For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Sunday, 26 February 2012

America's new patent law: will it fly or will it flop?

"Is it a bird, is it a plane ..?"  There can be few readers who do not, on reading these words, think instantly of comic-book and later screen hero Superman making his dramatic entry. But behind the clich├ęd questions lies an important point. Those who saw the superhero's approach sought to identify him by reference to his functionality. In simple terms:
Question: What is that object in the sky doing?
Answer: Flying.
Question: What flies?
Answer: Birds and aeroplanes.
Just as the denizens of Metropolis, on watching the impending arrival of Superman, were initially puzzled by what they saw, so too are most members of the patent fraternity somewhat perplexed at the impending impact of the Leahy-Smith America Invents Act.  In fact, they are even more puzzled. Why so? It was at least plain even from the distance that Superman was flying and, once he was clearly visible, everyone -- including his enemies (who were bad) knew that Superman was a force for good. However, in the case of the America Invents Act, it's not even clear whether it will fly or flop and not everyone -- including its enemies (who include both those who are good and those who are not) can yet tell if it will be a force for good.  This particular member of the IPKat team cannot remember any piece of patent legislation that has so divided a nation, not only during the pre-legislative stage but during and even after it.

One expects patent practitioners and their clients to be less clear than their US counterparts as to what the new legislation, which has been superimposed on a batch of recent US Supreme Court decisions, will mean to them.  But the degree of uncertainty experienced by indigenous commentators and experts is quite unsettling. In the absence of a period in which USPTO practice settles down and professional norms stabilise, and without the benefit of clarificatory rulings from a patent-aware and hands-on judiciary, everyone is going to be guided by personal impressions, by probabilities, by the presumption that past experience can plug gaps in the present and by the comfort of consensus. This latter factor is in many ways the most important. A single person's uncertainty can make him reluctant to file a patent, to sue, to invest or to license.  But, when that uncertainty is shared with others and a general consensus crystallises as to how the uncertainty is likely to resolve, while that uncertainty has not been eliminated, much of its effect can can be negated. And that's what forums are for.

The US Patent Reform Forum 2012 is hosted by the IPKat's friends at Managing Intellectual Property magazine on 27 March in the Willard InterContinental Hotel, Washington DC. This Forum offers a great chance to identify those areas of uncertainty, doubt and speculation which the IPKat finds so entertaining -- and to discuss them. With a list of speakers including Q. Todd Dickinson (fresh from his induction last Friday into the IP Hall of Fame, here), Sherry Knowles (left), Dan McCurdy, Judge Paul Michel and not forgetting David Kappos, one area in which there is no doubt is that there will be some weighty opinions to consider [Merpel wonders how much consensus these characters are likely to reflect, given their range of backgrounds, experience and perspectives ...].  Incidentally, the US Patent Forum 2012 will be streamed in real-time as live webinars to a global audience of IP professionals".

If you want to know more about this Forum, the brochure and registration details can be found here.

1 comment:

Anonymous said...

It will fly (sort-of) because it is an absolute goldmine for US attorneys. They can practise on their clients and make mountains of mullah, while trying to get their heads around the thing. While I'm glad to see some aspects (e.g., the end of "first to invent", very American in both its idealism and impracticality), I think we'll be nostalgic for the old mess before too long.

Last Friday, there was a presentation which was organised by the Swiss Patent Office:

https://www.ige.ch/en/training/news/news-details/news/seminar-aenderungen-im-us-patentrecht-am-24022012-auf-enlisch-21032012-auf-franzoesisch-2/165.html

The presenter, a Swiss who is a US attorney based in St. Gallen, seemed pretty bullish about the whole thing. When he was asked how the notoriously incompetent (and frequently downright dishonest) USPTO was going to handle all this, he said that the USPTO will have the authority to set its own fees (big ones - compare the USPTO's post-grant review fee (somewhere in the region of $US35,000) to the EPO's €705 opposition fee). The extra income will allow for better training of Examiners, more Examiners, better computer systems, etc (the things David Kappos wanted to do, before Congress plundered his budget some time ago).

A German patent attorney back in 1975, when Munich had just won the right to be the location of the EPO, said "It will take decades!" to get the EPO going. But will it work? he was asked. "Of course it'll work!" he said, "the German Government will make it work!" Thus it will be in the USPTO - they'll muddle through on a large scale.

Many Americans believe that their patent system is the envy of the world. But then, many Americans also believe that they have been abducted by aliens. Given the bizarre alien nature of the current line-up of Republican Presidential hopefuls, I tend to believe that the latter might well be true. Perhaps Obama has no need to sing the blues:

http://www.youtube.com/watch?v=sLzECY8sYpE

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