Posts in Government

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the selection of nine additional law schools to join the Trademark Law School Clinic Certification Pilot Program this fall. The program allows law students to practice trademark law before the USPTO under the guidance of a faculty clinic supervisor.

The United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on Tuesday, July 31, 2012, that relate to the statute of limitations provisions for disciplinary actions brought by the Office of Enrollment and Discipline (OED) at the USPTO. Subsection (e) is added to clarify that the one year period for filing a complaint may be tolled by a written agreement between the involved practitioner and the OED Director. The Office agrees that tolling agreements may provide both the Office and the practitioner with additional time to resolve matters without a complaint.

For well over a year I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Disclosures of third-parties who independently arrived at the invention will be used against the inventor. Now that the USPTO has come out with examination guidelines we find out the truth. I was right all along.

GUEST CONTRIBUTION BY USPTO DIRECTOR DAVID KAPPOS… President Obama’s Global Development Policy — the first by a U.S. Administration — recognizes that raising the living standards of humanity is not just a moral imperative for the United States; it is vital for our economic and national security. Patents for Humanity advances this policy by leveraging the power of invention to improve lives. I invite all patent holders to consider how your inventions could further the aims of the President’s Global Development Policy. If you are actively addressing humanitarian needs with your patents, please apply to our Patents for Humanity prize competition by August 31st, 2012.

Licensing U.S. intellectual property strengthens the economy and improves our trade balance. Section 337, the statute that regulates unfair practices in import trade, is a key element of the nation’s trade laws and ensures that American innovators, including licensing companies, will not be harmed by the importation of goods that infringe valid and enforceable U.S. patents. Importers of foreign made products – both U.S. based and foreign companies – have appealed to Congress for several changes to Section 337 that would, in effect, limit access to the ITC and/or weaken the powers of the ITC to deal with cases of unfair trade practices. Weakening the ITC’s jurisdiction would benefit foreign economies, foreign competitors, and other foreign manufacturers to the detriment of the U.S. economy.

This new final rule eliminates 37 CFR 1.99, which provided for third-party submissions of patents, published patent applications, or printed publications in published patent applications, but did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to up to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever is earlier.

The Detroit USPTO will create approximately 120 highly-skilled jobs in its first year of operations alone. The IP experts in the office will work closely with entrepreneurs and help further reduce the backlog of patent applications and appeals. Reducing the backlog of patents and simultaneously speeding up the process will allow businesses to move their innovation to market more quickly, saving critical time and resources.

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program. The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program. Further inquiry will be made into whether the program should be extended further or made permanent. During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

David Kappos today announced plans to open regional USPTO offices in or around Dallas, Texas, Denver, Colorado, and Silicon Valley, California. These offices are in addition to the already-announced first USPTO satellite office to open on July 13 in Detroit, Michigan. The four offices will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating new economic opportunities in each of the local communities.

It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key. Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

With approximately 140 signatories to the Final Act, the World Intellectual Property Organization (WIPO) Beijing Treaty on Audiovisual Performances, or the “Beijing Treaty,” strengthens intellectual property protections for actors, musicians, and dancers globally, by requiring countries to ensure updated and consistent standards of protection for performers in audiovisual works.

The one thing that will be markedly different from federal court practice, however, is that for the most part only registered Patent Attorneys or Patent Agents will be able to appear before the Patent Trial and Appeal Board. The Patent Office considered broadly permitting practitioners not registered to practice by the Office to represent parties at the Patent Trial and Appeal Board. Notwithstanding, the Patent Office decided against allowing non-registered practitioners from representing parties at the Patent Trial and Appeal Board the proposed rules set forth in February 2012. The USPTO explained this was because they believed that making the practice open to non-registered attorneys would present burdens on the Office in administering the trials and in completing the trial within the established timeframe and Office rules.

It will enhance the development and review of innovative new therapies through increased transparency and scientific dialogue, advancements in regulatory science and strengthened post-market review. It will also increase FDA’s access to external expertise to improve the drug review process. FDASIA will foster timely interactive communication with sponsors during the drug development phase as a core Agency activity to facilitate the conduct of efficient and effective drug development programs and help make safe and effective drugs available to the American public in a timely manner.

Earlier today David Kappos, the Director of the USPTO, testified before the Senate Judiciary Committee at the Senate’s first oversight hearing of the America Invents Act. Among other things, Director Kappos noted that the USPTO continues to move forward on AIA implementation, saying that the much anticipated new rules packages to implement the next round of AIA changes will be released on or before August 16, 2012. Kappos also revealed that the USPTO received over 600 comments relative to the location of the additional Satellite Patent Offices called for in the AIA. Kappos told the Senators that he expects to complete that review process and announce the next Satellite location something this summer. Kappos also discussed patent harmonization, Track One, the Patent Prosecution Highway, the new pro bono program and more.

If you have not tried to use the After Final Pilot you should really give it a try. At our firm we have found examiners quite willing to work with us After Final under the Pilot Program and have had successful results. While not appropriate to do everything you really may want to do After Final, many times you can make at least some substantive changes that would have normally required the filing of an RCE or Continuation. I personally think the Pilot has already proven to be a success and hope that the USPTO will continue to extend the deadline until this can ultimately be made permanent.