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2010 Symposium

PTO Reform

The 2010 Symposium took place on Friday, February 26 at Stanford Law School. The Stanford Technology Law Review thanks all participants and guests for making the event a success. The Symposium articles will be posted to this site in the near future.

2010 Symposium

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Stanford Technology Law Review 2009-2010 academic symposium: PTO Reform.” width=


The Symposium took place on February 26, 2010, and showcased vibrant legal scholarship on the current role of the PTO, the various avenues for change, and the implications of any reform efforts. Current scholarship plays an essential role in expanding the legal thinking on the extent to which the PTO is the proper vehicle for enacting patent reform. The Symposium featured scholars, practitioners, and current and former PTO personnel all sharing their perspectives, concerns, and thoughts. Our goal was to create a comprehensive dialogue on this pressing topic, and to foster the development of creative new ideas.

We envisioned a Symposium with sufficient breadth of scope to address the most exciting issues emerging in this field, including the following issues:

  • “Quality” and “Pendency”: Drilling Down to “Backlog,” “Deferred Examination,” “Patent Worksharing” and Other Integers to Achieve Primary Goals by Hal Wegner
  • The Role of Applicant Incentives in Patent Office Reform by Dennis Crouch
  • Patent Examination Policy and the Social Costs of Examiner Allowance and Rejection Errors by Ron Katznelson
  • Examiner Characteristics and the Patent Grant Rate by Mark Lemley & Bhaven Sampat

Our goal was to create a comprehensive dialogue on PTO Reform and to foster the development of creative new ideas.

Authors


Hal Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner was selected by his peers for inclusion in The Best Lawyers in America® 2010 in the field of intellectual property law.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.


Dennis Crouch is Associate Professor of Law at the University of Missouri School of Law. Prior to joining the MU Law Faculty, he was a patent attorney at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois, and taught at Boston University Law School. He has worked on cases involving various technologies including computer memory and hardware, circuit design, software, networking, mobile and internet telephony, automotive technologies, lens design, bearings, HVAC systems, and business methods. He is also the editor of the popular patent law weblog: Patently-O .

Professor Crouch received his BSE in mechanical engineering cum laude from Princeton University, where he also earned a certificate in engineering management systems. He then earned his JD cum laude from the University of Chicago Law School. While at the University of Chicago, he was a Microsoft, Merck, & Pfizer scholar and a member of the Olin program in law and economics.

Prior to attending law school, Professor Crouch worked as a technical consultant for manufacturing firms in New England, as a research fellow at NASA’s Glenn Research Center, as a software developer at the Mayo Clinic’s department of biomedical imaging, and as a Peace Corps Volunteer in Ghana, West Africa. Dennis Crouch grew up on a farm near Pittsburg, Kansas.

Ron Katznelson has over 25 years experience in intellectual property rights protection as an inventor (with 22 U.S. Patents), technology developer, entrepreneur and a scholar of the patent system. He is the Founder and President of Bi-Level Technologies, a signal processing technology company in Encinitas, CA. Prior to that he founded and led Broadband Innovations, a digital RF component company, as its Chief Technology Officer and Chairman. From 1983 to 1989, he was with the VideoCipher Division at Linkabit Corp., later acquired by General Instrument Corp. where he directed digital television R&D that led to the MPEG-2 standard. His responsibilities included managing the Division’s intellectual property portfolio, working with outside counsel on patent litigation, and representation in industry groups and standard-setting organizations. From 1982 to 1985, Dr. Katznelson was a Professor of Electrical Engineering at the University of California, San Diego (UCSD). He is a member of the San Diego IP Law Association, CONNECT’s Public Policy Committee, and serves on the UCSD LibraryAdvisory Board.


Mark Lemley is Faculty Director of the Stanford Program in Law, Science & Technology, Director of the LLM Program in Law, Science & Technology and Faculty Co-Director of the Transatlantic Technology Law Forum. Professor Lemley is widely recognized as a preeminent scholar of intellectual property law. He is also an accomplished litigator–having litigated cases before the U.S. Supreme Court, the California Supreme Court, and federal circuit courts–as well as a prolific writer with more than 100 published articles and six books. He has testified numerous times before Congress, the California legislature, the Federal Trade Commission, and the Antitrust Modernization Commission on patent, trade secret, antitrust, and constitutional law matters. He is also a partner and founder in the firm Durie Tangri LLP. His contributions to legal scholarship focus on how the economics and technology of the Internet affect patent law, copyright law, and trademark law; and at Stanford he currently acts as the director of the Program in Law, Science & Technology, and the director of the LLM Program in Law, Science & Technology.

