White House Announces Additional Actions Addressing Patent Abuse, Urges Action From Congress

The White House announced a set of new executive actions Thursday that aim to curb abusive patent litigation to be accomplished through U.S. Patent and Trademark Office programs, along with an update to the executive actions President Barack Obama took in June (CD June 5 p12). The White House actions are collectively important because “our patent system simply must keep up with the ever-evolving needs of industry,” said Secretary of Commerce Penny Pritzker during a White House event Thursday that announced the new actions. Advocates of efforts to rein in what they see as abuses by patent assertion entities praised the White House announcement, though they noted the most effective actions still require further legislative action from Congress. The Thursday announcement followed up on the White House’s promise in conjunction with Obama’s State of the Union speech in late January to announce progress on the June initiatives. Obama had urged Congress during the State of the Union to “pass a patent reform bill that allows our businesses to stay focused on innovation, not costly, needless litigation” (CD Bulletin Jan 29 p1).

The new executive actions included a PTO-led initiative that would expand “crowdsourcing” of information on relevant prior art to improve the patent examination process. The PTO plans to refine its existing third-party submission program on prior art, along with seeking other ways for the public to submit information and improve how examiners use prior art. PTO began using crowdsourcing in patent reviews in 2007, when it opened its Peer to Patent pilot program allowing public submissions on new software patent applications’ novelty (CD Mar 27/07 p4). The PTO is expecting to mainly partner with private companies but is also seeking assistance from universities and other stakeholders.

Another new action would improve the PTO’s patent examiner training by increasing industry and university involvement in that education. That action seeks out volunteers for that expanded training, which the White House said should be “systematic, robust,” and cover “all disciplines.” That action would also make the PTO’s four regional offices permanent. A third new action directs PTO to provide educational practical resources to pro se patent applicants -- applicants who lack legal representation -- and work with the America Invents Act Pro Bono Advisory Council to expand the AIA-created pro bono program into all 50 states.

The White House also noted progress on its June executive actions, which PTO has been “hard at work” to implement, said PTO Deputy Director Michelle Lee at the White House event. PTO’s progress on the June action included the January release of its proposed new rule for patent owners’ regular disclosure of a patent’s real-party-in-interest (RPI) information. The White House had directed PTO in June to create a rule on RPI disclosures. Comments on the proposed rule are due March 25 (CD Feb 3 p25). PTO also plans to hold two public events to collect additional input on the proposed RPI rule -- one on March 13 at PTO headquarters in Alexandria, Va., and one on March 26 in San Francisco, Lee said.

PTO plans to begin a pilot program to encourage the use of clearer language in patent claims, responding to a White House directive to improve claim clarity. PTO has launched an online portal that outlines available resources for entities facing patent litigation, including a list of third-party sites like trollingeffects.com that provides information on previous attempts to assert a patent. PTO has expanded its Thomas Alva Edison Visiting Scholars Program and has increased public outreach to industry stakeholders in response to one of the June actions, the White House said.

The U.S. Intellectual Property Enforcement Coordinator’s office has begun a review of the federal government’s processes and standards for exclusion order enforcement in response to another of the June actions, and plans to issue recommendations to federal agencies in the coming months, the White House said. The administration also announced it would make permanent Patents for Humanity, which increases access to the patent system for inventors who are creating technology meant to aid global humanitarian efforts.

The White House wants Congress to “step up at once” to pass legislation addressing abusive patent litigation, Pritzker said during the White House event. The House passed the Innovation Act (HR-3309) in December, while the Senate is still examining the Patent Transparency and Improvements Act (S-1720) and other bills (CD Feb 12 p5). National Economic Council Chairman Gene Sperling also urged further action from Congress on the issue, saying the administration “would like to see 2014 be the year” when Obama signs legislation addressing abusive patent litigation. Sperling said it’s “not a small deal” that the White House included its call for patent revamp legislation in the State of the Union, noting that it shows how important the White House believes the issue is and reflects the administration’s belief that it’s an area where a bipartisan solution is possible. He highlighted fee-shifting in patent cases as one of several areas that are ripe for compromise and “should not be black or white issues.” Mark MacCarthy, Software & Information Industry Association vice president-public policy, told us he believed Sperling’s remarks were a message to Democrats to compromise rather than continue to propose provisions in patent legislation that would address fee-shifting and other issues related to court rules in patent cases.

MacCarthy praised the White House actions but said “we need effective, meaningful patent litigation reform out of Congress. It’s got to be a legislative solution.” Julie Samuels, an Electronic Frontier Foundation staff attorney who has focused on patent issues, told us “the public-private partnerships the White House announced today will be good for the patent system, but we also need the reforms contained in HR-3309. And until the Senate passes something, we're not going to see that.” Matt Levy, Computer & Communications Industry Association patent counsel, said he was pleased that the White House was making progress, adding that increasing patent examiners’ access to training and stakeholder resources will improve patent quality. The White House actions will also “keep momentum going in the Senate,” particularly given the Obama administration’s past support for HR-3309 and other patent legislation, Levy said.

Verizon Communications supports the new White House actions, which it believes are “one important step in reforming a patent litigation system that stifles innovation,” said Gail Levine, Verizon vice president and associate general counsel-intellectual property, in a statement. “Other reforms also are needed, however, and we continue to support Congress’s effort to enact meaningful patent litigation reform.” CEA President Gary Shapiro said in a statement that the White House actions are “aggressive efforts to drive patent trolls back under the bridge.” Shapiro also called on the Senate to follow up the House’s passage of HR-3309 and “immediately pass legislation ending the patent troll racket.” The Association for Competitive Technology/The App Association Executive Director Morgan Reed said in a statement that the White House efforts to improve patent quality at the beginning of the examination process “makes more sense than trying to fix a broken system at the end of the process to favor big companies and litigation at the expense of startups and innovation.”