The IP Factor

Yesterday, I had the privilege to attend a very well run and well constructed full day program dedicated to the America Invents Act. The highlight of the program, was, without a doubt, a lecture by Judge Randall Rader, the Head of the US Federal Circuit Court of Appeals.  Judge Rader is in the enviable position that his interpretation of the amendment to the patent law is likely to prevail when they are litigated. This is reason enough to hear him. Additionally, Rader is an accomplished speaker and his presentation was highly entertaining.

Rader started by wishing everyone a Good Year (Shana Tova) in heavily accented Hebrew, but then noted that it wasn’t actually the Jewish New Year at all. He went on to say all sorts of nice things to the appreciative audience, about Israel being heavyweight patent filer despite its small population, and that Israelis have a survivalist mentality that serves them well in the modern era of fierce global competition.

The main thrust of Rader’s presentation focused on what he saw as being the central issue of the America Invents Act; that America becomes a first-to-file regime, abandoning their anomalous first-to-invent system, thereby coming into line with the rest of the world. However, Rader noted with satisfaction, that the grace-period has been retained. In his opinion, this protects inventors from killing their patenting chances by first publishing or demonstrating their innovations. Rader expressed his hope that now that the US had made a massive move towards Europe in adopting the first to file regime, that perhaps Europe should reciprocate by also adopting a grace period.

Rader invited questions from the audience, and it seemed that many of those present were less than convinced that the judge was correct that the amended law reduced uncertainty and really promoted greater similarity between countries. I pointed out that as far as both novelty and inventive step (obviousness) are concerned, there was still significant differences. My good friend Larry Rublin made a short and succinct observation that made it apparent that he was proficient at defining systems, as would be expected from a patent attorney. In contrast to most of the audience, Larry’s mentor, Heidi Brun, went on record to the effect that she believed that the grace-period was positive, since it gave something to tell the inventor who had already exhibited.

I found myself realizing that my preference for first-to-file was that it provided certainty based on simple to establish facts.  Judge Rader apparently believes that patent protection is a reward for inventing and contributing to knowledge, and so the uncertainty that prior publication brings should be allowed, despite it somewhat complicating the system. I suspect that Heidi’s position reflected both her personal empathy with the inventors and also the patent attorney’s (self) interest to enable clients to protect their IP. Another reflection that came to me whilst listening to Judge Rader, was how unfortunate it is that Israel does not have dedicated IP judges. The final thought, seeing Rader’s stars and stripes necktie, and the green with white polka dot thing wore by sponsoring attorney Colb, was that there is apparently a correlation between the eminence of the speaker, and the ridiculousness of the tie.

The pastries served during the coffee break were freshly baked and delicious, and there was a selection of both tea and herbal infusions. Disappointingly, the coffee was either instant or botz (hot water poured over ground coffee).  Nevertheless, the speakers were sufficiently interesting that quality caffeine wasn’t necessary to stay awake.

Judge Rader was followed by a light-hearted but thought provoking presentation by Dr Dan Goldstein and Benjamin Fishman, both senior patent attorneys at Colb, each wearing formal business suits and fairly conservative ties. They proposed a number of reasonable scenarios and amply demonstrated that the law, as legislated, left a lot of uncertainly, and presumably the courts will have their work cut out over the next few years. Judge Rader was teased a little in the presentation, but he took it well, and showed his sharp legal mind  in one of his responses, by succinctly distinguishing between the aspects of the scenario presented that were a consequence of the new legislation, and the aspects that were equally problematic under the old law, or simply due to the complications of plausible, if convoluted, scenarios.

After lunch, comprising filled rolls and an orange vegetable soup, the program continued with sessions compered by Dr Yoav Mazeh and Dr Ofer Tur-Sinai, young lecturers at ONO Academic College, showing a nice collaboration between the two closely situated law faculties.

Colb himself spoke about the statistics of reexamination and came to the conclusion that after investing large sums of money, most clients obtain a patent that if they tried to enforce, would be invalidated or at least considerably narrowed, and suggested that attorneys should tell their clients.

Dr Ofer Tur-Sinai chaired the final session. David Zviel, IP Director – NDS,, spoke about the ethical conflicts faced by in-house counsel. David argued that in general, the pressure resulting from dealing with ethical dilemmas faced by in-house counsel were greater than those faced by attorneys working for patent firms. Unfortunately, for obvious reasons, he didn’t illustrate this assertion with concrete examples.

Professor Orli Lobel cut an impressively elegant figure in a well tailored jacket, and stylish designer jeans. For some reason she postulated that it was easier for a large corporation to make a decision and to pursue a policy than it was for an independent inventor. She backed up her position with some empirical evidence culled from the effect of the reform to the Canadian patent law that was in some ways similar to the American Invents Act. Her presentation was followed by one by Suzanne Erez, in-house IP counsel for IBM Israel, who wore a more homely knitted dress and flat shoes, and who walked around a lot whilst presenting. It was not clear whether she was gently poking fun at the earlier and mre formal speakers, or if Suzanne simply and justifiably felt at home with the audience of her peers, and felt no need to dress to impress. She focused on key issues that the act could and should have related to. All the presenters significantly contributed to the program and even without Judge Rader’s keynote presentation, the day would have been informative and worthwhile.

The event attracted about 100 people, and for Judge Rader’s presentation, the lecture hall was packed,  with people standing in the aisles.

This was the fourth such annual event hosted by Bar Ilan University and co-sponsored by the Jerusalem College of Technology and S. T. Colb Patent Attorneys. Although the food served at last year’s conference, held at the Tel Aviv Hilton was of a higher quality,  in my opinion that program, featuring attorneys from Fish Richardson was a little too commercially oriented for academic institutions like Bar Ilan and JCT to be identified with, despite being of a high standard.

It was certainly a better program than that offered the year before where the Bar Ilan – Colb collaboration examined the future of business method patents  after Bilski, despite pre-empting the decision it was supposed to analyze. It also featured too many academics having little knowledge of real patent issues.

In summary, this year’s program was informative, topical, well organized, well attended and thoroughly enjoyable. I congratulate all the speakers, and thank Professor Bitton, Seth Heller and Sanford Colb for organizing the event. We note with pleasure that Professor Arieh Reich, the Dean of the Bar Ilan Law Faculty announced that this January IP event would continue to be held annually.