Posts in Government

On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both Bernie Knight and Ray Chen, the top two attorneys who represent the United States government at the U.S. Patent and Trademark Office. This starts the next phase of USPTO 2.0 interviews, which started earlier in the year. We talked about where these attorneys got their start, who they view the client as being, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.

Though they are unlikely to take center stage during the truncated session before elections or the post-election lame duck session, lawmakers will have to contend with several key copyright issues during the 113th Congress. Thus, no matter who wins on November 6, IP leaders in the House and Senate are likely to use the remainder of this calendar year to set the stage for next year’s copyright agenda. The priority copyright issues for the remainder of 2012 and 2013 are: (1) Anti Piracy Initiatives; (2) Internet Issues; (3) International Agreements; (4) Music Licensing; (5) Book Licensing; and (6) TV Broadcast Issues. Each is discussed more fully below.

The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.

Not only can’t you find the relevant MPEP sections you are looking for through a Google search, but you also cannot find the relevant statutes or CFR sections using Google. For example, I typed in “35 usc 304” into Google. The first link was to the USPTO.gov website, like it almost always is. Unfortunately, however, upon clicking the link I was taken to another “Page Not Found” screen. Ultimately you can get to it by clicking on the new MPEP link provided, scrolling down to the L Appendix, clicking on the L Appendix link and then scrolling down to Section 304. Not a lot more time, but hardly as easy to find information as it was just a few days ago.

In order for one to file a statement of the patent owner in Federal court the submissions must: (1) Identify the forum and proceeding in which patent owner filed each statement, and the specific papers and portions of the papers submitted that contain the statements; and (2) explain how each statement is a statement in which patent owner took a position on the scope of any claim in the patent. See Section 1.501(a)(3). The required explanation must include discussion of the pertinence and manner of applying any prior art submitted to at least one claim of the patent. See Section 1.501(a)(b)(1). The explanation may also include discussion of how the claims differ from any prior art submitted or any written statements and accompanying information submitted under paragraph.

At the conclusion of the supplemental examination if the certificate issued indicates that a substantial new question of patentability is raised an ex parte reexamination will be ordered by the USPTO. The resulting ex parte reexamination, which will address each and every substantial new question identified, will substantially be conducted according to the rules and procedures associated with ex parte reexamination. Notwithstanding, there is one very notable exception — the ex parte reexamination is not limited to patents and printed publications. Additionally, a less consequential procedural distinction is that the patent owner will not have the right to file a statement pursuant to 35 U.S.C. 304.

Section 42.405(c) provides that a derivation is not sufficiently shown unless it is supported by substantial evidence. This includes at least one affidavit addressing communication and lack of authorization. Further, the showing of
communication must be corroborated. One open practical question is whether derivation proceedings will be at all useful. How will the inventor alleging derivation be in possession of sufficient evidence to demonstrate communication and lack of authorization? The best evidence of each will be in the hands of the party who is the alleged deriver, not the inventor claiming to be the source of the invention. Moreover, proving a negative (i.e., lack of authorization) may be challenging, as proving a negative can always be.

The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. That is great, but micro-entity status will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.

The questions asked of the USPTO, and specifically Director Kappos, related to the USPTO interpretation of the grace period in 102(b)(1)(B). At one point, in response to a question, Direct Kappos responded: “We are reading the words just the way that Gene Quinn suggested in his comment.” I do not claim that everything below is in 100% alignment with the USPTO interpretation, but I write now to expand upon my remarks. We have a first to file system with an American flavor, not a first to publish system as so many seem to think.

The proposed fees are at least 22 percent lower for a routine patent process—i.e., filing, search, examination, publication, and issue fees—than the current fee schedule. The current proposed fees also are lower than those originally proposed by the USPTO in February. The USPTO is opening a 60-day comment period in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register.

Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos will participate in both events, joined by several senior USPTO officials. An in-person roundtable addressing the upcoming shift to a first-inventor-to-file system will be held Thursday, Sept. 6, from 1:30 to 4:30 p.m. at the USPTO headquarters in Alexandria, Va. It is open to the public and will be webcast. A separate webinar will be held Sept. 7 from 12:30 to 1:30 p.m. to discuss all aspects of the AIA.

Post Grant Review, Inter Partes Review and the Transitional Program for Covered Business Method Patents were instituted with the goal of improving patent quality by giving third parties methods to challenge patents that are less expensive and less involved than litigation. Each of these procedures is a trial before the Patent Trial and Appeal Board (Board) composed of Administrative Patent Judges and subject to Part 42 of 37 C.F.R., Trial Practice Before the Patent Trial and Appeal Board. The trials allow for limited discovery, which has not been available in Ex Parte or Inter Partes Reexamination, the existing procedures for challenging patents in the U.S. Patent and Trademark Office. Because the discovery is limited, it is unlikely that these procedures will be used in cases where large amounts of evidence may be needed to prove patent invalidity.

Hearing from our online filers will assist us in gathering requirements, creating functional designs, and evaluating product releases. We will hold focus sessions to discuss the proposed process changes. We want to hear your thoughts on how the patent application process can work for you, identify any concerns, and work towards resolutions to create a user-friendly text-based filing system. We look forward to the opportunity to work with you. To participate in these focus sessions or for additional information please send an email to [email protected].

Indeed, the bill’s co-sponsor acknowledges and states “[t]his bill combats the problem of patent trolls by moving to a ‘loser pays’ system for software and hardware patent litigation.” However, the bill’s sponsors fail to explain what makes the frequency, risk, or social harm of “egregious” patent lawsuits any different than those of other “egregious” civil suits in America so as to single out patent right enforcement for a special treatment under civil law. In fact, the following graph shows that in the last four decades the number of patent lawsuits filed per year has risen at slower pace than other IP lawsuits or when compared to all Federal civil suits. Patent lawsuits now constitute a little over 1% of all Federal civil suits – the same fraction as that in the mid 1970’s.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that its Denver regional satellite office will be located in the Byron G. Rogers Federal Building in Denver, Colorado. The USPTO announced plans to open a regional office in the Denver area in July, along with satellite offices in the Dallas-Fort Worth, Texas and Silicon Valley, California, areas as part of efforts to support innovation and creativity, help protect and foster American innovation in the global marketplace, help businesses cut through red tape, and create new economic opportunities in each of the local communities.