Above and beyond

The IP Hall of Fame Academy selected four outstanding individuals to be the induction class of 2017

The IP Hall of Fame was established in 2006 to identify men and women who have helped to establish intellectual property as one of the key business assets of the 21st century. The aim of saluting individual achievement in this way is not only to acknowledge the vital role played by these innovators in fostering today’s vibrant IP environment and ensuring its continued health, but also to show how central intellectual property is to the global economy and well-being of people around the world.

To identify the inductees, IAM reaches out to the IP community to request nominations. Each year we are overwhelmed by the response and the enthusiasm with which both contemporary and historical figures are put forward for consideration by the IP Hall of Fame Academy – a group which comprises past inductees and IP thought leaders. Between them it is the academy members who make the final induction decisions.

To be an inductee it into the IP Hall of Fame, it is not enough to be deeply talented, highly enthusiastic or profoundly influential: you must be all three, and so much more. That certainly applies to the four inductees for 2017: Antonio Campinos, Charles Gielen, Carl Horton and Philip Johnson.

In attendance at the IP Hall of Fame induction ceremony at IPBC Global 2017, Ottawa (from left to right): Luis Berenguer, head of the communications unit at the EUIPO, who was representing Antonio Campinos; Kenneth Horton, who collected Carl Horton’s induction certificate on behalf of the Horton family; and Philip Johnson (Charles Gielen was unable to attend)

On June 20 2017 more than 500 delegates congregated in Ottawa’s Shaw Centre for the final morning of IPBC Global, during which the four were formally inducted into the IP Hall of Fame. A number of past inductees were in attendance to welcome the new entrants. A pre-recorded acceptance speech from Campinos was played to the crowd, expressing his regret at being unable to attend the ceremony in person. Following this, Ken Horton took to the stage to pay tribute to his brother Carl – who died in December 2016 – and to accept the induction certificate on behalf of the Horton family. Finally, Johnson impressed on the gathered crowd his gratitude for the recognition and his humility in accepting it.

This year’s inductees are profiled on the following pages.

Antonio Campinos

Executive director of the EUIPO

“I certainly don’t think IP offices should be passive: we should play our part actively, in close cooperation with other stakeholders”

António Campinos – collaborating for success

Antonio Campinos, executive director of the EU Intellectual Property Office (EUIPO), has worked tirelessly to improve the effectiveness and efficiency of the agency, while creating a legacy of cooperation and collaboration that will benefit all its users.

You are one of four inductees into the IP Hall of Fame this year. How does it feel to be recognised by your peers this way?

It is a great honour personally but, perhaps more importantly, it recognises the way in which the EUIPO has transformed in recent years. This is a tribute to the contribution that our staff have made to our journey of becoming a customer-centred organisation delivering higher quality registrations, using user-friendly tools. I am proud that the office has deepened knowledge of the role of intellectual property in society and the economy and has also contributed in various ways to modernising the IP infrastructure in the European Union and beyond. These achievements are not the work of one person, they are a credit to the whole team and I feel deeply privileged to accept this recognition on everyone’s behalf.

What inspired you to embark on a career in intellectual property?

In the mid-1990s, as a young adviser to the Portuguese secretary of state for the economy, I was asked to review a big piece of IP legislation and to make sure that it was fit for purpose. After that, intellectual property become a great interest of mine; I was also involved in providing advice on revisions to the European Patent Convention signed in Munich in 2000. Following this, I was invited to become trademark director at the Portuguese IP Office; my career in intellectual property took off from there.

The implementation of European trademark reforms is almost complete and the EUIPO has faced a significant challenge in both adapting its operations and communicating these changes to the community. Can you expand on how that process was managed and the impact it has had on office operations?

It was very important to keep focusing on our operations during this major time of change. Among those transformations was the recognition the IP cooperation is a core activity for us, as well as the continuing development of the observatory. These upheavals coincided with a period of major growth in EU trademark filings, as well as the implementation of austerity measures in EU institutions and agencies in response to the financial crisis. During all of this the EUIPO continued its drive to improve the timeliness and quality of its registration services.

