Senior VP of IP at Columbia University says: Future of US Innovation depends on a Strong Patent System

August 8th, 2017

This is an insightful take by Orin Herskowitz of Columbia University on the importance of Government policy in encouraging innovation in the US.  The piece touches both on technology worker immigration policies, and the importance of a strong patent system.

Orin Herskowitz is Columbia University’s senior vice president of intellectual property and technology transfer, and executive director of Columbia Technology Ventures.

Encouraging Observations from Marshall Phelps about the Critical Importance and Resilience of the US Patent System

July 29th, 2017

Check out Marshall Phelps article about the resilience of the US patent system, published in Gene Quinn’s IP Watchdog blog.

My favorite quote in the article comes from Mark Twain’s  Connecticut Yankee in King Arthur’s Court: “A country without a Patent Office and GOOD patent laws was just a crab, and couldn’t travel any way but sideways or backwards.”

America’s Patent System: An amazingly resilient philosophy and entity

Marshall’s views quoted from the article:

  1. I am always in favor of strengthening U.S. intellectual property rights. I find it ironic that many argue you can now find greater protections in say China and Germany. If so, this has really become a matter of international competitiveness.
  2. I believe we should always appoint a strong pro-startup and pro-patent director for the PTO.
  3. I believe the PTAB should use the same validity standards as the Courts, thus putting everyone on the same page.
  4. Of course, I believe the U.S. Government should always work aggressively to halt the theft and misappropriation of our intellectual property. We are, in many ways, a national design shop, and as such, our ideas and inventions will always be key to our economic success.
  5. I think the better course is for the PTO to promote new technologies instead of resisting them. Few of us are prescient enough to make judgements about the ultimate success of a particular technology. I’d rather guess wrong and include too much, than guess wrong and lose technological leadership going forward. So err on the side of allowance, and keep in mind, if we say no , it is more than likely another jurisdiction will say yes.
  6. This means, obviously, that it is a mistake to discriminate among technologies, especially in a world where many of the newer inventions and technologies are melding together.
  7. Given the importance of the patent system to the success of America, there is an obvious need for greater public understanding of these issues; from our school kids, to our political leaders, even to our Courts. We should applaud and support efforts to educate broadly in this area.
  8. Consistent with the last point, we must remember some of the lessons of history; the patent system must, above all, remain fair and affordable. It must not become, or be perceived as, the captive of any particular segment or set of users. It should never show favoritism.
  9. We must remember the little guys, the one group our forefathers went out of their way to include. Some of them will grow up to be big guys. (think Gates, Zuckerberg)


Gene Quinn Calls for Enacting Patent Reform to Secure US Technological Leadership

July 24th, 2017

Its a sign of the times in the patent community that Gene Quinn is calling for urgent action on patent reform.  Check out his July 23rd post here:

A Call for Enacting Urgent Patent Reform: A New Patent System for Securing U.S. Technological Leadership

Strong Intellectual Property Protection Encourages Innovation, according to Congressman

July 12th, 2017

It’s good to see an increasing realization that US patent policy needs to regroup to help the US maintain and extend it dominance in innovation, and advantage that has been slipping away in recent years due to a weakening of the patent system.   I agree with Frank Cullen, GIPC executive director of U.S. intellectual property policy, who recent said that “[s]trengthening America’s #IP climate is one of the best things elected officials can do to help grow the economy.”

I also agree with Rep. Lance, of Florida, who met with local businesses in his district to promote IP protections. “Strong intellectual property protections lead to innovative new discoveries that fuel economic growth,” said Rep. Lance. “Congress should be taking every measure possible to promote patents, trademarks, and copyrights in order to encourage development across a variety of industries as we move forward in the 21st century.”

Senator Coons Discusses the Stronger Patents Act on CNBC

June 22nd, 2017

The Stronger Patents Act was recently introduced by Senator Coons, and includes a number of provisions that would curb abuses of Inter Partes Reviews.  You can find Senator Coons’ interview on CNBC here:

LinkedIn Patent Story

June 15th, 2017

Check out IAM’s story on LinkedIn’s patent history, repeated on IP Watchdog:  The evolution of thinking on patents that occurred at LinkedIn is fairly typical of fast growing, baby behemoth, companies like LinkedIn.  That is, while in a company such as LinkedIn can typically fly under the patent radar for some years even as it grows rapidly (i.e., not attract much attention from large patent holders, or even trolls for that matter), once it passes a certain size, it is expected to respect the patent portfolios of other companies with substantial patent positions in the space.  This respect is typically paid with royalties if a company has little or no portfolio of its own, and later can be paid at least on part with cross-licensing of its own patents, if it has a solid patent position.

