Marla Grossman

  • October 5, 2011
    Guest Post

    By Marla Grossman, Partner, American Continental Group

    The U.S. patent and trademark system depends on the dissemination of value-added information.  Such dissemination can best be achieved by a public-private partnership that takes advantage of the core strengths of private sector publishers and government. Specifically, a competitive private sector patent and trademark information industry complemented by the U.S. Patent and Trademark Office (USPTO) provides the optimal approach for meeting the broad range of user needs -- from specialists to the general public. The following principles are critical to ensuring the highest quality and integrity of the U.S. patent and trademark system.

    Policies Should Encourage a Diversity of Sources for Patent Information

    It is common sense that one should not rely on a single source of information, and that the most accurate information addressing the broadest variety of needs is best derived from a marketplace of ideas with a multiplicity of sources. U.S. law embraces such thinking, and federal statute provides that federal government agencies shall ensure public access to an agency's public information by "encouraging a diversity of public and private sources for information based on government public information." (44 USC 3506(d)(1)(A)) The statute's enforcement vehicle, OMB Circular A-130, provides that in determining how and whether to disseminate information, agencies will: "[t]ake advantage of all dissemination channels, Federal and nonfederal, including State governments, libraries, and private sector entities, in discharging agency information dissemination responsibilities." President Obama reinforced this message in the recent “Memorandum for the Heads of Executive Departments and Agencies on the subject of Transparency and Open Government”: “Executive departments and agencies should … cooperate among themselves, across all levels of Government, and with nonprofit organizations, businesses, and individuals in the private sector.”

    The concept of “a diversity of sources” has special applicability to patent information. Each area of technology benefits from different types of search tools to achieve optimal results. There are many types of uses of patent information, and there are many types of users in addition to those who conduct searches for patentability, infringement, validity, etc.  Such users include researchers, business intelligence analysts, financial analysts and technology specialists.   If there is only one source -- the USPTO -- all of this diversity is lost, and consumers will suffer. And yet, this is what can happen if the USPTO does not consciously take into account this principle when they are making decisions about what patent services it is going to provide and at what cost.

  • September 12, 2011
    Guest Post

    By Marla Grossman, Partner, American Continental Group

    Last week, the Congress passed the most comprehensive patent reform in the U.S. in over 50 years. Just hours before President Obama gave his jobs speech, the U.S. Senate passed H.R. 1249 by a vote of 89 to 9, clearing the bill for the president’s signature. The bill’s title is the Leahy-Smith America Invents Act, and it will help promote American innovation, thereby creating additional jobs in this country and, hopefully, enhance the economy. 

    Passage of the America Invents Act is the culmination of more than a decade of efforts of innovators and public policy makers. Several of the provisions implement recommendations made by the Federal Trade Commission in 2003 and the National Academy of Sciences in 2004. Congress worked on this bill from the 108th – 112th congressional sessions, holding dozens of hearings and engaging in extensive debate.

    Some of the key features of the final legislation include:

    • Transitioning to a first-inventor-to-file system, harmonizing the U.S. patent system with the rest of the world;
    • Replacing the costly interference proceedings with derivation proceedings to determine the right to a patent;
    • Updating and improving the inventor’s oath/declaration;
    • Authorizing pre-issuance submissions by third parties prior to the grant of a patent to aid patent examiners and improve patent quality;
    • Creation of a new, first-window post-grant review process to improve patent quality;
    • Improving the current inter partes system by heightening the threshold for instituting a review, making it more difficult to use the process to harass a patent owner;
    • Creation of a new supplemental examination proceeding to incentivize patent owners to commercialize their inventions despite potential flaws in the application process;
    • Making failure to disclose the best mode no longer a basis for invalidity;
    • Eliminating harassing false marking lawsuits, and addressing recent holdings that the current statute is unconstitutional; and
    • Providing for a 15 percent increase in Patent and Trademark Office (PTO) fees that will take effect 10 days after enactment of the bill so the agency can have a quick infusion of desperately needed resources.

    It is not a perfect bill. Most notably, it does not guarantee the PTO stable, future funding and does not require that the agency be able to utilize all of its user fee collections. By definition, however, a “perfect” bill is one that has no chance of ever becoming law in this country of diverse opinion and representational government.