Before joining the Stanford Law School faculty in 2004, he was a professor of law at the UC Berkeley School of Law (Boalt Hall) and at the University of Texas School of Law. He also served as counsel at Fish & Richardson and Brown & Bain as well as clerked for Judge Dorothy W. Nelson of the U.S. Court of Appeals for the Ninth Circuit.

Professor Lemley holds a B.A., with distinction, from Stanford University and a J.D. from the University of California, Berkeley School of Law (Boalt Hall).


Bhaven Sampat, PhD, is an assistant professor in the Department of Health Policy and Management and (by courtesy) in the School of International and Public Affairs at Columbia University, and also teaches in the Sustainable Development PhD program at Columbia’s Earth Institute.

An economist by training, Sampat is centrally interested in issues at the intersection of health policy and innovation policy. His current projects examine the impacts of new global patent laws on innovation and access to medicines in developing countries, the political economy of the National Institutes of Health, the roles of the public and private sectors in pharmaceutical innovation, and institutional aspects of patent systems. Dr. Sampat has also written extensively on the effects of university patenting and “entrepreneurship” on academic medicine, and is actively involved in policy debates related to these issues. He co-created the first free, searchable database of post–TRIPs patent applications in India, india.bigpatents.org. (See here for background on this effort.)

Dr. Sampat was previously an Assistant Professor at the School of Public Policy at Georgia Tech, where he won the “Faculty Member of the Year” teaching award in 2001-2 and in 2002-3. From 2003 to 2005 he was a Robert Wood Johnson Foundation Scholar in Health Policy Research at the University of Michigan.

He is recipient of a Robert Wood Johnson Foundation “Investigator Award” to study how the NIH allocates its funds across disease areas. (See here, here, and here for more information.) He also serves as principal investigator on a Ford Foundation initiative examining patent policy in developing countries, and as director of the Columbia-Stanford Consortium on biomedical innovation.

Commentators

Chris Byrne is Vice President for Intellectual Property Strategy for Tessera Technologies, Inc., in San Jose, CA. Chris has degrees in electrical engineering, psychology and law and is a USPTO registered patent attorney. Chris began his intellectual property career with Hewlett-Packard and subsequently has held the top IP position at 5 public high-tech companies. He has complete leadership experience in all aspects of intellectual property development and management, including strategic patenting, licensing, litigation and IP policy issues, including repeated testimony before Congress on the Digital Millennium Copy Act as IP Chair of the Information Technology Industry Council (http://www.itic.org). Chris is also a board member emeritus and past-president of the Churchill Club, Silicon Valley’s premier business and technology speakers’ forum (www.churchillclub.org). He has also been a charter member and was a founding co-chair of the clean-tech section of TiE-Silicon Valley, the organizational hub of the world’s foremost global network of entrepreneurs (http://sv.tie.org/homepage). Alongside his IP career, Chris has been an active angel investor, particularly in new-media and clean-tech.

Colleen Chien is an Assistant Professor of Law at Santa Clara Law. She teaches and researches in the areas of patent law and international intellectual property law, with an emphasis on empirical research and access to technology issues. Her recent publications include in-depth empirical studies of patent litigation & NPEs and litigation at the International Trade Commission. She frequently speaks at national conferences on patent law and policy issues.
Prior to Professor Chien’s academic appointment, she prosecuted patents at Fenwick & West LLP in San Francisco, California, where she remains Special Counsel, and was a Fellow at the Center for Law and the Biosciences at Stanford Law School. She worked as an investigative journalist at the Philippine Center for Investigative Journalism as a Fulbright Scholar.

John Duffy is the Oswald Symister Colclough Research Professor of Law at The George Washington University Law School. Professor Duffy teaches and writes about patent and intellectual property law. After receiving an undergraduate degree in physics, he served as articles editor on the University of Chicago Law Review and was awarded an Olin Fellowship in Law and Economics. Professor Duffy clerked for Judge Stephen Williams on the U.S. Court of Appeals for the D.C. Circuit and for Justice Antonin Scalia on the U.S. Supreme Court, served as an attorney adviser in the Department of Justice’s Office of Legal Counsel, and practiced law with the Washington firm of Covington & Burling. Since entering academia in 1996, Professor Duffy has been on the faculty of the Benjamin N. Cardozo School of Law and the William and Mary School of Law, and has also served as a visiting professor at the University of Chicago. He has published articles in the University of Chicago Law Review, Columbia Law Review, Texas Law Review, and Supreme Court Review, and he is the co-author of a casebook on patent law. Professor Duffy teaches torts, administrative law, patent law, and international intellectual property law.

