Barner shapes intellectual property strategy

  She joins Philip G. Hampton, partner at Dickstein Shapiro and former assistant director of the U.S. Patent and Trademark Office during the Clinton administration and Darrell Mottley, principal shareholder of Banner Witcoff and president of the D.C. Bar in a Patent Parlor on the new America Invents Act during Innovation & Equity 2012 on Jan. 15 at B. Smith Union Station.

She served as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director, United States Patent and Trademark Office (2009-2011), before rejoining Foley & Lardner LLP as a partner. She served as a leader in intellectual property (IP) policy, helped develop and articulate the Obama Administration positions on all patent, trademark and copyright issues, both domestic and foreign, and helped promote strategies to thwart the theft of U.S. IP around the world. As Deputy Under Secretary, among other things, she was involved in: • Spearheading the 2010-2015 USPTO Strategic Plan, which is designed to strengthen the capacity of the USPTO and shorten the time it takes to grant a patent and improve patent quality • Driving development of a National IP Strategy to create a framework for considering domestic and international IP policy, protection and enforcement and its relationship to spurring innovation, creating jobs and sustaining long term economic growth • Supporting the Obama Administration’s National Export Initiative, Joint Commission on Commerce and Trade (JCCT), and ensuring a level playing filed for U.S. businesses by focusing on international procurement, protection and enforcement of intellectual property. I led 15 foreign missions in order to articulate and push policy positions including:  Entering into a Memorandum of Understanding (MOU) with India granting USPTO access to India’s Traditional Knowledge Digital Library and traveling to India to assure the India Government of U.S. commitment to utilizing the tool in patent examination;  Executing the first MOU with Russia Patent Office (ROSPATENT) on comprehensive bilateral cooperation with an aim toward improving the administration and effectiveness of intellectual property systems in both offices through exchanges of information and best practices, and promoting the importance of IP for innovation and economic growth;  Working with Brazil patent and copyright office on information exchange and best practices;  Entering into an MOU with China on comprehensive bilateral cooperation to improve the administration and effectiveness of IP systems through information exchange, sharing best practices and worksharing in order to reduce growing backlogs and shorten patent pendency including; making eight trips to China to Beijing, Shanghai, Dongguan, Guilin, Nanjing, and other cities in China to meet with representatives of government, academia, and industry in support of IP protection and enforcement, accompanying a bi-partisan Congressional delegation, and providing them with a first-hand look at the evolving IP landscape in China; through extensive IP litigation and strategic counseling experience devising practical IPR programs in China such as a mock trial proceedings in Guangzhou (highlighting the differences between Chinese and U.S. proceedings), mediation program and propose practical outcomes (challenge process for utility patents). These programs are designed so that they assist in knowledge transmission, but also identify best practice in an IPR regime. Craft country- specific strategic action plans, beginning with China, that tie programs to specific strategic objectives. • Establishing an office within Under Secretary’s office for public outreach, awareness and education. • Spearheading a nationwide workforce for the USPTO and opening of first satellite office in Detroit, MI in order to seek out additional resources and technical expertise in locations across the country. • Improving patent quality  Working on 35 U.S.C. 112 Guidelines to help ensure specificity and clarity in compliance with the requirement that applications distinctly claim the invention so that disclosure to the public is commensurate with the patent rights being issued.  Improve examination guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of KSR Int’l Co. v. Teleflex Inc. and resulting progeny  Working on USPTO examination guidance for determining subject matter eligibility in view of the U.S. Supreme Court decision in Bilski v. Kappos. • Leading the charge that lead to P.L. 111-124 that gave USPTO the authority to spend an additional $129 million of fees collected by the agency in Fiscal year (FY) 2010. • Improving efficiency and adopting new rules for the Board of Patent Appeals and Interferences (BPAI) to simplify the process and reduce the burden on appellants and applicants • Providing technical advice on various aspects of patent reform bills pending in the House and Senate Prior to assuming her position as Deputy Under Secretary in 2009, Ms. Barner spent 27 years practicing in the areas of IP litigation, risk management, and strategic counseling and has tried numerous cases to verdict. At various times during her tenure at Foley she served as Chair of Foley's Intellectual Property Department, Chair of the Intellectual Property Litigation Group., Chair of the China Practice, and a member of the firm's Management Committee.

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