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U.S. PTO announces this year’s Edison Scholars

By Jessica M. Karmasek | Sep 18, 2014

WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office announced Wednesday its Thomas Alva Edison Visiting Scholars for 2014.

The program, which began in 2012, enlists the services of “distinguished” academic researchers to study intellectual property issues that further the agency’s mission and the public interest.

In the past, Edison Scholars, which devote up to six months of full-time service to the PTO or a year of part-time service, have studied ways to improve the office’s efficiency and performance, decrease burdens on applicants, and improve patent quality and clarity, among other topics.

This time around, the White House Task Force of High-Tech Patent Issues directed the PTO to expand the program to study abusive patent litigation.

In response, the office last year issued a call for proposals and began a competitive selection process to fulfill the mandate.

Five Edison Scholars have been chosen, including three “research fellows” who were selected to specifically develop and publish “robust” data and research on litigation issues.

They are:

  • Graeme Dinwoodie, a professor of Intellectual Property and Information Technology Law at the University of Oxford, director of the Oxford IP Research Centre, and a professorial fellow of St. Peter’s College. Dinwoodie is an international authority on comparative IP law and is the author of five casebooks. He earned his law degree from Columbia. He will study the role of trademark registrations in defining rights as to infringement, whether to confirm market usage rights already in effect or to provide broader protections that enable economic expansion;

  • Joshua Sarnoff, a professor at the DePaul University College of Law. Sarnoff has published widely on patent and administrative law and innovation policy, and has been a frequent source of expert testimony on legislative reforms and amicus briefs in the Supreme Court. He earned his law degree from Stanford and has served on the faculties of American University and the University of Arizona. Sarnoff will study the impact of differing legal standards for patent validity in administrative and judicial settings;

  • Jonas Anderson, an assistant professor at the American University Washington College of Law. Anderson is a past Microsoft Research Fellow at the Berkeley Center for Law and Technology. After earning his law degree from Harvard, he clerked for Judge Alan Lourie at the U.S. Court of Appeals for the Federal Circuit. As a research fellow, Anderson will classify and evaluate which types of patent claim terms are particularly difficult for courts and innovators to construe in determining the scope of patent rights;

  • Joseph Bailey, a research associate professor at the University of Maryland Smith School of Business and executive director of the interdisciplinary QUEST course of study in innovation and quality systems management. Bailey studies the economics and public policy of interoperability and e-commerce. He earned his doctorate in Technology, Management and Policy from MIT. Also a research fellow, Bailey will study how machine reading and process improvement can help refine patent examination, particularly in identifying the prior art that legally limits the scope of patent rights; and

  • Deepak Hegde, an assistant professor of Management and Organizations at the NYU Stern School of Business. Hegde has previously served as a visiting scholar in the PTO’s Office of Chief Economist and has published on innovation and business strategy in high-technology industries. He earned his doctorate in Business Administration from the Haas School of Business at UC-Berkeley. Also a research fellow, Hegde will study patent examination quality by analyzing of how past policies have affected the PTO patent quality metrics, with a focus on the downstream incidence of patent litigation.

From Legal Newsline: Reach Jessica Karmasek by email at

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