Leonard Heyman was an Examiner or Primary Examiner for over 5 years in the early 1990s after graduating college. Since then, he has obtained his law degree from the University at Buffalo Law School (SUNY) and practiced in boutique patent firms in Connecticut, Virginia, and California until joining VMware in 2007. Leonard has a balanced perspective of the patent prosecution process, with deep understanding of the nature of patent examining both as a profession and in the context of a broad regulatory scheme. Leonard is admitted to practice law in the states of New York and Connecticut, and is a registered in-house practitioner in California.

Jeff Lefstin teaches and writes about patent and intellectual property law. He joined the Hastings faculty in 2003 after serving as a law clerk to Judge Raymond C. Clevenger, III, at the U.S. Court of Appeals for the Federal Circuit in Washington, DC. Prior to his clerkship, he practiced patent and antitrust law with the biotechnology and litigation groups at Townsend, Townsend & Crew in San Francisco. In his previous life he was a molecular biologist, studying mammalian gene regulatory mechanisms and DNA-protein interactions. His scientific papers appeared in Nature, Genes & Development, and the Journal of Molecular Biology. His current research focuses on the intellectual architecture of patent law and problems of interpretation in patent litigation. He has served as an expert witness on patent law matters, and lectured for Patent Bar Review courses.

Roberta Morris is a Lecturer in Law at Stanford Law School. Since 2006 she has taught a seminar for law and science graduate students called Scientific Evidence and Expert Testimony in Patent Litigation. She has also taught the Intellectual Property survey course. Before moving to California, Morris was a lecturer at the University of Michigan Law School for fifteen years, teaching patent law and other intellectual property courses. Her practice experience includes having been an associate at the patent law firm of Fish & Neave (now Ropes & Gray) in New York, and of counsel to Gifford, Krass in Michigan. She holds an AB summa cum laude from Brown, a JD from Harvard Law School and a PhD in Physics from Columbia University, in that order. She has been a speaker on patent law for PLI, Michigan ICLE, and elsewhere, and her occasional writings on patent law have appeared in JPTOS, IPToday and most recently her blog myunpublishedworks.blogspot.com.

Arti Rai is the Elvin R. Latty Professor of Law at Duke University. Professor Rai is an authority in patent law, administrative law, law and the biopharmaceutical industry, and health care regulation. Her current research on innovation policy in areas such as green technology, drug development, and software is funded by NIH, the Kauffman Foundation, and Chatham House. She has published widely in both peer-reviewed journals and law reviews, including Nature Biotechnology, PLoS Biology, PLoS Medicine, the Annals of Internal Medicine, and the Columbia, Georgetown, and Northwestern law reviews. She is currently editing a book on intellectual property rights in biotechnology and has also co-authored a casebook on law and the mental health system. She graduated from Harvard College, magna cum laude, with a B.A. in biochemistry and history (history and science), attended Harvard Medical School for the 1987-1988 academic year, and received her J.D., cum laude, from Harvard Law School in 1991.

Ed Reines is a partner in Weil, Gotshal’s Technology Litigation Practice, with a robust trial and appellate practice. Mr. Reines is also active in public service and is dedicated to supporting disabled veterans rights pro bono. He was named one of the Top 100 attorneys in California by the California Daily Journal and one of the Top 75 IP litigators nationally by IP Law & Business.

Among his public service commitments, Mr. Reines serves on the Federal Circuit’s Advisory Council, is Chair of the Patent Rules committee for ND Cal and Chair of the National Model Jury Instructions project. Mr. Reines is a Ninth Circuit Lawyer-Representative on behalf of ND Cal. He is past president of the Federal Circuit Bar Association and is currently Vice-Chair of the AIPLA Amicus Committee. He teaches patent litigation at both Berkeley and Stanford Law Schools. He is a regular CNBC commentator on IP law. Mr. Reines graduated from Columbia Law School in 1988 with honors.

