Vowing to combat patent trolls, the White House recently announced a series of executive actions. What do the changes mean for technology companies and patent attorneys?
Few government agencies determine the fate of innovative product ideas in this country more than the Department of Commerce's US Patent and Trademark Office. Officials at the USPTO, however, have struggled in recent years to combat a darker side of American ingenuity: entrepreneurs and litigators who use the fear of costly patent lawsuits to generate profits.
Vowing to combat these so-called patent trolls, on February 20 the White House announced a series of executive actions that, most technology companies and patent attorneys agree, is a step in the right direction.
Among other measures, the White House and the USPTO:
• established new educational and legal resources to help inventors and others caught in patent disputes,
• drafted new rules requiring patent owners to disclose more detail about who has investment interests in their patents, making it harder for the trolls to hide behind shell companies, and
• launched a crowdsourcing initiative that makes it easier for companies, experts, and the general public to submit hard-to-find "prior art," essentially technical evidence that would help USPTO examiners and patent applicants determine whether an invention is truly novel.
President Obama has taken a harsh view of how some companies have exploited patent laws in ways the USPTO never intended. "They're just trying to essentially leverage and hijack somebody else's idea and see if they can extort some money out of them," the president said a year ago, promising to build on patent reforms enacted in 2011 by the Leahy-Smith America Invents Act.
Even Washington skeptics say these announced actions set some novel precedents for the USPTO. For the most part, the USPTO has stuck to its role examining and administering patents, leaving the litigation of patents to the courts, says Washington patent attorney Michael Messinger, of Sterne, Kessler, Goldstein & Fox.
USPTO Patent Litigation Toolkit.
That's changed with the introduction last week of a Patent Litigation Toolkit on the USPTO's website designed to help companies and individuals who "find themselves being sued or are on the receiving end of a [royalty] demand letter," Messinger says.
The new section includes advice on determining whether or not you are infringing a patent and recommendations on how to respond to a lawsuit. It also provides a variety of resources, including links to legal aid groups, sites that track patent lawsuits and the companies that initiate them, Q&A forums on patent issues, and numerous public and private sector organizations offering assistance.
The USPTO also took the unusual step of appointing a full-time pro bono legal coordinator and calling on members of the patent bar to help inventors who lack legal representation. The website still "encourages people to contact their patent attorney," Messinger says, "but it's a step forward for the public... and IT leaders will benefit from the expanded number of resources."
The administration also hopes to crack down on abusive patent litigation practices with new rules designed to expose those who have a stake in patent assertion cases, including investors who hide behind shell companies. "The new rules introduce the concept of attributable ownership," says Messinger, calling it a material improvement. "A lot of parties are supportive of this move."
The White House also took aim at one of the USPTO's biggest challenges: finding the technical information examiners need to determine whether an invention is truly novel. Borrowing a page from the Obama administration's campaign playbook, patent officials are expanding crowdsourcing efforts
Wyatt Kash is a former Editor of InformationWeek Government, and currently VP for Content Strategy at ScoopMedia. He has covered government IT and technology trends since 2004, as Editor-in-Chief of Government Computer News and Defense Systems (owned by The Washington Post ... View Full Bio