Sick Stats for Medical Software Innovations

May 29th, 2017

Robert Sachs recently posted an interesting update on Section 101 prosecution stats:

One of the most disturbing stats related to medical software innovation.  Inexplicably, it has been targeted as constituting largely only “abstract ideas” not worthy of patenting.   This is another strong indication that the U.S. patent system is sorely in need of a legislative solution to the Section 101 problem that is now a runaway train on course to do major damage to the U.S. patent system and U.S. competitiveness in the technical software arts.

Quoting from Mr. Sachs’ blog on this point:

“There apparently is very little in the field of health care management innovation that these art units consider to be statutory.  Yet it’s hard to imagine a field more crucial to the welfare of the people of the United States.   Political solutions alone won’t solve our skyrocketing health care costs.  Radical, high risk innovation by the private sector is also needed.  If radical high risk innovation can put a smart phone in everyone’s pocket, it certainly can help make health care more universally affordable.  This is the type of innovation that patents are designed to promote.  Table 3 below gives you an idea of the innovations in health care management that, in all likelihood, will not get patented in our current post Alice environment.”

My thanks to Mr. Sachs for continuing to shed a light on Section 101 developments in the USPTO.


Kudos to China on Software Patents

March 1st, 2017

Kudos to the Chinese patent system!  According to newly clarified rules, business method inventions that include a technical feature will be patentable in China.  It is surprising to me and many others that China and the EP now offer more predictable protection for software patents than the U.S.

For more information on the eligibility of software subject matter in China, see Richard Huang’s post —

USPTO Applicants face dismal odds in finance-related arts, but odds good outside the US

January 30th, 2017

As reported recently in The Bilski Blog (, finance-related patent filings are being allowed at very low rate — 2.6% — so low in fact that the the “median number of allowances per examiner in the two years since Alice is one.”  That means 1/2 case allowed per examiner per year.

Aside from highlighting the dismal odds applicants face in Classes 705/035 through 705/045, as well as 705/004 (Insurance), these stats also demonstrate the utter futility of using examiner analytics for applications in Work Group 3690.  More specifically, it would appear your best chances would be less than about 1/20 even with a “loose” examiner, hardly odds worth fighting for.  Is your client going to green light a case because the examiner you are working with has allowed 2 cases in a year (4 times the median), vs 1/2 a case?

On the bright side, patent protection for finance-related applications with technical hooks are being allowed with ever greater regularity in other major industrialized countries, and these countries are quickly becoming the preferred destination for US companies seeking to protect their innovations.





November 7th, 2016

On October 27, 2016, the State Intellectual Property Office (SIPO) published a Draft of Revisions to the Patent Examination Guidelines that would appear to reduce the barrier to software and business method patents in China. The draft has been published for public consultation and comments can be submitted by 27th November 2016.

 Article 25(2) of the Patent Law of the People’s Republic of China states that patent rights shall not be granted for rules and methods for intellectual activities. This section of Article 25 is often used as a basis for rejecting computer implemented business method patents.

 The proposed amended guidelines provide two paragraphs of relevance to software and business method patents.

 Claims related to business methods that contain both business rules and methods and technical characteristics, shall not be excluded from the possibilities of obtaining patent rights be Article 25 of the Patent Law.”

 In the second line of Part II, chapter IX, section 5.2, paragraph 1, the third sentence of the Patent Examination Guidelines are amended from, “and describe in detail which parts of the computer program are to be performed and how to perform them” to provide that “The components may not only include hardware, but may also include programs.”

 The first paragraph would appear to provide clear guidance to examiners that so long as the claims include technical features then the claims should not be rejected under Article 25(2) as a mere rule or method for intellectual activity. This appears to set a very low standard for allowable subject matter, particularly when compared to the US Alice I standard.

 The second paragraph appears to strengthen the applicants position for software inventions by allowing the software components to be considered equally to hardware components.

 When these two paragraphs are considered together in light of the current practice of SIPO, it would appear that the already lenient position of SIPO to patent eligible software and business methods is likely to move even further in favour of applicants. Companies generating software and business method inventions should therefore consider grasping the opportunities available to them in China.

Thanks to John Collins, Schwegman, Lundberg & Woessner, P.A.