Robert Sachs is resident in the San Francisco office of Fenwick & West LLP and his practice concentrates on strategic patent counseling and prosecution for software technologies. He is also the primary patent evaluator for various patent pools on today’s most important audio, video, and communications technologies, including IEEE 802.11, MPEG-4 AAC, DVB-MHP, OCAP, Digital Radio Mondiale, and NFC-IP. He holds an M.S. in software engineering from National University, a J.D. from Yale Law School, and B.A., summa cum laude, from University of California, San Diego.

Brenda Simon Brenda M. Simon joined Stanford Law School in 2008 as the teaching fellow for the Law, Science, and Technology LLM Program, and as a fellow in the Center for Law and Biosciences. Her research focuses on intellectual property and bioethics.

Before joining Stanford, Simon was an associate at Fenwick & West, where she represented technology clients in intellectual property litigation, counseling, and patent prosecution. Her pro bono representation of clients included successful appeals before the Ninth and Federal Circuits. In 2000-2001, she served as a law clerk to Judge Mariana R. Pfaelzer of the U.S. District Court for the Central District of California.

Simon graduated summa cum laude from UCLA with a B.S. in General Chemistry, and she received her J.D., from the UC Berkeley School of Law (Boalt Hall) in 2000, where she was an executive editor of the Berkeley Technology Law Journal, a teaching assistant for Negotiations, and awarded the Prosser Prize in Intellectual Property.

Lee Van Pelt has evaluated patent strategies for investors and developed strategies and prepared patents for emerging companies in Silicon Valley for over fifteen years. He also prepares patent opinions and provides litigation analysis. Mr. Van Pelt received a B.S. in Physics, summa cum laude, from the University of Missouri-Rolla and a J.D., Order of the Coif, from the University of California-Berkeley, Boalt Hall School of Law. He currently teaches a patent law class at Boalt. He has been named on the Daily Journal’s lists of Top 25 Patent Prosecutors and Top 25 Patent Strategists in California, as well as on the IAM 250 list of The World’s Leading IP Strategists.

Janet Xiao is an associate specializing in patent law in the Palo Alto office of Morrison & Foerster LLP. She primarily represents clients in the biotechnology and pharmaceutical industries in their world-wide patent procurement, patent portfolio management, and strategic planning. Dr. Xiao has significant experience in providing strategic advice on developing and strengthening her clients’ complex patent portfolios. She has represented clients ranging from small start-up companies and academic institutions to big biotechnology and pharmaceutical companies. She has extensive experience in areas such as nanotechnology, drug delivery systems, therapeutics, diagnostics, and nutraceuticals. Besides patent prosecution, her practice includes patent reexamination, patent litigation, preparation of freedom-to-operate opinions, and due diligence. She holds a B.S. from Nanjing University, an M.S. from the Chinese Academy of Sciences, a Ph.D. from University of California, Los Angeles, and a J.D. from University of California, Berkeley, School of Law.

Mallun Yen has forged an impressive career in Silicon Valley since graduating from Boalt Hall. She is currently Cisco Systems’ Vice President of Worldwide Intellectual Property – one of the most prominent in-house counsel positions in the technology field. She started at Cisco as the company’s second intellectual property attorney and went on to build a team that now consists of over two dozen professionals and manages over 100 external attorneys. She is a founding member of ChIPs, a group of female Chief IP Counsel dedicated to promoting the advancement and retention of women in IP law.

Directions & Parking

The Symposium will take place in Room 290 at Stanford Law School.

Visitor parking is available at Parking Structure 6 (off of Campus Drive between Wilbur Way and Arguello Mall). For other parking options, see Stanford University Parking & Transportation Services.

Maps and directions to Parking Structure 6 and Stanford Law School are available below.

From San Francisco via Highway 280

  1. Take 280 South in the direction of San Jose.
  2. Proceed to the Alpine Road exit (after Sand Hill Road).
  3. Turn left on Alpine Road.
  4. Turn right at the first traffic light onto Junipero Serra Boulevard.
  5. Turn left at the second traffic light onto Campus Drive East. (The first traffic light is Campus Drive West).
  6. Turn left onto Bowdoin St., and follow Bowdoin until you reach a stop sign.
  7. Turn left at the stop sign; the entrance to the parking garage is on the right.
  8. Exit the Parking Structure from the elevators opposite the entrance and follow the STLR Symposium signs to the law school.

