Posts in Government

Hanlon started with statistics relating to the variety of new procedures that were ushered in as part of either phase one or phase two implementation of the America Invents Act (AIA). He started with prioritized examination, which went into effect on September 26, 2011. Between inception and February 19, 2013, there have been 8,554 requests for prioritized examination, with 94% of requests granted. In those cases where the petition was granted there were only 55 days from petition grant to the First Office Action, and the average days to final disposition has been just 168 days. So far there have been 3,667 final dispositions mailed with 1,828 allowances mailed, which corresponds to an allowance rate of 49.9%, which isn’t bad, but didn’t initially strike me as great either.

Hubbell argued that obviousness-type double patenting is not appropriate where the application and the conflicting claim (1) share common inventors but do not have identical inventive entities, (2) were never commonly owned, and (3) are not subject to a joint research agreement. The Patent Office countered that: (1) whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees; (2) identity of inventorship is not required where there is an overlap in inventors; (3) Hubbell did not establish any grounds for being allowed to file a terminal disclaimer; and (4) two-way obviousness analysis is not required because Hubbell admitted that he partially is responsible for the delay that caused the ’685 patent claims to issue first. The CAFC agreed with the Patent Office on each point.

Opponents of effective copyright laws are attempting to leverage the success of the petition into a wide-ranging assault on section 1201 of the DMCA — and, no doubt eventually, on copyright law itself. Along with Khanna, a coalition consisting of the Electronic Frontier Foundation, Fight for the Future, Mozilla, Reddit, and others have launched fixthedmca.org, the ultimate goal of which is to repeal section 1201 in its entirety. These efforts are misguided. Section 1201 is not only required by international obligations, it has also enabled a variety of successful business models — from DVDs to Netflix to Pandora — that have benefited consumers and creators alike in a digital age.

Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office should not have sufficient information to suggest that the application is not novel or obvious. In order to determine something is not novel or obvious you first have to know what it is. I have no objection to the Patent Office putting a 35 U.S.C. § 112 (a) and novelty/obviousness rejection in the same Office Action, where the PTO explains that to the best of their understanding of the invention it would not be novel or obvious for the following reasons.

In order to file an application or view outgoing correspondence online, the practitioner must authenticate using a private certificate and password. The process relies on an antiquated browser plugin, Java, that has not been welcomed into the new operating systems that power modern smartphones and tablets. As a result, mobile prosecution is possible only through a traditional operating system running on a laptop or netbook. To rectify the situation, the PTO will need to break its dependence on browser plugins and on the proprietary authentication system it has licensed from Entrust. Rather than license another proprietary system, the agency should follow WIPO’s example and adopt a standard certificate format compatible with modern browsers’ built-in authentication capabilities.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) and the AutoHarvest Foundation today announced the signing of a Memorandum of Understanding (MOU) to work together to spur innovation and generate jobs in advanced manufacturing. The two organizations will collaborate on the creation of an online environment for innovators to exchange information, facilitate technical discussions, and encourage the growth of entrepreneurial activities. The USPTO opened its first-ever satellite office in Detroit in July 2012, and the MOU is part of the agency’s outreach into the community.

Almost two weeks ago the United States Patent and Trademark Office issued two Federal Register Notices in anticipation of the U.S. converting from first-to-invent to a first-to-file regime. The first were the Changes to Implement First to File and the second was First to File Guidelines. Both are important. The new regulations that make up 37 CFR are found in the former, but much of the meat and potatoes are found in the later. The Guidelines, which the USPTO says they are not obligated to follow, is where the Office spends most of the time comparing and contrasting old pre-AIA 102 with AIA 102. The Guidelines is also where the USPTO explains which cases they believe have been overruled (i.e., Hilmer and Metallizing Engineering) and which cases continue to have relevance. They also selectively cherry pick portions of the legislative history to back up their interpretations.

The U.S. Department of Commerce’s Patent and Trademark Office (USPTO) and National Institute of Standards and Technology (NIST) Manufacturing Extension Partnership (MEP) today unveiled an updated beta version of the web-based IP Awareness Assessment Tool, which is designed to help manufacturers, small businesses, entrepreneurs and independent inventors easily assess their knowledge of intellectual property (IP).

The problem of the RCE backlog is a function of the prosecution dynamic and lack of meaningful oversight into areas where RCEs are common and patents issue only after going on the appeal track. Still, in the press release issued by the USPTO recently discussing the RCE backlog and USPTO Outreach, Acting Director Teresa Rea said: “One of the purposes of this outreach effort is not to eliminate RCE practice, but to enable applicants to better understand the full range of alternative options we have available during the examination process.” This sounds a like the USPTO is blaming the patent community for the RCE backlog. Yes, there are ways to avoid filing RCEs but they all require patent examiners that are willing to participate in a meaningful way. What about the Art Units where examiners practically refuse to issue patents?

The backlog of unexamined patent applications was down over 15.1% in September 2012, compared with October 2010. At the same time, however, the number of unexamined RCE filings grew 95.56%, after peaking at 103.93% in August 2012. In the column above labeled “Totals,” I added the number of unexamined patent application with the number of unexamined RCE filings. When you consider all of these unexamined filings the progress of the USPTO is more modest. There is not a 15.1% dip, but rather a 8.05% dip in unexamined patent filings over this interval. It seems rather clear that the USPTO has traded an unacceptably high unexamined patent application backlog for a still unacceptably high but better unexamined patent application backlog PLUS a ridiculous RCE backlog.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA). The USPTO also today published final examination guidelines setting forth the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application. In particular, the agency’s final examination guidelines inform the public and patent examiners how the AIA’s changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates.

United States Patent and Trademark Office (USPTO), the National Science Foundation (NSF), and NBC Learn, the educational arm of NBC News, today launched an 11-part “Science of Innovation” series to coincide with the 165th birthday of American inventor Thomas Edison. The program represents the latest intellectual property (IP) education efforts by the USPTO and serves as a public-private partnership leveraging the best strengths of federal agencies, industry, and educators to demonstrate the connection between IP and the science, technology, engineering and mathematics (STEM) fields.

I think it is about time the U.S. adopts a small claims proceeding so that patent owners have a meaningful mechanism to seek redress for smaller cases of infringement. Patent owners faced with one or more infringers in the marketplace can experience very real and damaging effects when the dollars involved are measured in the tens of thousands. But under the current patent infringement resolution mechanisms it frequently doesn’t make sense to pursue infringement from a financial standpoint even when infringement is measure in hundreds of thousands of dollars. Indeed, very real infringement can be devastating to small businesses and individual patent owners even though the amounts at stake do not justify the exorbitant costs associated with pursuing patent infringers in federal court.

This all means that the “business method Art Units” are not the only ones charged with examining applications covering computer-implemented methods. In fact, there are Art Units where from a patentee perspective you would really rather be assigned because they have allowance rates in excess of 70%. In fact, one cluster of Art Units identified as covering “Miscellaneous Computer Applications,” which by class is assigned to data processing, has an allowance rate of 72.2% according to data available via PatentAdvisor™.