Posts in Government

David Kappos to Leave the USPTO

I have just learned that David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, will be stepping down and leaving the agency effective the end of January 2013.

The Ghost of Lemelson: PTA Consequences of Exelixis v. Kappos

On November 1, 2012, a federal district court (EDVA) issued an order that may have profound consequences for calculations of patent term adjustment (“PTA”). The district court believed that the PTA promised by 35 USC § 154(b)(1)(B)(i), which relates to Requests for Continued Examination, only comes into play if a RCE is filed within the three-year period from the application’s filing date. Before discussing the court’s order, let me review the law and regulations about PTA—which can be complex. In 1994, Congress altered the calculation of U.S. patent terms. Previously, Congress set the patent term as 17 years from patent issuance. After the change, Congress set the patent term as generally 20 years from the filing of the patent application.

International Patent Cooperation: Trilateral Conference and IP5

These IP5 Offices together handle approximately 80% of the world’s patent applications. The IP5 began meeting in 2007 and have since worked together to explore ways to further optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.

Artists Oppose Internet Radio Fairness Act Pushed by Pandora

The stars, who included Alabama, Sheryl Crow, CeeLo Green, Billy Joel, Maroon 5, KISS, Ne-Yo, Katy Perry, Pink Floyd, Megadeath and many others, praised Pandora, saying: “We are big fans.”  But with massive growth in revenues and a successful IPO under its belt, the artists are wondering why Pandora is pushing Congress to slash musicians’ pay.  “That’s not fair and that’s not how partners work together,” the open letter explains. The Internet Radio Fairness Act Pandora is promoting would get them out of their 5 year old negotiated deal. Doesn’t Congress have more pressing matters?

8 New PTAB Judges Sworn in at USPTO

Leading up to the swearing in, PTAB Vice-Chief Judge James Moore explained the need for the new Judges, as well as pointing out that the USPTO has already had 13 covered business method patent reviews and 42 inter partes reviews initiated just since they became available on September 16, 2012 in the second wave of implementation of the America Invents Act (AIA). “We have doubled our hearing review capacity,” Moore explained. He also said that the approximately 27,000 cases pending at the Board this year “was a high water mark and we will recceed from there thanks to the help of those sitting behind me,” referring to the soon to be sworn in APJs.

4 More Years: Patent Consequences and Other Election Musings

In addition to the USPTO remaining in the capable hands of Director Kappos for the foreseeable future, with the reelection of President Obama that means that there could be a real possibility that AIPLA Executive Director, Q. Todd Dickinson, will be on any short list for future appointments to the United States Court of Appeals for the Federal Circuit. While no one knows for sure, given the age of Judges on the Federal Circuit it would seem likely that President Obama will have an opportunity to appoint at several Judges to the Court, and given the Court’s workload they could and should be granted more Judgeships anyway.

Why Bipartisanship Matters

The Bayh-Dole Act unlocked those discoveries that were made with taxpayer money. It allowed businesses and nonprofits, such as universities, to retain title to their inventions that were made with federal funds and to license them to private companies for commercialization. It was a brilliant piece of bipartisan legislation that set the stage for commercializing hundreds of products, including life-saving treatments to which many of us cancer survivors owe our lives.

4 More Days Until Election 2012

It is undeniable that the Director Kappos has revitalized the Patent Office, but does the fact that the Patent Office is now well run mean that President Obama has earned 4 more years?

PTO Expands Pro Bono Patent Assistance to Nation’s Inventors

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the start of two new regional pro bono patent programs in California and the District of Columbia—the result of the USPTO’s cooperative efforts with the California Lawyers for the Arts and the Federal Circuit Bar Association (FCBA).

USPTO Proposes Updated Professional Conduct Rules

This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law. Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.

USPTO Updates Registration Examination for New Patent Practitioners

As part of a wider effort aimed at stakeholders fully benefitting from the sweeping reforms of the America Invents Act (AIA), the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it has updated a critical examination for applicants seeking to practice in patent cases before the Office. The USPTO anticipates making another update to the examination when the first-inventor-to-file provisions of the AIA become effective in March 2013.

USPTO Announces Three New Patent Prosecution Highway Partnerships

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the October 1, 2012 launch of a new Patent Prosecution Highway (PPH) with the patent office of the Czech Republic, and the planned launch of two additional PPHs with the patent offices of the Philippines and Portugal in January 2013. The expedited examination in each office will allow applicants to obtain corresponding patents faster and more efficiently in each country.

USPTO and EPO Publish Advance Version of Cooperative Patent Classification System

The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) today announced early publication of a classification system meant to speed the patent granting process for applicants to both Offices. The Cooperative Patent Classification (CPC) system and finalized CPC definitions are now available in advance of the January 1, 2013, official launch. The CPC is a joint USPTO-EPO project aimed at developing a common classification system for technical documents in particular patent publications, which will be used by both offices in the patent granting process.

Patent Bar Exam Refresh: PTO Now Testing New Materials

We also know from past history that when the Patent Office first starts to test new material they disproportionately weight it in the database of questions so you are likely to be heavily tested. We anticipate that the newly testable material will generate between 15 to 20 questions on the Patent Bar Exam starting immediately, or nearly immediately. This newly testable information comes on the heels of AIA phase 1 and KSR, Bilski and 112 Guidelines that all started to become tested in April 2011. We anticipate that the newly testable material that has come online since April 2011 will make up approximately one-third of your exam. That is 3o-35 questions.

Interview Finale: USPTO Attorneys Knight and Ray

In this segment, which is the interview finale, we discuss the heightened expectation of fairness placed on government attorneys, what it is like to work for USPTO Director David Kappos, how the USPTO determines when to give guidance to examiners to reconcile case law, specifically using the KSR Guidelines as an example. Before Knight and Chen had to go I also managed to ask a few of those familiar “get to know you” questions at the end. Wait until you hear Knight’s answer for favorite pastime or hobby. Talk about a Renaissance man! The interview does end rather abruptly, but that was because we literally kept talking through the last minute they were available and on to their next set of meetings.