Protecting and Encouraging Technological Innovation		Our Purpose	Position Statements	Key Legislation & Public Policy	Employee Inventors
National Inventor's Hall of Fame		Issues & Activities	Online Resources	Testimony & Communications	Committee Info

PURPOSE

NEXT COMMITTEE MEETING: FRIDAY, 23 APRIL 2010 in the IEEE-USA's offices at: 2001 L Street, NW Suite 700 Washington, DC 20036 TIME: 12:30pm ROUNDTABLE EVENT: (rescheduled) FRIDAY, 19 MAR 2010 IEEE-USA and the IPC are hosting a roundtable discussion wit interested stakeholders on "Patent Applications & Commonly Used Terms: Can Standardized Dictionaries Enhance Patent Quality and Speed the Review Process?” Amicus Curiae Brief filed in the U.S. Supreme Court by Dr. Lee Hollaar (author) and IEEE-USA in the In Re Bilski process patent case. EE Times, Kappos Sketches Out Plans for Patent Office - IPC Chairman Keith Grzelak quoted after Wednesday, 29 July Senate confirmation hearing on the nomination of David Kappos as USPTO Commissioner

The IPC's objective is to promote IP issues of importance to the IEEE U.S. membership (employed engineers, faculty, scientists, inventors, tech workforce, entrepreneurs, etc.), including fast moving technology, technology transfer, inventor's rights and U.S. competitiveness and innovation. The IPC prepares testimony and position statements, drafts legislation, and delivers expert testimony before the U.S. Congress & the United States Patent and Trademark Office.

The IPC is often called upon to offer advice to the U.S. Copyright Office, Office of Science and Technology Policy, the United States Trade Representative Office, and to the Office of the Assistant Attorney General for Antitrust issues.

All IPC-developed positions represent a consensus of a diverse group of engineers and patent attorneys.

ISSUES & ACTIVITIES

During the 111th Congress (2009-2010), the IPC is focusing their efforts on the patent reform issue. The IPC is prepared to also act - providing input to Congress and the administration as necessary - on other IP issues as they arise.

JAN 2010 What Does the Bilski Hearing Tell Us?, Today's Engineer, by IPC member Nate Bailey and Jill Browning

1 SEPT 2009: Lee Hollaar (the author) and IEEE-USA file a joint Amicus Curiae brief in the In Re Bilski process patent case before the U.S. Supreme Court. Oral arguments in this case are scheduled for 9 November 2009. The Court's opinion should be published 30-90 days after the oral arguments.

23 OCT 2009: The following is in response to questions generated by the recent amicus brief filed the In Re Bilski process patent case. Some individuals believe that:

"(1) algorithms should not be patentable subject matter, since the patenting of algorithms hinders progress in the study and improvement of algorithms;

(2) the US Supreme Court has essentially ruled that algorithms are not patentable subject matter,

(3) the U.S. Patent Office and the lower U.S. Federal Courts have effectively allowed algorithms to be patentable subject matter, simply via implementation on a general purpose computer."

IEEE-USA agrees that algorithms per se should not be patentable subject matter. As with all of IEEE-USA's public policy activities, the members of the Intellectual Property Policy Committee debated the issues found in the Bilski court case. A vote occurred in which a majority determined the path of IEEE-USA's actions. The IPC discussed the issue of whether algorithms should be patentable subject matter prior to agreeing to join the amicus brief; the committee's decision on this was an overwhelming majority.

Some believe that the IEEE-USA should have taken the same position as the Free Software Foundation which states that the USPTO should never grant software patents. On the other hand, for many years, the IEEE-USA has taken the position that software should be patentable subject matter. For example, a programmer or engineer should not be deprived of a patent for an invention that would be otherwise patentable if the invention were to be made, for example, mechanically. The issue at hand for IEEE with the Bilski case, in great part, is just that. We believe that the position stated in the amicus (which goes back to the very beginning of U.S. case law) is that a patent should be granted when the process includes steps that must be taken by a machine. Note that "patentable subject matter" means that the invention/patent still must meet all of the other requirements, including nonobviousness and innovation.

The IEEE-USA IPC has worked hard over the years with their fellow IEEE members, and with the USPTO and the US Congress to help improve the quality of issued patents. To throw out *all* software patents because some issued patents should have been declared obvious or taught by the prior art, is akin to "throwing out the baby with the bath water."

IEEE-USA believes that software should be patentable subject matter, but also that much more care should be given to all of the other issues that come up in reviewing a patent application -- e.g. whether the invention is obvious or taught by the non-patent prior art.

Whether software should be patentable subject matter is a separate question from how to better handle questions of obviousness or prior art. While these other questions were not part of the Bilski case, the amicus did state: "While using a machine may make a claim statutory, if the method itself is known in the prior art, simply adding a machine to perform the method does not necessarily make the claim non-obvious."

