Tag Archives: David Kappos

Can small businesses afford weaker U.S. patents?

Can businesses and entrepreneurs compete with weaker U.S. patents in an innovation-driven global economy?

An event featuring a broad range of IP thought-leaders on October 26 in Silicon Valley will attempt to find out.

“Entrepreneurship, Innovation and Patenting in the U.S. – Implications for the future of U.S. Competitiveness” is the topic of a presentation and networking session being held at H-P World Headquarters in Palo Alto on Wednesday October 26 at from 6:00 to 8:imgres30.

The event is open to the public and limited seating is available on a first come basis. There is a $40 charge to cover food and refreshments.

Speakers include Professor Carl J. Schramm, The Hon. Judge Randall Rader (Ret.) David J. Kappos, former USPTO Commissioner and former head of intellectual property at IBM, and Professor Adam Mossoff of George Mason University School of Law where he co-founded the Center for the Protection of Intellectual Property. Robert Aronoff is the organizer. The International IP Commercialization Center is the sponsor.

For the full list of speakers go here. To register go here.

Image source:iipcc.org

Post-election “Patent Law & Policy” conference to be held in Washington

Many businesses are wondering what the patent terrain will look like after the U.S. elections in November.

Will further reforms will be forthcoming, or will there be a move toward stronger patents and greater certainty?

On November 15, the Tuesday following election day, at Washington DC’s Reagan Conference Center, those attending the 2016 Patent Law and Policy will be in a better position to find out.

Capitol Building in Washington DC USASpeakers assembled for this year’s IAM Patent Law and Policy conference will include senior government officials, members of the judiciary, corporate patent leaders, private practitioners and investors, who will discuss how court decisions and legislation are affecting US patent values and strategies.

The keynote speaker is US Patent and Trademark Office Director Michelle Lee. Other speakers include the chief judge of the Patent Trial and Appeal Board, David Ruschke, ex-USPTO Director David Kappos, and former Federal Circuit Chief Judge Paul Michel.

Also participating as speakers or panelists will be senior representatives from companies closely involved in the ongoing patent reform debate, including: GoogleQualcomm, Johnson & Johnson, Bristol-Myers Squibb and IBM. Lead counsel in two of the pivotal Supreme Court patent cases of the last decade, KSR v Teleflex and Cuozzo v Lee. Also present will be as several high-profile patent investors.

IP CloseUp readers are able to receive $100 off the $895 fee if they use the discount code PLAP100 (offer valid until October 7 2016).

For the complete program and speakers, go here. For registration go here.

Image source: ipo.org; ipwatchdog.com



Engaging IP book for students is free via iBooks or PDF, $.99 Kindle

The US intellectual property system has been the envy of nations everywhere. Despite this, confusion reigns about what are patents and other IP rights, and whom do they serve.

A new book has been published that makes it easier for college students and non-IP professionals, including inventors, engineers and investors to understand how IP rights work in the real world and how they affect peoples’ lives.

In an increasingly digital, knowledge-driven economy, an understanding of IP rights needs to be part of a core curriculum. The Intangible Advantage: Understanding Intellectual Property in the New Economy serves that mission admirably.

Compiled by an all-star team of writers, jurists, lawyers and professors, The Intangible Advantage (TIA) explains in clear, non-technical prose how the IP system works and the many audiences (aka stakeholders) it benefits. TIA is a revealing journey through the history and practice of IP in the United States. It is the first comprehensive text book for students that explains the IP system’s strengths and weaknesses, and dispels many of the myths surrounding them.

Clear and Concise

Chief writer, David Kline, is co-author of Rembrandts in the Attic (HBS Press), the first serious book about patents for business managers and investors. Kline is a former Pulitzer-nominated war correspondent, who has contributed to many business and news publications.