In this context, we adopted a strict project management approach to the trademark reforms, with all departments carrying out tasks under the coordination of our Legal Reform Knowledge Circle. This group brings together relevant experts from across the EUIPO and then reports to the Legislative Reform Project Board, which I chair as executive director.

The reform was tackled in several phases, the first of which was completed in time for the entry into force of the new legislation on March 23 2016. This first phase involved some 200 tasks covering aspects such as the definition of ‘practice’, amendments to the guidelines, updating letters and templates, and changes to the front office, back office and website. It also included training sessions and communication to cover the significant overhaul of fees and governance. At present, we are working on the final phase to implement changes due to come into force in October this year. We have identified around 300 material changes in legal texts which will have knock-on effects on issues such as examination, recordals, oppositions and cancellations, as well as the Boards of Appeal. When transversal issues affecting the whole office are taken into account, these changes translate into a catalogue of some 600 tasks. Apart from the requirements of the legislative reform, this work is worthwhile in its own right because it will lead to a simpler, more modern, predictable and accessible system for users – the principal beneficiaries of the reform.

A core focus of the office has been convergence of practice at European and national level. How did your experience at national office level help you approach this work and how do you reflect on the achievements of the convergence programme? What does the future hold?

In the European Union, we have a two-tier system for trademarks and designs and, of course, for patents there is also the European Patent Office, which is an international organisation. My experience at the national level convinced me that users are best served when national rights and EU or international rights broadly complement each other and where the choices made are based on business needs and not influenced by unnecessary differences in processes and practices, or even differences in costs or efficiency because of lack of access to modern tools. The Convergence Programme was one of the results of this conviction, combined of course, with cooperation on building new shared tools. Today we have seven areas of converged practice, of which five cover trademarks and two designs, while there are several more proposals for voluntary convergence in the pipeline.

What do you see as the biggest obstacle to the convergence of practice at European and national level?

We have already overcome the biggest obstacle by proving that offices can come together and converge practices, provided that there is no over-riding legal obstacle. I think it is fair to say that everyone is now in favour of us continuing on this path. We are working actively on what can be converged immediately rather than waiting for new legislation. What is more, as we complete the second phase of the legislative reform on trademarks, we are trying to ensure that a common view is reached on how this should be interpreted in practice right from the start of the process, rather than trying to converge afterwards. This is a real breakthrough.

In recent years, the EUIPO has expanded its remit and created an array of tools and service offerings, in particular through the European Trademark and Design Network. How does the office measure success in these activities, and what does the future hold?

We can already measure the deep engagement of offices and users in this process, which in itself is impressive. We can also count the number of tools which have been implemented in various offices, and other activities that have been carried out to strengthen the system. We have produced tools covering the entire trademark and design lifecycle, including e-filing, back office and quality. Looking at the modernisation of digital systems, during the first strategic plan, an average of 14 new tools were introduced in each of the national and regional offices throughout the European Union – 372 implementations in total. Under our current Strategic Plan, SP2020 – which was introduced under the new European Cooperation Programme framework, itself introduced following the legislative reform – a further 54 implementations of different projects have taken place since June 2016. These tools, as well as the convergence projects, are already having a global impact. The ultimate measure of success will be to create an EU trademark and design system which works better for users.

How important do you feel it is that offices are proactive actors in the wider IP and enforcement ecosystem, rather than more passive managers of a trademark registry?

Creating an accessible and affordable registration system and granting high-quality rights is an essential pre-requisite for a properly functioning IP system, but it is not the only thing needed. These rights must also deliver what they promise to users – protection for their IP assets. That does not mean that registration offices should get involved directly in enforcement on the ground. However, it does mean that everyone involved in intellectual property has a stake, whether as users, members of the public, IP officials, customs, police officers or judges. I certainly do not think that IP offices should be passive: we should play our part actively, in close cooperation with other stakeholders.

