Posts in Government

The United States Patent and Trademark Office (USPTO) announced today plans for the agency to begin accepting requests for prioritized examination of patent applications – allowing inventors and businesses to have their patents processed within 12 months. It currently takes nearly three years to process the average patent. The program, called Track One, launches May 4, 2011, and is part of a new Three-Track system, which will provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process.

In part 2 of the interview we discuss the energizer bunny, known better as USPTO Director David Kappos. We also discuss what skills she has brought from a private law practice that she feels will help her most at the Patent and Trademark Office. Finally, we discussed initiatives the USPTO is pursuing to assist women entrepreneurs and the inevitable questions about where we stand with patent reform.

Both the House and Senate bills create the opportunity for continual and constant challenges, one right after another. For example, challengers could tie up issued patents in post-grant review, followed by inter partes review and subsequently, or simultaneously, by challenges in one of the Federal District Courts. Thus, the settling of patent rights seems a distant dream if a well funded challenger wants to tie up a patent. The only hope for the patent owner is that with every subsequent challenge it becomes more difficult to challenge. That is what S. 23 sets up by having a “substantial new question of patentability” standard to initiate a post-grant review and then a much heightened “likelihood of success” standard to institute inter partes review.

I found Terry to be extremely knowledgeable and very easy to talk to, which should probably read that I perceive her to be a patent geek just like me. A geek in a good way, of course. Those patent attorneys and agents reading know what I mean. We so enjoy what we do and so infrequently get to talk to anyone about it with anyone who really cares, so when we do the conversation is a blast. Terry Rea has been immersed in everything patents, from prosecution to opinions to interferences and litigation, and I get the sense that she loves patents and innovation. I thoroughly enjoyed my conversation with her.

BIO also is concerned about the inclusion of broader prior user rights in the House bill, and believes that this issue, coupled with the harmful inter partes review changes, could set back efforts to pass meaningful patent reform this year by undermining the broad coalition of American innovators currently supporting patent reform.

The automated petition process uses the USPTO’s new e-Petition system. With e-Petition the data is input through a secure web interface and the petition is decided automatically, eliminating months of waiting for these types of petitions to be docketed, decided and uploaded into Public PAIR (Patent Application Information Retrieval).

Today the House Subcommittee on Intellectual Property, Competition and the Internet, which is a subcommittee of the House Committee on the Judiciary, held a hearing on the America Invents Act, the House version of patent reform. While the House and Senate bills are largely identical, there is one striking difference between the two, and that difference relates to prior user…

The Innovation Alliance is disappointed that the America Invents Act as introduced today in the House of Representatives does not include some important safeguards against the potential for abuse of the post-grant review procedures at the U.S. Patent and Trademark Office (USPTO). In particular, the bill includes a weak threshold for ‘second window’ inter partes review proceedings, one that will allow virtually all challenges to proceed to a trial-like hearing before an administrative patent judge. We believe a higher threshold is needed to enable the USPTO to manage the increased workload of the new administrative review system fairly and efficiently by screening out meritless or unsubstantiated petitions.

A prior user rights defense prevents those who have previously used the patented invention from being infringers. In many parts of the world there are strong prior user rights, which allow those who keep innovation as a trade secret hidden away from the public to later use those trade secrets as a defense to a patent infringement lawsuit. You can’t sue me for patent infringement because I have been hiding, using that innovation you patented as a trade secret. So the party that disseminates the information for the benefit of the public loses in favor of the party that kept the innovation a closely guarded secret. This has never struck me as fair, a good idea or even in keeping with the Constitutional purpose for patents.

The China Road Show is a series of two-day China IP events that the USPTO is hosting across the country to help educate businesses about the realities of piracy and counterfeiting—which cost the American economy approximately $250 billion annually. Day 1 is largely devoted to understanding the patent, trademark and copyright laws in China, as well as enforcement of those rights. Day 2 of the seminar will address § 337 Infringement Investigations by the International Trade Commission (ITC), the challenges presented by counterfeiting and piracy on the Internet and the development of global IP strategies even for small businesses.

I think those that are against first to file are really most worked up about the loss of the across the board grace period for the statutory bar. If the problem is with the grace period let’s talk about the grace period. Misdirection and demagoguing the first to file issue has lead to the weakness of the arguments being exposed and the likelihood that no meaningful debate on the real issue — the grace period — will be possible. I’m here to tell you that those who are making a big deal out of the loss of the ability to swear behind with 131 affidavits are making a mountain out of an ant hill; not even a mole hill.

Late in the afternoon on Thursday, March 24, 2011, the purported patent reform bill from the House of Representatives began circulating. The House patent reform bill is largely identical to the Senate version – S. 23. There are some differences, one rather major difference, but the Senate first to file provisions remain intact. The House bill would still grant the Patent Office the right to use all of the funds collected, as did S. 23. The House bill also would grant the United States Patent and Trademark Office fee setting authority, as did S. 23, but then curiously goes on to set the fees that the USPTO charges. It seems unclear why on one hand you would set the fees and in another section of the bill say that the USPTO can vary any fees defined.

Earlier this week Google received U.S. Patent No. 7,912,915, titled “Systems and methods for enticing users to access a web site.” The patent covers what is known as a “Google Doodle.” The patent application was originally filed back in 2001, and due to Patent Office delay Google was awarded a whopping 2,618 days of patent term extension.

The date of invention relates to your conception. This is true whether you are engaging in an interference proceeding seeking to obtain a claim instead of another who is also seeking the claim, or you are attempting to demonstrate that you can get behind a reference used by an examiner because you have an earlier date of invention. The hallmark of a first to invent system is that those who file second can obtain a patent under very strictly limited scenarios. A byproduct of a first to invent system is that if the examiner finds prior art you can “swear behind” the reference using a 131 affidavit to demonstrate that reference is not prior art for your invention. In both the interference context and the 131 affidavit context there needs to be proof of conception that will satisfy the patent laws.

The USPTO is offering assistance in the form of flexibility on deadlines to the full extent allowable under our laws to Japanese applicants. However, because this catastrophic event occurred outside the United States and did not result in a postal service interruption of the United States Postal Service, the USPTO has no authority to designate a postal service emergency as authorized by 35 U.S.C. 21(a). The fact that the USPTO cannot declare a postal emergency limits what allowances can be made because in the event of a postal emergency the USPTO can treat as filed any paper that would have been deposited with the United States Postal Service but for postal service interruptions or emergencies as designated by the Director.