Serving as the book’s executive editor was David Kappos, Under Secretary of Commerce and Director of the United States Patent and lockup-ipad-verticalTrademark Office, 2009 to 2013. Prior to that Mr. Kappos was chief IP counsel at IBM. Also integral to the project was Hon. Paul R. Michel, Chief Judge for the Court of Appeals of the Federal Circuit (CAFC) who sat for 22 years on the bench, from 1988 to 2010. CAFC is the the highest patent court.

Giving Back

The Intangible Advantage is published by the Michelson 20MM Foundation. Established by Dr. Gary K. Michelson, an inventor, a spinal surgeon who responsible for 340 issued US patents and 953 worldwide. Dr. Michelson sold his company for $1.35 billion to Medtronic in 2010 as a settlement in a patent dispute.

The Michelson 20MM Foundation supports and invests in leading edge entrepreneurs, technologies, models, and initiatives with the potential to improve post-secondary access, affordability, and efficacy.  Dr. Michelson also founded the Gary Michelson Medical Research Foundation, which since 1995 has supported forward thinking initiatives in medical science by leveraging the collaboration of engineers, scientists, and physicians to solve real world problems; rapidly moving medical advancements into our society.

Separating Truth from Myth

The Intangible Advantage is written with clarity and charm, a Kline’s trademark that can be found in the books and articles about IP that he has written under his own by-line and those he has co-authored. IP professionals as well as students will gain from the historical insights the book provides, such as that despite media and hoopla about “trolls,” patent trials have remained virtually flat at around 100 for 30 years.

Given the explosive increase in patent filing and grants — About 325,000 US patents were issued each in 2014 and 2015 alone, and there are literally millions in force — the number of disputes that go to trial is extraordinarily low — not what the media would have us believe.

static1.squarespaceWhat The Intangible Advantage does exceedingly well is explain the US patent system and how rights can be used productively. It reminds readers that the system exists to facilitate sharing information about new inventions and stimulate new business, not to keep inventions secret or deter commerce. US IP rights differ markedly from others, especially the 18th and 19th century English system, which was more closely associated with privilege and class. The book underscores that the US system strives to use IP, especially patents, to level power, not to wield it.

TIA is un-intimidating at just 287 pages (1320 KB), a good length for those who want to know more without getting into legal minutiae. The book is available at iBooks for free and on Kindle for just $.99. An inexpensive print-on-demand edition (under $10) is also available. I downloaded a copy to my Kindle in about 15 seconds and read it over several days.

Start Learning Now

For the free iBooks version, go here or to your iBooks app store.

For the 99 cent Kindle version, go here or to the Kindle store.

For the $6.68 print on demand version, go here.

For the free standard Widows PDF version, go here.

The main Michelson 20MM Foundation resource page provides additional information.

In addition to Kline, editorial credits include:

Randall E. Kahnke (Author), Robert G. Krupka (Author), Kerry L. Bundy (Author), David Kappos (Editor),Paul R. Michel (Editor), Phillip J. Kim (Editor), Mayra Lombera(Editor), Marisa S. Moosekian (Editor), Gary K. Michelson (Preface).

The book is accompanied by a series of 3-minute animated videos available on YouTube answering such common questions as “Can I Patent That?”“Is it Fair Use or Infringement?” and “What If Someone Infringes Your Trademark?

Education – the Future of IP

IP literacy is no longer an option, it is a requirement. A rudimentary understanding IP rights and the patent system is essential for individuals to excel in a knowledge-based economy.

Until recently intellectual property has been taught primarily in law schools or the occasional business school seminar. The history and use of US IP rights is an amazing success story, whose impact needs to be conveyed accurately to wider audiences, and repeatedly over time.

The Intangible Advantage – not to be confused with my 2015 book, The Intangible Investor – is the first IP text book for non-IP professionals, especially college students, that makes it easy to learn about an integral part of American history and commerce.