The EUIPO has embarked on the creation of a significant body of IP research, designed to highlight the contribution made by intellectual property to wider society and also to highlight the cost of counterfeiting and piracy. How are these studies being utilised to ensure that the message is truly received?

Reports produced by the EUIPO through the IP Observatory have demonstrated the important economic contribution made by industries which use IP rights intensively, the damage caused by IP infringements in terms of lost income and jobs in legitimate industry and the perception that citizens have of IP rights. This trilogy of studies has been reported in the media and has been widely quoted by officials and politicians. At the level of experts, we can certainly say that this research is part of the debate – perhaps even a central part. Among the general public, few people dispute the importance of ensuring that inventors, creators and performing artists can protect their rights and be paid for their work. However, some citizens still doubt that infringements are really harmful. For any communication to be a success it must be founded on impartially gathered facts. That is the role of the trilogy of studies produced by the EUIPO. These are now influencing the debate and forming the basis of education and communication initiatives at the member state and EU levels. They also play an important role in our cooperation with law enforcement authorities, such as our support for the Europol Intellectual Property Crime Coordination Centre, and our cooperation with Eurojust in creating a specific network for prosecutors.

A number of studies highlight that while support for IP rights is high among EU citizens, more needs to be done to ensure that young people appreciate the contribution made by intellectual property. You have spoken passionately about this topic but how can this awareness be practically achieved?

Clearly there is still a long way to go in getting the message fully across. With regard to education projects it is the remit of the education ministries in the member states to take the lead. The EUIPO has set up a specific network to follow up on the results of its study on intellectual property in education. The network, which is made up of ministries of education from all EU member states supported by the respective IP offices and other relevant stakeholders such as teachers and their associations, is working on a project to encourage and enhance creativity, innovation and entrepreneurship in the classrooms. For other forms of outreach, there are many organisations, country by country, which are well placed to reach out directly to citizens and young people. For the EUIPO it is not so much a question of who should take the lead, but rather what each stakeholder can contribute to creating a better understanding of the role of intellectual property in society and the economy. We are playing an active role in carrying out research, encouraging networking and facilitating solutions (eg, helping to fund kits which teachers can use in the classroom to inspire young people). Ultimately, it will fall to other stakeholders to take the initiative and deliver action on the ground.

What do you think are the biggest challenges facing the IP world today and how do you think they could best be overcome?

The number of rights being granted is accelerating rapidly, with many from developing economies, especially in Asia. The IP system needs greater cooperation in order to ensure that rights granted in different jurisdictions are respected. This is the reason why the EUIPO has invested so much effort in creating shared IT tools, first within the European Union and then spreading their reach internationally. Increasing the scope of the flagship tools such as TMview, Designview, TMClass and DesignClass, is one of the main priorities under the international cooperation strategy set out in the EUIPO’s Strategic Plan – SP2020. These tools contain data from around 60 offices, providing access to almost 42 million trademarks and more than 10 million designs. During 2016 they were accessed, free of charge, more than 1.7 million times by users from all over the world searching for information about what IP rights have already been granted and about classification issues. Granting access to better information is certainly one important step in facing up to the challenge of the increasing number of rights and the globalisation of intellectual property.

The second major challenge is linked to the growth in IP rights, since this also reflects the high pace of technological change. Technology and the way it will shape our future world is simultaneously a huge opportunity and a huge challenge for intellectual property. So-called disruptive technologies and the resulting business models which will be based on them, will pose a number of tricky IP issues. These disruptive technologies include things such as automation, the Internet of Things, advanced robotics, autonomous vehicles, gene sequencing, three-dimensional printing, advanced materials and new payment systems based on distributed bitcoin ledgers. The rise of artificial intelligence, for example, could lead to a redefinition of what constitutes the ‘creator’ of an innovation, while the current definition of ‘ownership’ may also be challenged as digital virtual assets become more prominent. Intellectual property needs to evolve in the face of these kinds of changes in order to remain meaningful and to continue to play its role as a tool that encourages innovation, creativity and ultimately jobs and growth.

Finally, who are your own IP heroes, and why?

