Patent Reform: Prospects for Legislation & Changes at the PTO - A Report from the APLI:SV, Part 7

By TAP Guest Blogger

Posted on January 6, 2016


This is the final report in a 7-part series from The 16th Annual Advanced Patent Law Institute: Silicon Valley.

The report is written by Kevin Hickey, Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.


Most of this year’s Advanced Patent Law Institute: Silicon Valley (APLI:SV) focused on the current state of patent law, informing practitioners of recent legal developments that could help their clients. A few panels took a broader perspective, looking at future prospects for patent reform, either via legislation or through administrative change at the United States Patent and Trademark Office (“the PTO”).


Professor Colleen Chien spoke about developments in Washington and the prospects for federal patent reform legislation. Tracing the history of congressional efforts following President Obama’s 2013 call for reform, Professor Chien took a generally pessimistic view of the chances that patent reform legislation will be enacted soon. There is simply no consensus among patent-intensive industries—technology, pharmaceuticals, universities, et al.—in favor of any of the current proposals. The one area where legislation seems possible in the near term is venue reform; many legislators are skeptical of the current concentration of patent cases in the Eastern District of Texas.


Outside of Congress, however, much progress has been made toward reform in the states and by the other branches of the federal government. The Supreme Court has been very active in the patent area of late, and cases like Octane and Alice can be interpreted as their attempt to rein in abusive patent litigation and to give courts tools to weed out weak patents. President Obama has announced a series of executive actions. For their part, a majority of state legislatures have passed demand letter reform, which seeks to prevent overreaching by patent trolls. The PTO has also taken many steps to improve patent quality and transparency, and streamline administrative procedures to challenge patents.


In a separate session, Russell Slifer of the PTO spoke more specifically about the agency’s efforts. The biggest news is the Enhanced Patent Quality Initiative, which encompasses reforms to improve the examination process and patent quality by collecting better data, improving examiner training, providing increased transparency, and creating more consistency across examiners. The agency has recently opened new regional offices in San Jose, Dallas, Denver, and Detroit to improve its service and facilitate innovation in local communities. The PTO is also working hard to improve Patent Trial and Appeal Board (PTAB) procedures through its recent rulemaking, with the aim to make the adjudicative process more efficient and reduce the current backlog of inter partes reviews (IPRs) and covered business method reviews (CBMs). Mr. Slifer also spoke to long-term initiatives and innovations being explored at the PTO, including automating prior arts searches and conducting parallel searches in coordination with key foreign patent offices.


Related Resources

Colleen Chien – 2015 Patent Reform Update


Read more on the Advanced Patent Law Institute: Silicon Valley


This conference summary was written by Kevin Hickey. Mr. Hickey is the Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.