Image source: 20mm.org; michelsonip.com

March LES Meeting will Enable Attendees to Customize

The first-ever mid-year LES meeting featuring presentations by Judge James F. Holderman and former USPTO Commissioner David Kappos, will also be the first to provide six industry tracks that can be tailored by attendees to suit their interests.

Optimized for customization, the March LES meeting will take place in New York and give those LES members and non-members alike the opportunity to take part in a single sector program or to combine aspects of one or more sectors with broad networking options.

Participants will be able to spend the entire conference, March 26th and 27th at New York’s Crowne Plaza Times Square, focused solely in their sector of interest (Life Sciences; High Technology; Industry University Government Interface; Chemicals, Energy, Environmental and Materials; Consumer Products; or Legal) and then enjoy engaging with larger audiences at the evening networking events.


For those interested in the views from the bench, the general program features David Kappos, Judge Holderman, and a panel of District Court judges, to share their views on what’s working and what’s not in today’s IP judicial system.

Meeting highlights include:

  • Workshop tracks for each LES Sector with the topics and speakers chosen by each sector
  • Confirmed speakers including licensing executives from: GE, Pfizer, National Institutes of Health, Columbia University and more.
  • Topics that range from “Green Energy” to “Initiatives to Accelerate Early-Stage Technologies from the Lab to the Market”
  • Keynote Luncheon Speaker: James F. Holderman, Senior United States District Judge for the United States District Court for the Northern District of Illinois speaking about “Remedies in Patent Infringement Litigation”
  • A “Mock Mediation of a Patent Licensing Dispute,” conducted by the World Intellectual Property Organization (WIPO)
  • A District Court Judges’ Panel offering “Judicial Insight Into Patent Infringement Litigation” that will also answer audience questions.

LES also will include optional education workshops on Tuesday afternoon for people who want to get a head start on the meeting.

Those who are in the New York area can drop in on Monday afternoon for the annual LES Foundation International Graduate Student Business Plan Competition, to see a glimpse of the future of the IP profession.  Teams from around the world present their IP-based business plan to a panel of internationally recognized judges.  All of the students are able to stay for the entire meeting to benefit from some of the networking opportunities and feedback on the ideas.

The Foundation provides mentors and coaches to help the teams round out their presentations, business and technology plans as they compete for over $100,000 in awards and in-kind prizes donated by LES members.

Illustration source: lesusacanada.org

Tensions Rise Between USPTO and Court of Appeals

Patent Office is in Defiance of CAFC Mandate on Inequitable Conduct, says former Chief IP Executive

A former head of IP at a Fortune 100 company has told IP CloseUp that the United States Patent and Trademark Office (USPTO) is undermining the authority of the highest patent court, the Court of Appeals for the Federal Circuit (CAFC), over a new standard requiring that the burden of proof for inequitable conduct be on the patent holder, not the infringer.

“The patent system is a game of haves and have-nots and, unfortunately, the vast majority of Americans do not own patents and see doing so as stifling competition. In fact, the system, if working properly as it has in the past, stimulates competition,” he told IP CloseUp.

“Tensions are rising between the CAFC and Patent Czar Kappos.  After the significant changes to the standards for raising inequitable conduct that resulted from the En Banc CAFC decision in the Therasense case in May 2011, the PTO proposed new changes to 37 CFR 1.56 that specifically included the Therasense standards in July 2011 and received written comments through September but held no hearings.  Upon passage of AIA last September, the PTO now trumpets Supplemental Examination to deal with such issues and has not made any changes to 37 CFR 1.56.

Making Sense of Therasense

“However, Therasense specifically holds that it is the accused infringer’s burden to prove inequitable conduct, not that of the patent owner.  The PTO’s actions in defiance of the CAFC mandate is perfectly consistent with the intended purposes of AIA, which is to take away as much as possible from the Courts, and push dealing with patents back into the PTO where applicants will languish under a Czar-run bureaucratic system.

“I predict that it will become more difficult to get patent infringement cases heard by juries and that good patents will be bottled up in the PTO for years.