The Bilski decision at the Court of Appeals for the Federal Circuit, if left as the law would have harmed many more IEEE members than the position proposed by the amicus brief. Although Bilski's claim was to a business method, there is a growing number of court and USPTO decisions that apply these principals to methods carried out on a computer.

IEEE-USA IPC committee members continue to work with and debate these issues with colleagues who have in the past fully agreed with the FSF view. However, those discussions will often result in agreement that there are indeed some truly novel and non-obvious software inventions that warrant granting of a patent. Viewpoints are changed from one of "software should never be patentable" to be one of "some non-obvious and truly innovative software should be patentable, but too many patents are issuing for software that is either obvious or not innovative over the prior art." We agree with that there are far too many patents issuing on software which are either obvious or for which there exists non-patent prior art.

NATIONAL INVENTOR'S HALL of FAME

The National Inventors Hall of Fame™ honors the women and men responsible for the great technological advances that make human, social and economic progress possible. Each year, the Selection Committee - including representatives of IEEE - of the National Inventors Hall of Fame Foundation selects inventors for induction. Their peers and the public nominate Individuals for selection.

Collegiate Inventors: The Hall of Fame also awards collegiate inventors for their contributions. The program - presented in partnership with the United States Patent and Trademark Office - is designed to recognize, honor and encourage innovators at the early stages of their careers, and is open to undergraduate and graduate students who are (or have recently been) enrolled in a college or university in the United States or Canada.  Since its inception in 1990, the Competition has awarded over $1 million to young innovators, working alone or in teams, for their outstanding contributions to society and for their innovative work in discovering breakthroughs and solving engineering and scientific challenges.  Past winning inventions and inventors have ranged from biotech to nanotech, from chemical engineering to electrical engineering and from robotics to optics.

IEEE's PRINCIPLES OF SCHOLARLY PUBLISHING

In 2007, IEEE's leadership engaged in a series of strategic discussions related to the IEEE Envisioned Future. The IEEE Publication Services and Products Board (PSPB), and in particular its Strategic Planning Committee, focused efforts on current challenges in the scholarly publishing field.

To provide a framework to discuss solutions to those challenges, PSPB drafted IEEE's Principles of Scholarly Publishing. The IEEE Board of Directors reviewed and adopted the principles in November 2007.

LEGISLATION

• 111th Congress: Introduced Legislation of Interest:

Senate - S.515 ( Summary and info on changes from 110th Legislation)

House - H. R. 1260

EMPLOYEE INVENTORS

IEEE-USA Wants Feedback on Pre-Assignment Agreements - IEEE-USA wants your thoughts, experiences and suggestions about intellectual property pre-assignment agreements. Please submit your response by e-mail to pre-assignment@ieee.org

This is a research program. All submitted data is voluntary and will be used for informational purposes only. Any reports and findings will be depersonalized. If you wish to receive results from this investigation, so indicated in your e-mail by providing contact information.

JUN 2008 Today's Engineer article, "What You Need to Know about Pre-Assignment Agreements to Protect Your Intellectual Property"

NOV 2005 The IPC approved draft legislation that would establish limits for employment agreements clarifying what intellectual property created by an employee can be claimed by the company and what belongs to the employee. Text of draft legislation.

Intellectual Property & The Employee Engineer by Orin Laney

TESTIMONY & POLICY COMMUNICATIONS

Also see a full of all IEEE-USA initiated testimony and communications to the U.S. Congress and the Administration.

