Post-grant oppositions: another pothole in the road for patent reform?

On June 22, the 271Blog posted on the IAM-sponsored meeting in Chicago-->

Today, IAM kicked off the IP Business Congress at the Four Seasons Hotel in Chicago. This morning’s sessions were quite packed, with an estimated 370+ people from various sectors of technology gathering to talk about IP valuation, prosecution and enforcement

Of US matters-->

Speaker: Todd Dickinson, Executive Director AIPLA. Broadly praised Kappos nomination, and discussed issues related to patent reform (opposition, damages apportionment, etc.). Despite legislative efforts, lots of reform has already come from the courts, and many of the previous issues are no longer as pressing. Getting through the backlog with be the greatest challenge for the USPTO; reviewing the “count” system for examiners may be necessary. Lots of polarization exists between stakeholders and PTO, and working through differences will be important for the future. Again, PTO work-sharing will be key – other offices (JPO) have already identified this issue as a top priority. End the potential for fee diversion. While it doesn’t get much attention, the Intellectual Property “Czar” position will be significant. Health care and “Green” technologies may receive special attention from the USPTO. While programs like the “peer-to-patent” program received some positive feedback, the PTO has no plans on renewing the program in the near future.

Of post-grant review ("opposition"), the IAM blog noted:

[Senator Jeff] Sessions is not happy with the post grant review aspects of the Act as they now stand. Last week there was a meeting between his team and members of Patrick Leahy's staff (Leahy, a Democrat, is the chairman of the Committee) to see if some compromise could be found. Things did not go well and no progress was made. There is talk now that this could see the Act put out to the long grass as the committee gets on with other things - not the least of which will be scrutinising President Obama's Supreme Court pick Sonia Sotomayor. David Kappos will also have to pass muster with the committee before he can begin work at the USPTO.

The proposal of "opposition" (an inspection of a product), when there is asserted knowledge of a defect in production (patent examination) flies in the face of teachings on quality by Deming. As LBE noted in 2007 in Post-Grant Opposition: a Bad Idea :

The patent "quality" issue is one of several motivating the reforms proposed within H.R. 2795, which will be much discussed in the coming months. In my opinion, the most direct approach is to end fee diversion, give the USPTO sufficient funds to do the job of examination, and then evaluate its performance. Adding on new responsibilities for the USPTO, without resolving the issue of resources for its core function, is questionable policy. In the specific case of patent oppositions, the addition of a product inspection step when there are foreseeable, identifiable remedies to the production itself violates the basic teachings of Deming.

***See also

http://ipbiz.blogspot.com/2007/04/post-grant-oppositions-job.html

http://ipbiz.blogspot.com/2007/08/mike-at-techdirt-has-it-wrong-on-post.html

http://ipbiz.blogspot.com/2007/06/is-post-grant-opposition-going-to.html

http://ipbiz.blogspot.com/2007/04/post-grant-opposition-to-help-out.html

***Background on the Judiciary Committee, from the Daily Kos -->

Here are the members of the Senate Judiciary Committee.

Democrats: Patrick Leahy, Chairman, Vermont; Herb Kohl, Wisconsin; Dianne Feinstein, California; Russ Feingold, Wisconsin; Chuck Schumer, New York; Dick Durbin, Illinois; Ben Cardin, Maryland; Ron Wyden, Oregon; Sheldon Whitehouse, Rhode Island; Amy Klobuchar, Minnesota; Ted Kaufman, Delaware; Arlen Specter, Pennsylvania

Republicans: Jeff Sessions, Ranking Member, Alabama; Orrin Hatch, Utah; Chuck Grassley, Iowa; Jon Kyl, Arizona; Lindsey Graham, South Carolina; John Cornyn, Texas; Tom Coburn, Oklahoma

Jefferson Beauregard Sessions III (hey, if the wingnuts insist on using President Obama's middle name) is only the ranking member temporarily. When the 112th Congress convenes, Grassley will take over the ranking member post (assuming he gets reelected) or the chairmanship if the Democrats manage to lose a net of 11 Senate seats. In 2012, the plan is for Sessions to take the ranking member spot on the Budget Committee while Grassley will give up his spot on the Finance Committee to take over on the Judiciary Committee. If you haven't guessed, Senators only get to chair or serve as ranking member one committee at a time. Additionally, there are term limits on the seats and the leadership position assignments are typically based on seniority.

***On Deming, the PatentHawk blog had a post. IPBiz agrees with the commenter who said:

Interesting, Hawk. But I don't follow the attempted segue from Deming's teachings to the failure to innovate. Deming certainly did not advocate staying stuck in ruts or NIMBY. He did teach that you can not reasonably manage that which you do not measure. What's the connection? Thanks.

It's separately true that Deming would say fix production rather than adding more inspection.