I think you only need to look at the list of names in the IP Hall of Fame to find most of my personal IP heroes. So many of the people honoured have been an inspiration in various ways. If I had to single out just one person that would be Margot Fröhlinger. I have been working with her for many years and never cease to be impressed by her energy, determination and total commitment to changing things for the better.

Charles Gielen

IP litigator and educator

“I’m not even sure that we will see the UPC up and running a year from now”

Charles Gielen – multidisciplinary maverick

As a leading litigator and academic, Charles Gielen has inspired generations of IP professionals with his dedication and his mastery of all aspects of IP law.

You are one of four inductees into the IP Hall of Fame this year. How does it feel to be recognised by your peers this way?

It is an absolute honour and I am impressed. I was of course familiar with the IP Hall of Fame and knew it was a great recognition for the best men and women in the field, but never expected to be selected myself.

What inspired you to embark on a career in intellectual property?

It was mere chance. I began my legal career in 1971 as a corporate lawyer at (what is now) NautaDutilh in Amsterdam, where I still work today as of counsel. Back then it was a very small firm. I was an associate working for Leo Wichers Hoeth who was one of very few IP specialists in the Netherlands at that time. Wichers Hoeth’s practice had grown when Georg Bodenhausen left the Netherlands to become the first director general of the World Intellectual Property Organisation (WIPO) and had split his practice between Wichers Hoeth and one other Dutch attorney. Coca-Cola had been acquired as a client by Wichers Hoeth acquired and he subsequently passed them on to me. As soon as I became a partner, Wichers Hoeth and I started writing a treatise on trademark law in Benelux – for some time this was considered a bible on the subject. In the early 1990s I gained a PhD from the University of Utrecht and began to lecture on the subject of intellectual property and to establish my parallel career in academia.

You have been described as “academically exceptional” and are a professor of IP law. How do you ensure that you turn an academic understanding of the law into a practical application that best serves your clients? And how do you teach your students the value of this?

The most rewarding aspect of my academic career has been that I have been able to bring the practical examples and day-to-day experiences of being a litigator to my students. They have really valued that insight and it has given them a taste of what their own careers could hold.

My clients have also gained from my academia as, due to my studies, I believe that I have a greater understanding of the law and ability to better analyse their cases than I would have otherwise. That is not to say that lawyers who do not pursue academia are less capable because of it, but I certainly feel it has enriched my practice.

What would you say has been your career highlight to date?

I have had the pleasure of working on so many interesting cases and for world-leading clients in a variety of industries, from Christian Dior to Samsung. Early in my career it was very rewarding to argue some of the first cases on issues of the newly harmonised EU IP laws.

We are now on the precipice of further harmonisation of European IP laws with the introduction of the Unified Patent Court (UPC) and the Unitary Patent. What are your hopes and expectations for a unified patent system in Europe?

We are still really looking into the blue at the moment: we do not know what to expect. I am not even sure that we will see the UPC up and running a year from now. Brexit has thrown the speedy introduction of the whole system into question. There are also big question marks as to how the United Kingdom could join now that it has elected to leave the European Union. However, it is important to remember that the UPC is not an EU court; rather it is an agreement between countries within the European Union, therefore it could still very well be established in the United Kingdom as well. However, the whole system, including the unitary patent, is based on EU law – the very laws from which the British have elected to step away. It will be difficult for it to now happen with the United Kingdom and will likely go ahead without it.

Despite these challenges, the system itself is certainly a sound one. However, its entire success will depend on the quality of the judges in place. I am pretty confident that there will be a number of judges with good experience in patent law, but there are bound to also be new, inexperienced judges so I expect to see some shopping around by plaintiffs.

What, during your career to date, would you say has been the most important development in trademark law or practice?

When I first began my career in the law, the work I undertook was all on a local level. I could understand and operate deftly in patent law, trademark law – in fact all areas of intellectual property. The introduction of European harmonisation, the creation of EU IP instruments and the increasing harmonisation of patent systems meant that you could no longer work on this local level. Rather, you had to understand decisions handed down across Europe, which was a major challenge. This harmonisation led to the introduction of specialists – in, for example, trademark litigation – as the work became more complicated. I have had the good fortune to work in all fields of IP law for many years, but I do see that it will be difficult for others to do so going forward.