“After years of defeat, the supporters of AIA figured out the perfectly ambiguous methodologies for killing patents they don’t want to have to pay to practice.  They bought and paid for the ‘perfect storm’ to weaken the patent system.  And as for job creation, if you believe that one, I have a bridge near you that I could sell you.

The former Chief IP Exec (CIPO) also told IP CloseUp that patent holders should be wary of the latest efforts of those trying to weaken the patent system by sliding a “technical amendment” by Congress that would undo the compromises reached in the passage of AIA. “The proposed change in the estoppel provisions will open the door to serial post grant reviews and make it even more difficult to get a granted patent cleanly out of the grips of the USPTO.

“This could adversely affect a patentee in a post grant review or inter partes re-exam by eliminating the estoppel feature of AIA as it was signed in Sept. 2011,” he added.

*     *     *

Mayo v. Prometheus Further Weakens the Patent System

The same former CIPO, who is also a patent attorney and former USPTO examiner, strongly disagrees with Mayo v. Prometheusa recent Supreme Court decision also with far-reaching implications.

This decision,” he told IP CloseUp, “sets the patent system on a course to find more areas determined to be part of the ‘laws of nature’ and therefore unpatentable. It sets a very bad precedent.  In my opinion determining the correct levels in the blood cells for administering more or less of a drug is not a ‘law of nature.’  It took a lot of research to determine what those levels are and should be entitled to patent protection for the limited duration of a patent.  Does this decision put most medical diagnostic companies out of business? It might.

“This decision could have an enormous impact on not only medical diagnostic tests that have been patentable in the past, but on all forms of inventions that relate to tests for determining characteristics found in nature.  For example, in physics, say I discover a new way of determining how to split certain atoms in a particular way to get a particular result.  Can it be argued that since atoms and their constituent components exist in nature, that such a discovery should not be patentable?

Added Tension

“So we now have the Supreme Court in battle with the CAFC over the last 10 years over the scope of patent law and added to that tension we now have the AIA, which has Commissioner Kappos battling with the CAFC about who really decides patent validity and infringement issues. The PTO will soon be turned into another forum like the ITC. 

“I believe over the next few years, it may become much more difficult to get a patent infringement case to a jury if Post Grant Reviews are pursued by accused infringers.  If the PTO finds a patent valid and infringed, will the Administrative Law Judges have the authority to grant damages in their decisions?

“I am not aware of the AIA granting such authority. The ITC is limited to granting exclusion orders to keep infringing products out of the U.S., but has no authority to grant damage awards.  Currently, only the Federal District Courts have that authority.

“The next step for the anti-patent forces would be to further amend AIA to allow the PTO to grant damages.  There is also talk of NPE’s being excluded from bringing patent cases before the ITC.

“The anti-patent proponents are wreaking havoc,” he concludes, “and are likely to continue to weaken an already beaten-down U.S. Patent System.”

Illustration source: judicialnominations.org; commnexus.org 

USPTO Chief Lists Challenges at Columbia Gathering

Kappos: Make Patents More Relevant

United States Patent and Trademark Office Commissioner David Kappos said last week at a Columbia University Technology Ventures gathering that the USPTO is getting more involved in facilitating the use of IP rights for humanitarian and other social issues.

Kappos spoke for about 45 minutes as part of a monthly discussion of issues open to business, law, engineering students and faculty, as well as other members of the college community. Kappos suggested that IP rights can have a greater role in jobs creation and quality of life issues. He said the Office’s Fast Track Examination Procedure and  Green Technology Pilot Program have facilitated examinations for patent applications covering timely inventions. He cautioned about the need for these priorities to be granted fairly.

Commissioner Kappos also discussed highly critical issues such as patent examination backlogs, pendency and the need “to at least maintain the current level of patent quality” as well as improve it.

For the full video of Commissioner Kappos presentation at Columbia and audience questions, click on the image above.

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