1、U.S. PATENT REFORM FOR FAST-MOVING TECHNOLOGY,Washington Internships for Students of Engineering August 4, 2011 Sponsored by IEEE-USA Jolene L. Wang Yale University,OUTLINE,Introduction Background Information Key Concerns & Issues Suggested Proposals Current Legislation Policy Recommendations Questi

2、ons Acknowledgements,INTRODUCTION,Technological innovation 75% of U.S. growth rate Intellectual property 40% of economic growth Role of patents innovation economic growth international competitiveness,BACKGROUND,Intellectual Property Matters,PATENT HISTORY,“The Congress shall have Power To promote t

3、he Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” U.S. Constitution Article 1, Section 8, Clause 8 “Whoever invents or discovers any new and useful process, machines, manufacture, or comp

4、osition of matter, or any new and useful improvements thereof, may obtain a patent” United States Code, Title 35, Section 101,FAST-MOVING TECHNOLOGY,Product life cycles of less than 36 months High-tech companies: IBM, Microsoft, Intel Most common types of fast-moving technologies: Hardware Software

5、Diamond v. Diehr (1981) Business Methods State Street v. Signature Financial Group (1998) “automated financial or management data processing methods”,KEY CONCERNS,Rise in fast-moving technology patents Increase in lawsuits and litigation costs,/wiki/File:Growth_in_Business_Meth

6、od_Patents.jpg,KEY ISSUES,U.S. Patent & Trademark Office Funding and diversion of user fees more than $875 million in redirected fees Shortage of experienced patent examiners 1/3 with less than 3 years experience Length of pendency average 36 months Growing backlog,KEY ISSUES,IT Industry & Market De

7、fensive patenting and patent thickets High litigation costs and market entry barriers,SUGGESTED PROPOSALS,Software Copyrights Deferred Examination Multi-tiered Patent System Multi-track Examination,DEFERRED EXAMINATION,administrative inefficiencies insufficient prior art patent standards,MULTI-TIERE

8、D PATENT SYSTEM,administrative costs excessive filings increase backlog,CURRENT LEGISLATION,USPTO “Three-Track” Patent Program Track One prioritized examination within 12 months for $4000 fee America Invents Act 2011 S. 23 & H.R. 1249 4th attempt at sweeping patent reform,POLICY RECOMMENDATIONS,Inte

9、rnal Reforms Prior Art Reconstruction Institutional Modifications External Reforms End Diversion of Fees Open Post-Grant Review,IMPROVE PRIOR ART DATABASES,Establishing a supplemental repository of non-patent prior art more complete prior art collection,IMPROVE CLEARANCE SEARCH,Implementing external

10、 task force and search specialist groups Encouraging greater uniformity in language and claim terminology enhanced search capabilities,CREATE OPEN POST-GRANT REVIEW,Congress should advise the USPTO to establish a post-grant review that allows challenges based on any grounds of patentability within a

11、 certain number of months of patent issuance S. 23 (9 months) H.R. 1249 (12 months),END DIVERSION OF FEES,Congress should increase the appropriations of funds to the USPTO through the discontinuation of fee diversion Increase examiner retention rate Decrease growing backlog Improve quality of patents Promote innovation Stimulate economy,QUE