However, I am certainly not against harmonisation and can see that it has merits. Judges on patent courts have increasingly looked to the decisions of their foreign counterparts, and will even pick the telephone up to each other to discuss issues. This collaboration and cooperation between courts was best demonstrated in how quickly the rules for the UPC were created. The panel succeeded in setting out their rules of procedure in an astonishingly short amount of time.

What do you think are the biggest challenges facing the IP world today and how do you think they could best be overcome?

The first thing that comes to mind is the enormous difference in the provision of affordable medicine between the developed and developing world. A fairer system that enables everybody to have access to the medication they need at a price they can afford to pay is still needed. There have of course been attempts to provide solutions to this problem, but a sound one has yet to be found.

Second, the European Union is far too busy dealing with problems of its own creation. I still very much believe in the European Union, but I’m not sure that the complicated regulations it has in place are creating an environment in which businesses can thrive. Today so much time is now being spent by officials in Brussels in dealing with Brexit, when the time should be spent on improving the European Union so that people wish to remain in it and there are no further losses.

Finally, who are your IP heroes, and why?

When I first joined the International Association for the Protection of Intellectual Property (AIPPI), I was very impressed by the way that honorary president Paul Mathély spoke so passionately about intellectual property.

Francis Gurry is another individual with whom I have been impressed. I have had the pleasure of meeting the WIPO director general a couple of times through my work with the AIPPI.

Finally, Professor Robert P Merges. His book Justifying Intellectual Property is, in my opinion, a must-read for anybody who works in our field.

Carl Horton, former head of intellectual property at General Electric, speaking at IPBC Global in Munich in 2010

Carl Horton – an IP champion

Carl Horton, the former vice president and chief IP counsel at General Electric (GE), was appointed to that position in 2007. He joined the company in 1992 as an IP counsel in its plastics and materials divisions, and quickly worked his way up the corporate ladder, becoming lead counsel for a number of businesses before taking the top job. As GE’s vice president of intellectual property, Horton was responsible for all IP matters worldwide across the company’s business groups. Over the course of 20 years, he was lead IP counsel on dozens of acquisitions valued from $10 million to over $10 billion, as well as countless IP disputes.

In addition to his day job, Horton was also a tireless IP advocate who, among other things, held a number of posts with the IP Owners Association (IPO), as well as being a senior figure in the Coalition for 21st Century Patent Reform (21C).

Carl Horton died tragically young on December 31 2016 after a long and courageous fight against brain cancer.

IP Hall of Fame inductee in the class of 2012, Q Todd Dickinson – Horton’s predecessor as vice president and chief IP counsel of GE, and the undersecretary of commerce for intellectual property and director of the US Patent and Trademark Office (USPTO) between 1999 and 2001 – penned this tribute to his friend.

Occasionally, an individual comes into one’s life whose impact is manifest; when that person is a professional colleague, this is especially gratifying. When you get to work with that person directly and he is available to succeed you, you are extremely lucky. I am that lucky person and GE the lucky recipient of all that talent.

To have someone so gifted and who had become such an important factor in critical IP policy discussions pass away at such an early and unreasonable critical age, as happened to GE’s Carl Horton, is an especially cruel loss. But Carl succeeded in packing an enormous amount of hard work and success into the time he was with us, shortened though it may have been.

Carl Horton was born to be a GE lifer and rarely does man meet job so completely. An extremely dedicated, super-talented manager, visionary planner, devoted family man to his wife Jessica and their four children, Carl embodied all that’s best in an executive and leader.

Carl joined GE in 1992, realising that he would find more valuable work experience in-house, and worked as IP counsel for several of GE’s plastics and advanced materials divisions. Growth came quickly and he moved into several increasingly important assignments. From 1995 to 2001, he served as lead IP counsel for GE’s electrical distribution and control business, then the industrial systems business, eventually rising to corporate vice president.

