Michigan Law School holds patent litigation program

By Steve Thorpe

Legal News

Recent changes in American patent law have made it an appropriate time to take a comprehensive look at the subject.

The day-long program "The State of Patent Litigation: A Conversation with the Federal Circuit" was presented recently at the University of Michigan Law School. The program was intended to give attorneys perspective on the latest developments in the field. It was a joint presentation of the Federal Circuit Bar Association, University of Michigan Law School, Honigman Miller Schwartz and Cohn LLP and Steptoe & Johnson LLP.

Panels included "Perspectives from the Bench," "Innovation and Efficiency in Michigan," and "Trial Court Perspective."

Speakers and panelists included Chief Judge Randall Rader of the U.S. Court of Appeals, Judge Jack Wang, Intellectual Property Court of Taiwan and Teresa Rea, Deputy Undersecretary of Commerce for Intellectual Property and Deputy Director of the USPTO.

Rea was one of the panelists on the Innovation and Efficiency in Michigan panel and the impact of the America Invents Act (AIA) was covered during that discussion.

On Sept. 16, 2011, President Barack Obama signed the AIA into law and many of its provisions came into effect recently on the one-year anniversary. These include:

* Inventor's oath or declaration

* Pre-issuance submissions

* Supplemental examination

* Citation of patent owner claim scope statements

* Post grant review

* Covered business method review

The U.S. Patent and Trademark Office has created a website at www.uspto.gov/aia_implementation that explains the provisions of the act and their implications.

"I strongly encourage everyone that, when you turn on your computer, your homepage should be MY website," Rea joked. "We are constantly updating it with new information."

In addition to providing the website to help patent attorneys navigate the new landscape, the patent office is hiring thousands of new examiners to deal with a backlog of cases.

"This fiscal year, which ends Sept.30, we will have hired 1500 new examiners," Rea said. "Next year we originally planned to hire another 1500, but have adjusted that to 1000 for now."

Other staffers are being added to streamline the patent process.

"Even more importantly, we have hired a lot of administrative patent judges, Rea said. "In March of 2011 we had 72 and as of today we have 168. We're hiring them at a record clip."

One of the downsides of the changes is that some fees have increased dramatically, causing problems for smaller businesses.

"The average startup is really 'cash strapped' and something as simple as trademark registration seems expensive to them," said Bryce Pilz of U-M Law.

In recognition of the higher expenses, the new rules allow for a way to be fairer to the "little guy."

"One of the great things about the AIA is the 'micro entity' status, which actually makes some of the processes cheaper for the really small startups," said Pilz.

The discussion turned at one point to the role that universities can play in developing new technologies and products. The panelists agreed that the appropriateness of using a university depended on the type of task.

"For a long-term R&D project, a university is perfect," said Damian Porcari of Ford. "For next year's Taurus fender, I could see some problems having that engineered at a university. Ford's had a long relationship with this school as well as others like MIT and Stanford. We've been able to use them for advanced research."

U-M Law staffer Pilz agreed.

"Doing fast R&D for a product that's going to be released next year, that's not what a university is about," he said. "But thinking about big problems at a very early stage, that's what they can help with. Universities are bending over backward to become more friendly to industry."

Going into a dispute, most companies now have in-house "electronic discovery" teams scouring sources for all the necessary documents and exhibits. Ford even has a sophisticated "forensics team" that is tasked with identifying all individuals who might me involved and where there computer data and emails reside.

At least one of the panelists believes that in some disputes, less law and more consensus goes a long way.

"If you can get the business people together, that's always best," said Andrew Barger. "Sometimes the lawyers just need to step out of the way."

Published: Thu, Oct 18, 2012

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