the world.

“I believe the incoming administration must and will continue our effort to promote innovation fueled by a strong and robust IP system,” Lee told a private sector conference in Washington, DC. “Support for IP in the United States has a long history of bipartisanship, and there’s no reason to imagine that changing with a new president and a new Congress, both of whom have economic growth as a top priority.”

Lee’s remarks are available on the USPTO website here.

In a review of accomplishments in the USPTO over the 8-year Obama administration, Lee highlighted the reduction in USPTO’s patent application backlog and pendency since their all-time high in 2009 to the lowest its been in a decade now. She also pointed to the strong emphasis on engagement with users of the patent office.

Lee discussed the patent office’s shift to focus on patent quality in recent years, and also patents that may not be valid anymore.

“There is a cost to society when the USPTO issues a patent that we should not issue, just as there is a cost to society when we don’t issue a patent that should issue,” she said. “And just as there is a cost to society when there is a patent in the system that the USPTO properly issued but that is no longer valid in light of changes in case law.”

“Recognizing this,” she said, “we have enhanced the quality of patents in our system, both before they leave our office through our Enhanced Patent Quality Initiative led by a new Deputy Commissioner and a newly created department within the Patents solely focused on this effort and after the patents return to the office through our PTAB and other post grant review proceedings.”

USPTO has about a dozen initiatives aimed at improving patent quality, Lee said, and she went into detail on one of them: the Clarity of the Record Initiative. The goal of the program is “to develop best practices on how much detail to include in certain key parts of the prosecution history,” she said.

Lee also mentioned activity around the Section 101 jurisprudence related to patentable subject matter, noting that a hearing was held on this on 14 November and another one will be held on 5 December.

And on the future, Lee offered an update that forms the basis for her predictions and wishes, reprinted below:

“We’ve clearly made tremendous progress over the past eight years, but of course, we have more work to do to further strengthen our patent system’s ability to promote innovation in our ever changing environment. As I said earlier, I’m optimistic the incoming administration will share our appreciation of the importance of intellectual property as a driver of economic growth.”

“As I look ahead, I foresee legislative patent reform changes will continue to be discussed in Congress, though those conversations will likely occur later in the term after some of the other priorities including filling a Supreme Court vacancy, immigration and tax reform are addressed, and any legislative patent reform will likely be more targeted, rather than the comprehensive reforms we’ve seen in prior Congresses. I would hope any legislative proposal will take into account the numerous positive changes that have occurred recently in the patent system including: through the courts, including on attorneys fees, pleading requirements and discovery limits, and at the USPTO through the PTAB and the agency’s efforts to improve the quality of patents in our system.”

“As far as issues, I predict legislative discussions may include venue reform and possibly changes to Section 101 and PTAB. On venue, with nearly half of the patent cases filed in 2015 filed in a single district out of 94 federal judicial districts, it is easy for critics to contend that plaintiffs seek out this district preferentially for the wrong reasons. And the mere perception that there are advantages to be gained by forum-shopping challenges the public’s faith in the patent system. So there will be continuing pressure for legislative (and likely judicial) action on the issue of venue.”

“The scope of any legislative reform remains is to be determined, but I predict that the focus will be on more targeted, rather than comprehensive reform as we saw these past couple Congresses. Further, I anticipate that the USPTO’s work across the globe to ensure that other countries have strong IP protections adequate enforcement mechanisms and remedies, and appropriate technology transfer (or licensing and competition) policies, will continue in the next Administration particularly in such countries as China and others.”

“This is a President-elect that has promised economic growth and job creation in our country, and IP will necessarily be a key piece to achieving that goal.”

 

Image Credits: USPTO