One example of Carl’s talent as a visionary integrator of business strategy and policy, was his leadership in convincing the USPTO to adopt the accelerated Green Technology Patent Programme, and the fact that GE qualified the most applications for it.

While public policy was initially not part of Carl’s natural work background, he took to it quickly and soon earned a strong reputation for trust and in-depth knowledge second to none.

Among Carl’s roles was chairing 21C, the leading organisation seeking to build balance and equity into both the America Invents Act and proposed legislation in following Congresses, including the House Innovation Act.

This was not always an easy task. Frequently attacked as an opponent of, and for trying to water down, patent reform, Carl rose to the challenge both by pointing out the broad range of technologies and interests GE owned, significantly limiting any particular bias, but also by developing a personal style not often found in lobbying, but extremely effective when genuinely present. Loosely characterised as ‘authenticity’, this evoked a sense of trust and value whether Carl was dealing with a staffer or an elected member of Congress, which helped enormously as the rhetoric and even partisanship around legislation grew deeper and deeper. Fair to both sides and highly transparent, he quickly became a highly reliable adviser.

One of a number of people’s favourite anecdotes about Carl illustrates the point. In a profession of receptions and other liquid-fuelled entertainments, Carl would almost always stump bartenders, or at least bring a smile to their faces, with his request for a Shirley Temple cocktail. Only ginger ale and always with a maraschino cherry on a stem, he meant it seriously when he ordered it, and he always got it, without any side of irony.

In addition to 21C, Carl held numerous leadership roles at the IPO, including vice president, treasurer, officer in charge of the 2014 annual meeting and a leader on a number of committees. He received the President’s Distinguished Service Award in 2014.

For all these things and more, we welcome Carl Horton into the IP Hall of Fame, class of 2017.

Philip Johnson

Former head of intellectual property at Johnson & Johnson

“It is frustrating that the post-grant procedure has not been implemented as was envisaged by the drafters of the America Invents Act”

Philip Johnson – 21st century patent reformist

As head of intellectual property at Johnson & Johnson, Philip Johnson was a prominent and highly influential voice for measured, balanced patent reform in the United States. Despite recently retiring, he continues to be a strong IP advocate.

You are one of four inductees into the IP Hall of Fame this year. How does it feel to be recognised by your peers this way?

It is very humbling. The IP Hall of Fame Academy is made up of highly accomplished individuals and that they saw it fit to select me for induction goes beyond expectations.

What inspired you to embark on a career in intellectual property?

Both my parents were inventors: my mother was a nuclear physicist and my father an industrial chemist. They had both been granted patents for their inventions and so, unlike most children, I was aware of patent attorneys and came to understand what they did. Almost all of my family were scientists who had, or were working towards getting, advanced degrees in science. I followed the same path in college and never considered going to law school until a friend of mine bet that I would not do as well if I were to take the law school admission test. I accepted the bet and, because I had no intention of going to law school, I was very relaxed when I took the exam. To everyone’s surprise, I did shockingly well. Given the results, I thought that I may as well apply to the top five law schools in the country so that when they turned me down I would continue with my plan to go to medical school. Only they did not turn me down and I ended up being offered a full scholarship to Harvard Law School, which I accepted.

When I graduated from Harvard as a lawyer with an undergraduate degree in biology, I was advised that there were two areas of law for which I would be particularly suited: environmental or patent law. I opted for patent law as I had little interest in environmental law and also because of my family history of inventors.

You worked for Johnson & Johnson for more than 40 years, as external counsel first before moving in-house. How did the two roles compare and what prompted the move in-house?

I worked for 27 years in private practice and during that time my experiences varied dramatically. I started out drafting applications for inventors and – because of my biology degree – undertaking work for hospitals and universities. However, I had taken a theatre minor in colleague and the drama of the courtroom appealed to me. This drew me to litigation, which I specialised in for the latter two-thirds of my career in private practice.