From San Francisco via Highway 101

  1. Take 101 South in the direction of San Jose/Los Angeles.
  2. Proceed to the Embarcadero/Oregon Expressway exit.
  3. Follow the signs to Embarcadero West/Stanford University.
  4. Stay on Embarcadero for approximately two miles.
  5. After crossing El Camino Real, Embarcadero will become Galvez.
  6. Stay in the left lane, proceeding straight into campus. (The stadium will be on the left).
  7. Turn left at the first stop sign after the stadium onto Campus Drive.
  8. Proceed approximately 3/4 mile to Bowdoin St.
  9. Turn right onto Bowdoin St., and follow Bowdoin until you reach a stop sign.
  10. Turn left at the stop sign; the entrance to the parking garage is on the right.
  11. Exit the Parking Structure from the elevators opposite the entrance and follow the STLR Symposium signs to the law school.

From San Jose via Highway 280

  1. Take 280 North in the direction of San Francisco.
  2. Proceed to the Page Mill Road exit, turning right onto Page Mill Road at the end of the off-ramp.
  3. At the second traffic light, turn left onto Junipero Serra Boulevard.
  4. Proceed approximately one mile to the traffic light at Campus Drive East.
  5. Turn right onto Campus Drive.
  6. Turn left onto Bowdoin St., and follow Bowdoin until you reach a stop sign.
  7. Turn left at the stop sign; the entrance to the parking garage is on the right.
  8. Exit the Parking Structure from the elevators opposite the entrance and follow the STLR Symposium signs to the law school.

From San Jose via Highway 101

  1. Take 101 North in the direction of San Francisco.
  2. Proceed to the Embarcadero/Oregon Expressway exit.
  3. Follow the signs to Embarcadero West/Stanford University.
  4. Stay on Embarcadero for approximately two miles.
  5. After crossing El Camino Real, Embarcadero will become Galvez.
  6. Stay in the left lane, proceeding straight into campus. (The stadium will be on the left).
  7. Turn left at the first stop sign after the stadium onto Campus Drive.
  8. Proceed approximately one mile to Bowdoin St.
  9. Turn right onto Bowdoin St., and follow Bowdoin until you reach a stop sign.
  10. Turn left at the stop sign; the entrance to the parking garage is on the right.
  11. Exit the Parking Structure from the elevators opposite the entrance and follow the STLR Symposium signs to the law school.

Maps

Maps of the Stanford Campus are available at the following locations:

Registration

Registration is now closed.

Schedule

The symposium will take place place Friday, February 26, 2010.

9:30 AM: Breakfast & Registration, Stanford Law School
10:00 AM: Opening Remarks: Arti Rai, Administrator for External Affairs at the USPTO and Elvin R. Latty Professor of Law, Duke Law School
10:15 AM: Panel 1 – “Quality” and “Pendency”: Drilling Down to “Backlog,” “Deferred Examination,” “Patent Worksharing” and Other Integers to Achieve Primary Goals

Author: Hal Wegner, Foley & Lardner LLP

Panelists: Colleen Chien, Santa Clara University Law School; Jon Dudas, Foley & Lardner LLP and Former USPTO Director; Ed Reines, Weil, Gotshal & Manges LLP
11:30 AM: Panel 2 – The Role of Applicant Incentives in Patent Office Reform

Author: Dennis Crouch, University of Missouri School of Law

Panelists: Jeffrey Lefstin, UC Hastings College of the Law; Arti Rai, Administrator for External Affairs at the USPTO and Elvin R. Latty Professor of Law, Duke Law School; Lee Van Pelt, Van Pelt, Yi & James LLP; Mallun Yen, Cisco Systems
12:30 PM: Lunch
2:00 PM: Panel 3 – Patent Examination Policy and the Social Costs of Examiner Allowance and Rejection Errors

Author: Ron Katznelson

Panelists: John Duffy, George Washington University Law School; Robert Sachs, Fenwick & West LLP; Hal Wegner, Foley & Lardner LLP; Roberta J. Morris, Stanford Law School
3:15 PM: Panel 4 – Examiner Characteristics and the Patent Grant Rate

Authors: Mark Lemley, Stanford Law School; Bhaven Sampat, Columbia University

Panelists: Christopher Byrne, Tessera; Leonard Heyman, VMware; Brenda Simon, Stanford Law School; Janet Xiao, Morrison & Foerster LLP
4:15 PM: Closing Remarks, Jon Dudas, Foley & Lardner LLP and Former USPTO Director