Director's Forum: A Blog from USPTO's Leadership
Tuesday Sep 16, 2014

Expanded 2014 Edison Scholars Program to Focus on Litigation Issues

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

I’m delighted to welcome our 2014 Thomas Alva Edison Visiting Scholars to the USPTO. The Edison Scholar program, which began in 2012, enlists the services of distinguished academic researchers to study intellectual property issues that further the USPTO’s mission and the public interest. The scholars devote up to six months of full time service to the agency, or up to a year in part-time service.

Past Edison Scholars have studied ways to improve the USPTO’s efficiency and performance, decrease burdens on applicants, and improve patent quality and clarity. Their work has generated concrete proposals for patent policy and continues to deliver exceptional results.

Because of its success, the White House Task Force on High-Tech Patent Issues directed the USPTO to expand the Edison Scholars program to study an issue that is of particular and urgent interest, abusive patent litigation. Last fall, the USPTO issued a call for proposals and began a competitive selection process to fulfill this mandate. We have five Edison Scholars this year, including three “Research Fellows” who were selected to specifically develop and publish robust data and research on litigation issues. They’ll be working within our Office of Policy and International Affairs, led by Chief Policy Officer Shira Perlmutter. We look forward to the contributions of all the 2014 Edison Scholars on these essential topics.

2014 Thomas Alva Edison Visiting Scholars

Graeme Dinwoodie is professor of Intellectual Property and Information Technology Law at the University of Oxford, Director of the Oxford IP Research Centre, and a Professorial Fellow of St. Peter’s College. Professor Dinwoodie is an international authority on comparative IP law and is the author of five casebooks. He earned his J.S.D. from Columbia Law School.

Research topic: Professor Dinwoodie will study the role of trademark registrations in defining rights as to infringement, whether to confirm market usage rights already in effect or to provide broader protections that enable economic expansion.

Joshua Sarnoff is professor of law at the DePaul University College of Law. Professor Sarnoff has published widely on patent and administrative law and innovation policy, and has been a frequent source of expert testimony on legislative reforms and amicus briefs in the Supreme Court. He earned his J.D. from Stanford Law School and has served on the faculties of American University and the University of Arizona.

Research topic: Professor Sarnoff will study the impact of differing legal standards for patent validity in administrative and judicial settings. 

Jonas Anderson* is an assistant professor of law at the American University Washington College of Law. Professor Anderson is a past Microsoft Research Fellow at the Berkeley Center for Law and Technology. After earning his J.D. from Harvard Law School, he clerked for Judge Alan Lourie at the U.S. Court of Appeals for the Federal Circuit.

Research topic: Professor Anderson will classify and evaluate which types of patent claim terms are particularly difficult for courts and innovators to construe in determining the scope of patent rights. 

Joseph Bailey* is a Research Associate Professor at the University of Maryland Smith School of Business and Executive Director of the interdisciplinary QUEST course of study in innovation and quality systems management. Dr. Bailey studies the economics and public policy of interoperability and e-commerce. He earned his Ph.D. in Technology, Management and Policy from MIT.

Research topic: Professor Bailey will study how machine reading and process improvement can help refine patent examination, particularly in identifying the prior art that legally limits the scope of patent rights. 

Deepak Hegde* is an assistant professor of Management and Organizations at the NYU Stern School of Business. Dr. Hegde has previously served as a visiting scholar in the USPTO Office of Chief Economist and has published on innovation and business strategy in high-technology industries. He earned his Ph.D. in Business Administration from the Haas School of Business at UC-Berkeley.

Research topic: Professor Hegde will study patent examination quality by analyzing of how past policies have affected the USPTO patent quality metrics, with a focus on the downstream incidence of patent litigation.

*Research Fellow focusing on abusive patent litigation

Learn more about the Edison Scholars Program.

Comments:

While the idea of gathering actual data to make policy decisions rather than speculation and rhetoric is very appealing to me, what I am very concerned with is the tone of this entire blog entry. As a patent holder of a substantial number of U.S. patents and pending applications who may need to rely on the enforcement of patent rights to see a return on our decade-long investment in our technology, should somebody decide to simply copy it, I am disturbed by the tone of the Agency tasked with administering those rights. Why is there no "ToolKit" for small businesses whose technology has been stolen by large market encumbents? Instead, we get a toolkit for alleged infringers. That's like a county government sending out a toolkit for squatters who receive eviction notices from property owners. As a start to adjust this "tone," perhaps at the very least Professor Hegde's research could include the disastrous effects on inventors and society as a whole resulting from erroneous withholding of the patent right from deserving inventors as a function of examination quality, and not just problems of erroneous grants.

Posted by Jeffrey A. Birchak on September 17, 2014 at 01:58 PM EDT #

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