I had clients in a wide variety of industries and one of those was Johnson & Johnson, with whom I had been working since 1976. Over the years, I had developed a friendship with the chief patent counsel, Ciamporcero, and, through my work with the company knew everyone on the company’s executive committee, as well as all of the other patent attorneys there. Sadly and unexpectedly, Ciamporcero was then diagnosed with a brain tumour. Despite a brave fight, it became clear to him that he would not be able to continue in his role without assistance. On his suggestion, I was offered the role of chief patent counsel and, at the age of 51, I decided it would be a good time to try something new. I accepted the position on the condition that Ciamporcero and I would work together for as long as he was willing and able. Unfortunately, he took a turn for the worse shortly after I started that and passed away six months later.

Johnson & Johnson is a truly international organisation operating through about 275 companies in 110+ countries. Because of this, the company readily supported my involvement in international IP organisations and my interest in understanding other countries’ patent systems. The goal was not just to determine their potential impacts on its businesses but also to foster the implementation of sound and sustainable IP policies.

You held the position of president of the IPO. What did you learn from that experience, and the challenges of heading up an organisation that represents such a diverse range of patent owners?

The broad diversity of IPO’s membership is both its great challenge and its greatest strength. If a consensus on IP policy is reached among members, it sends a strong message to policy makers, which increases the likelihood that that policy will be adopted. Policy makers are generally reluctant to support the interests of one industry over another, so the aim is to construct a unitary policy that satisfies everybody. When the IPO board reaches consensus, it means that the proposal balances the interests of a broad range of IP stakeholders and is non-discriminatory.

As well as the work that you have undertaken to secure Johnson & Johnson’s position in the marketplace, you have been a played a key role in shaping the wider IP environment. Can you talk me through your role in the drafting and passing of the America Invents Act?

The birth of the act goes back years to recommendations from a bipartisan study undertaken by the National Academy of Science. These formed the basis of a number of the provisions of the legislation and were reflected in the many different patent reform bills introduced but not passed over the seven years leading up to the act’s passage. Early on in this process, it became clear that a consensus on this legislation could not be reached within the IPO’s board. However, there were separate organisations to which many companies belonged which better represented their individual interests when it came to patent reform. In addition, several coalitions of interested stakeholders were also formed. Johnson & Johnson – along with GE, Caterpillar, Eli Lilly, 3M, Proctor and Gamble – formed 21C. Membership of 21C quickly grew to about 55 companies from 19 different industries. While most of the other coalitions were made up of those who saw themselves either as likely patent plaintiffs (eg, the Innovation Alliance) or as likely accused-infringers (eg, the Coalition for Patent Fairness), 21C comprised manufacturers which saw themselves as being on both sides of these disputes and which thus wanted the system to be fair to both patentees and accused infringers. The principal goal of 21C therefore became to find a reasonable middle ground which would be fair for all parties.

We had some extraordinary talent on the 21C steering committee: experienced patent attorneys with deep knowledge of the law and an ability to help draft effective legislation. We were thus able to assign different aspects of the proposed bills to different members, who quickly became the resident experts on those issues. I was the only one on the committee with extensive experience litigating and trying patent cases, so I was tapped to be the 21C expert on litigation-related issues, such as damages and fee shifting. As it turned out, these provisions became among the most controversial in the different bills, leading me to testify about half a dozen times before the House and Senate Judiciary Committees.

One of the biggest changes to the US patent system as a result of the America Invents Act has been the creation of the inter partes review regime. What are your thoughts on how these have evolved?

It is frustrating that the post-grant procedure has not been implemented as was envisaged by the drafters of the act. The overriding concept of the America Invents Act was to increase reliability in the system and in the quality of the patents being granted. The National Academy had recommended the adoption of a post-grant opposition procedure akin to that used in Europe as a way of improving patent quality and reliability. The United States already had a life-of-the-patent ex parte re-examination procedure and an inter partes re-examination procedure, the latter of which was widely viewed as too cumbersome and drawn out to be effective. It was believed that a streamlined post-grant review process would satisfy the recommended objective. Nonetheless, there were stakeholders at the time who were calling for the post-grant review period to extend the life of the patent. The problem with this, of course, was that there would be no incentive to encourage early challenges; potential challengers could lay in wait while the patent holder invested time and money in the innovation and build a market for it, only to be deprived of its benefit through belated challenges by later copyists.

