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“You couldn’t get a vote of 89-9 on a bill saying the sun was going to rise in the East tomorrow “ |
At the AIPLA Annual Meeting in Washington, DC last month, the America Invents Act naturally dominated many of the major sessions. At a lunch on the second day, Senator Patrick Leahy of Vermont expressed his gratitude to AIPLA attendees for their help in getting the Act through Congress. "There are a lot of people in this room who were absolutely essential to getting [patent reform] done," said Leahy. "I want to just say thank you."
While severe partisanship has characterised most other congressional debates over the past year, Leahy said that the America Invents Act, which the Senate passed by a vote of 89-9, gave Congress a chance to show the American people that Democrats and Republicans can work together on some issues. "You couldn't get a vote of 89-9 on a bill saying the sun was going to rise in the East tomorrow," he joked.
But there is still work to be done, Leahy warned. Referring to the compromise made by the House on USPTO funding, Leahy urged the audience members to do their part to make sure the patent fees they pay remain accessible to the Office. "You have to make sure the PTO is fully funded," he said.
Departing from the topic of patent reform, Leahy mentioned that he is fighting a battle on another IP front – rogue websites. "The growth of the digital marketplace is extraordinary and can be helpful to businesses, but you also have rampant copyright infringement and counterfeiting." When this includes products such as pharmaceuticals, people die," he said.
Leahy's Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property of 2011 (The Protect IP Act), was introduced in May and would increase the ability of the Attorney General and IP owners to shut down sites hosting infringing content. It has been opposed by some, but Leahy said there have to be limits. "Crime is crime – the internet should be open, but not lawless."
Kappos: We're depending on you
Discussion of the America Invents Act had also dominated the opening plenary session at AIPLA. "If you're feeling worried about how the Act will be implemented, by all means get active in a committee, so you have a path to provide input on these rules," said AIPLA Immediate Past President, Alan Kasper.
The session featured an address by USPTO Director David Kappos, who told attendees that the Office will need the patent community's help to properly implement the many changes mandated by the new law.
"The America Invents Act is much too complex and multifaceted – there are many aspects with which the USPTO has limited experience [such as discovery]. But this community has had lots of experience, so there will have to be teaming to successfully implement this," said Kappos.
AIPLA has three teams – focusing on post-grant, patent office practice and administrative issues – set up as part of its task force dedicated to the rulemaking process for the America Invents Act.
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“I don’t want to spend USPTO time and money on best mode” |
Dickinson dug deep with Kappos, asking him hard-hitting questions about the new law and how it will be interpreted by the USPTO. When asked whether the new supplemental examination process might leave the door open for applicants to refrain from disclosing late prior art up front in favour of correcting the application post-grant, Kappos said: "I don't pretend to have all the answers yet."
He also agreed with Dickinson that the provision on best mode – which bars failure to disclose best mode from being used as a litigation defence, but still requires applicants to indicate best mode during prosecution – was confusing, dubbing it "anachronistic." He added: "I don't want to spend USPTO time and money on best mode. I'd love to see, sooner rather than later, legislation that finishes the job."
During the morning plenary, Kappos also conceded that, "there's no way we're going to be perfect on the first try. If we have to go back and do things again several times, we will."
This worried one audience member, who said that Kappos "is very different from previous commissioners" and commented that, should administrations change in 2012, the chances of another commissioner with patent and business background being appointed are slim. "There is no way the patent office will get this right the first time, and if he's not the commissioner, I don't know what will happen," said the attendee, who wished to remain anonymous.
