1. Patent System Reform(s) 2007 EDUCAUSE Policy Conference May 16, 2007 E.R. Kazenske Microsoft Corporation

2. Why “Reform” may have an “s” Legislation Rule Making Operational Judicial

3. Microsoft Position on Patent Reform(s) Ensure the quality of patents and the patent system Minimize abusive litigation Promote international harmonization Improve accessibility to the patent system for all innovators

4. Bicameral, Bipartisan Legislation H.R. 1908 and S. 1145 (PTO/Prosecution) First-inventor-to-file Grace period All applications published at 18-months Assignee filing & inventor oath requirement Third party prior art submissions with comments PTO Expanded Rulemaking Authority Inter parte Re-exam expansion Post-Grant Review Procedures “Second-window”

5. Bicameral, Bipartisan Legislation H.R. 1908 and S. 1145 (Litigation) Expansion of Prior User Right Apportionment of damages Willful Infringement Venue

6. Past Legislation Issues NOT in H.R. 1908 or S. 1145 Eliminating Best Mode Requirement 271(f) Repeal Inequitable Conduct

7. USPTO Proposed Rule Changes USPTO Stated Objective Focused Examination Operational Efficiency Improved Quality of Issued Patents

8. Rule Changes Limit number of claims examined 180 comments received Final package at OMB Limit number of continuations 330 comments received Final package at OMB New Accelerated Examination Procedure Effective August 25, 2006 Information Disclosure Statement (IDS) 55 comments received Remains under consideration

9. USPTO Patent Peer Review Project Connecting the Scientific/Legal Community to the Patent Examination Process Goal: Improve the quality of issued patents by giving the examiner access to better information/prior art An open network designed to bring the best prior art information to the forefront Manageable for the examiner Relevant to the community Final decisions made by the USPTO on the basis of statutory standards

10. Project Development U.S. Patent and Trademark Office New York Law School Academic Advisors and Project Team Steering Committee/Sponsors Advisory Board http://dotank.nyls.edu/communitypatent

11. The Pilot Summer 2007 USPTO Technology 2100 (Computer Architecture and Software) 250 applications with participant consent over 1 year timeframe Participants to date: CA, GE, HP, IBM, Intellectual Ventures, Microsoft, RedHat Project Lead: NY Law School with the USPTO

12. How will it work

13. Concentrating on the Claims The software is designed to focus attention on the claims Designs, directions, and tutorials focus on this goal With the found prior art, assess relevance to the claims

14. Evaluation What is the level of expertise of those participating What is the impact on examiner decision-making Is there an impact on patent quality Is there an impact on pendency or examiner productivity Is there gaming with the system

15. Judicial Focus Today Supreme Court eBay v. MercExchange (injunctive relief) Microsoft v. AT&T (271(f)) KSR v. Teleflex (non-obviousness) CAFC In re Kahn (non-obviousness) In re Nuijten (pat. eligible subject matter)