• Letter to House and Senate Leaders and Judiciary Committee members opposing adoption of the Patent Reform Act of 2007 (S. 1145/H.R. 1908) (27 August 2007)
• Coalition letter to key Congressional leaders expressing concerns with certain provisions of the Patent Reform Act of 2007 (S1145/H.R. 1908). (19 June 2007)
• Letter to Rep. Joe Barton endorsing The Motor Vehicle Owners' Right to Repair Act of 2005 (S. 2048). ( 16 June 2006)
• IEEE-USA amicus brief on inducement of copyright infringement in electronic file sharing filed in Metro-Goldwyn-Mayer Studios v. Grokster (U.S. Supreme Ct.) (24 Jan. 2005)
• IEEE-USA amicus brief on reverse engineering for interoperability filed in Davidson vs. Blizzard (8th Cir. Ct. App.) (24 Jan. 2005)
• Letter to Senator Orin Hatch (R-UT) concerning voluntary infringement of copyrights (S.2560)(8 July 2004)
• Letter to U.S. Senate urging support for provisions of the U.S. Patent and Trademark Fee Modernization Act of 2003 (H.R. 1561) that would end the practice of patent fee diversion. (12 March 2004)
• IEEE-USA Amicus Brief in Baystate Technologies, Inc. vs. Bower (2 June 2003)
• Statement for the record of the House Judiciary Subcommittee on Courts and Intellectual Property's hearing on the U.S. Patent and Trademark Office: Fee Schedule Adjustment and Agency Reform Proposals. (18 July 2002)
• Letter to Senators Leahy and Hatch endorsing the Patent and Trademark Office Authorization Act of 2002 (S 1754) (18 Jan. 2002)
• U.S. Supreme Court discusses IEEE-USA amicus brief during oral arguments on Festo Corporation vs. Shoketsu Kinzoku Kogyo Kagushiki, Ltd. case. (8 Jan. 2002)
• Letter to Key Senate Appropriators and to the U.S. Patent and Trademark Office urging restoration of PTO funding levels cut by the House of Representatives in the FY 2001 Commerce, Justice, State and Judiciary Appropriations Bill (H.R. 4690). (7/14/00)
• IEEE-USA Amicus Curiae brief supporting appropriate uses of reverse engineering, submitted to the California Sixth District Court of Appeals in the case of Brunner vs. DVD Copy Control Association (No. H021153) (7/5/00)
• IEEE-USA to the National Conference of Commissioners on Uniform State Laws concerning the proposed Uniform Computer Information Transaction Act (UCITA). (7/20/99)
• IEEE-USA letter to the National Conference of Commissioners on Uniform State Laws concerning reverse engineering and the proposed Article 2B of the Uniform Commercial Code. (10/9/98)
• IEEE-USA letter to the U.S. Senate regarding pending consideration of the Collections of Information Antipiracy Act (H.R. 2281) in the Senate. (9/8/98)
• IEEE-USA Recommendations for the Collections of Information Antipiracy Act (H.R. 2652) (Download and print as Win97/Word 7 doc or PDF file)
• IEEE-USA letter to the House Commerce Committee concerning Internet Service Provider liability issues in the WIPO Treaties Implementation Act (H.R. 2281). (6/11/98)
• IEEE-USA letter to the House Commerce Committee concerning Section 3 (Copyright Protections Systems and Copyright Management Information) of the WIPO Treaties Implementation Act (H.R. 2281). (6/5/98)
• IEEE-USA letter to the House Judiciary and Science Committees on the Information Antipiracy Act of 1998 (H.R. 2652) (5/18/98)
• IEEE-USA letter to Rep. Howard Coble on Section 3 (Copyright Protections Systems and Copyright Management Information) of the WIPO Treaties Implementation Act (H.R. 2281) (4/2/98)
• IEEE-USA Letter to Rep. Howard Coble on the proposed Collections of Information Antipiracy Act (H.R. 2652) (3/16/98).
• IEEE-USA Statement to the National Conference of Commissioners on Uniform State Laws forwarding comments on a proposed draft uniform system for the licensing of intellectual property and computer software (Amendments to UCC Article 2B). (2/23/98)
• IEEE-USA letter to Senate Majority Leader Trent Lott urging legislative action on the the Omnibus Patent Act of 1997 (S. 507) (10/9/97)
• IPC released IEEE-USA Action Alert 97.3, which calls on members for help in promoting the American Innovator's Protection Act, draft legislation which would create a new form of intellectual property protection to address the needs of innovators and the rapidly changing markets. (8/29/97)
• IEEE-USA Statement prepared for the U.S. Senate Judiciary Committee concerning the Omnibus Patent Act of 1997 (S. 507) (5/7/97)
• IEEE-USA Statement prepared for the U.S. House of Representatives Judiciary Subcommittee on Courts and Intellectual Property concerning the 21st Century Patent Improvements Act of 1997 (H.R. 400) (2/26/97)
• IEEE-USA Statement prepared for the U.S. House of Representatives Judiciary Subcommittee on Courts and Intellectual Property concerning the Patent and Trademark Office Surcharge Extension Act of 1997 (H.R. 673) (2/26/97)

Legislative Archives

DMCA Review Materials

INDUCE Act Materials & MGM v. Grokster, Supreme Court Case No. 04-480

Festo Amicus Materials

Blizzard v. Internet Gateway, 2005 - IEEE-USA seeks to protect right to reverse engineer for interoperability in amicus brief filed in 8th Circuit Court of Appeals

WEB RESOURCES

INTELLECTUAL PROPERTY POLICY COMMITTEE

The 17-member committee meets approximately four times a year in Washington, DC and Northern California.  Additionally, 45 other IEEE members serve as corresponding members of the IPC and assist with drafting position statements, amicus briefs, and all communications with policy makers.

2009 Committee Members:

Chair: Keith Grzelak - Spokane, WA

Vice-Chair: Glenn Tenney - San Mateo, CA
Staff:  Erica Wissolik - Washington, DC

**Photos from a September 2007 Capitol Hill event promoting
IEEE-USA's position on patent reform legislation in the 110th Congress**

(L. to R. ) IPC Chairman Keith Grzelak, 2008 IEEE-USA President Russ Lefevre, IEEE member and inventor Dean Kamen & 2007 IEEE-USA President John Meredith

(L. to R.) 2007 IEEE-USA President John Meredith, IEEE member and inventor Steve Perlman and 2008 IEEE-USA President Russ Lefevre