The compromise that was eventually reached allowed all-issues challenges to be brought as post-grant reviews for a short time after the patent issued, after which inter partes review challenges could be brought which could only raise issues under Sections 102 (anticipation) or Section 103 (obviousness), and then only on grounds based solely upon prior patents or printed publications. This scope was chosen because it mirrored that already available in ex parte re-examinations. The provisions in the bill regarding post-issuance proceedings were thus written very specifically so that challenges which were based on any information extrinsic the explicit disclosures contained within prior patents or printed publications could not be raised in inter partes reviews but would instead need to be raised earlier, in post-grant reviews. It was thought that this would assure patent holders that they would not thereafter be put in a position of great vulnerability.

As part of the America Invents Act’s implementation efforts, David Kappos formed a six-person committee – including myself – to recommend ways in which the USPTO should implement the new rules. We worked hard to come up with detailed proposed regulations for, among other things, post-grant reviews and inter partes reviews, which were approved and jointly submitted to the USPTO by the American Bar Association’s IP law section, the IPO and the American Intellectual Property Law Association (AIPLA). Unfortunately, several of the key recommendations were ignored by the USPTO, while others were added that materially altered the natures of these proceedings. Among other things, these changes made post-grant review and inter partes review challenges much more likely to be instituted and made them far more favourable to patent challengers, leading to almost four times more inter partes review institutions than the USPTO had projected, and to rates of invalidation about twice those of ex parte re-examinations. It had reached the point where former USPTO Director Michelle Lee recognised these concerns and asked for industry feedback on how they should best be addressed.

Do you think that further reform of the US patent system is necessary?

The US Supreme Court has unfortunately thrown patent eligibility into a quagmire and has made it difficult for people to understand what is and is not eligible. There is a growing consensus among the patent community that this needs to be addressed through legislation. Not only are the rulings inconsistent with each other, but they cannot be applied uniformly, which has led to much confusion and uncertainty. The IPO passed a resolution earlier this year in support of legislative amendments to Section 101, which pertains to patent eligibility, and I believe that they will be very influential in pushing this forward.

What would you say has been your career highlight to date?

I enjoy almost everything that I do, but one thing that stands out is my involvement in the IPO Education Foundation (IPOEF). I have had the honour of presenting the IPOEF’s Distinguished IP Professional Award to exceptional recipients at each of the past nine IPOEF back tie dinners, and it has been a pleasure to see these worthy people receive the recognition they so richly deserve.

Looking forward, how do you feel you can continue to contribute to the US patent system?

There are a number of possibilities. I am still on the executive committee and the board for the IPO and am active with the AIPLA and the Sedona Conference. I speak frequently and have launched an IP consulting practice. Then there is, of course, the speculation surrounding my potential appointment as director of the USPTO. We shall have to wait and see.

Finally, who are your IP heroes, and why?

There are many individuals who have inspired me, including a good many members of the IP Hall of Fame. I am thinking especially of my dear friend Carl Horton, with whom I am inducted this year. I had the greatest respect for Carl, and he is sorely missed by the IP community as a whole, and by me personally.

Many of the other IP Hall of Fame inductees are also good friends from whom I have learned a great deal. These include Mike Kirk, Bob Armitage, Todd Dickinson, Gary Griswold, Herb Wamsley, David Kappos and Paul Michel. I am inspired by their dedication to the IP field, as I am by many of the other inductees of the Hall of Fame – particularly those who have devoted their lives to public service.

These, and the many others in the profession I admire, are people of extraordinary character who have worked tirelessly for the public good. They have acted as stewards, placing the long term interests of the IP system above the parochial interests of their current positions, with the goal of stimulating and rewarding innovations that improve the human condition. Few other callings in life are more worthy.

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