By Scott A. McKeown
| June 5, 2013
White House Suggests Already Existing Initiatives to Congress & USPTO

White House Suggests Already Existing Initiatives to Congress & USPTO


Yesterday, a White House press release (here) provided 7 "legislative priorities" and 5 executive actions to Congress, the USPTO and other government agencies for the purpose of improving patent quality (i.e., to primarily stomp out patent trolls). While heralded in many tech news outlets as a major development, it seems the press release (associated report here) is primarily recommending Congress and the USPTO to follow through on initiatives they have already been working on.

The 7 legislative initiatives include:

1. Require patentees and applicants to disclose the “Real Party-in-Interest.  (USPTO Notice of November 26 )
2. Permit more discretion in awarding fees to prevailing parties in patent cases (Shield Act, Patent Abuse Reduction Act, Goodlatte Draft)
3. Expand the PTO’s transitional business method patent challenge program (Schumer Bill)
4. Protect off-the-shelf use by consumers and businesses (Goodlatte draft)
5. Change the ITC standard for obtaining an injunction
6. Use demand letter transparency to help curb abusive suits
7. Ensure the ITC has adequate flexibility in hiring ALJs

The 5 Executive Actions are as follows:

1. Making “Real Party-in-Interest” the New Default (PTO to start rule making process, related to (1) above)
2. Tightening Functional Claiming (PTO to start rule making process, concept introduced by USPTO at Partnership for Enhancement of Quality of Software Related Patents, February 2013)
3. Empowering Downstream Users (PTO to educate, Goodlatte Draft)
4. Expanding Dedicated Outreach and Study (Develop more round tables at DOJ, USPTO, FTC)
5. Strengthen Enforcement Process of Exclusion Orders (Enhance Border Protection analysis)

With the exception of the ITC related provisions, which seem to be designed to make exclusion orders more difficult for patent trolls, the vast majority of the "recommendations" and executive actions have been in motion for some time. With significant bipartisan momentum and the White House lining up against patent trolls, it is expected that some of these legislative concepts will be passed into law in a matter of months.
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