Posts in USPTO

This will be the first time that Lee has had a confirmation hearing. The timing suggests that the Obama Administration and Senator Reid think that they can get Lee confirmed prior to the end of this Congressional session, which may well be the case. Assuming that this hearing will be more than just a show, there are a number of difficult questions that should be asked of Lee… Why is the Patent Office secretly subjecting applications to extraordinary scrutiny? Do you support fee-shifting legislation to combat the perceived problem of “patent trolls”? Does Congress need to step in and amend 35 U.S.C 101 to provide a more clear definition of what is patent eligible?

The United States Patent and Trademark Office (USPTO) will be conducting a roundtable on December 2, 2014 to solicit public opinions concerning the USPTO’s use of crowdsourcing to identify relevant prior art. The roundtable will be held in the Moot Court Room, Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY 10003. It will begin at 1 pm Eastern Standard Time (EST) and end at 5 pm EST. The meeting will also be accessible via webcast.

IPWatchdog attends the USPTO Innovation Festival at the Smithsonian Nation Air and Space Museum.

The Smithsonian’s National Air and Space Museum will host an Innovation Festival Nov. 1 and 2, a collaboration between the Smithsonian and the U.S. Patent and Trademark Office. The festival will highlight accomplishments of American inventors and the spirit of innovation. It will feature displays, talks, performances and craft projects for children and adults.

Michelle Lee: ”I’ve spent my entire career engaged in innovation. I grew up a tinkerer, always looking to learn how things worked and how things could be improved. That passion led me to become an engineer, which then later led me to become an intellectual property attorney and advisor to high-tech companies. I’ve prosecuted patents; asserted patents; defended against infringement; and licensed, bought, and sold patents, sometimes for very large sums of money. So I share your conviction, gained through years of firsthand experience, that IP has tremendous value and is a driver of innovation.”

Immediately prior to becoming Director of the un-opened Silicon Valley Patent Office, from 2003 to 2012, Lee was the Deputy General Counsel and Head of Patents and Patent Strategy at Google Inc. Google has been a outspoken critic of the U.S. patent system and based on their public positions and lobbying it is clear that the company would like to see software patents abolished and the patent system significantly curtailed. Recently other large Silicon Valley companies have split with Google and have started to work to promote the importance of patents as a tool for American innovation.

The new service will allow the USPTO and the SIPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant. With this new service, applicants will no longer need to obtain and file paper copies of the priority documents; however, they are still responsible for ensuring that priority documents are provided in a timely manner.

The latest cooperation between KIPO and the USPTO also achieves the goal of KIPO classifying its patent collection in of the Cooperative Patent Classification system ahead of schedule. Starting January 1, 2015, KIPO will begin classifying its entire new patent collection using CPC.

Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters…

At the end of July, the Patent Trial and Appeal Board (PTAB) hosted a press conference to discuss ongoing progress with patent trials which have been or are being conducted under the terms of the America Invents Act (AIA). Scott Boalick, Acting Vice Chief Judge of the PTAB and head of the PTAB’s Trial Section, answered questions from the audience on various aspects of the AIA trials, as well as offer questions for public comments being sought by the U.S. Patent and Trademark Office in its attempts to determine how and if the AIA patent proceedings can be improved.

Patent owners must modify their strategies during prosecution to make their patents and portfolios less susceptible to post grant challenges. This strategy must take into account the cost of filing a petition by a challenger. Patent owners must obtain enough claims and enough patents to make it extremely expensive for a challenger to go down the path toward an administrative patent trial where the deck is stacked against the patentee. This will require patent owners to obtain patent claims with numerous dependent claims that cover as many variations as possible, but also to ensure that the dependent claims build on one another little by little so as to create a claim set that refers back to as many previous claims as possible. Such a claim mosaic will raise the filing fee that must be paid to institute a post grant challenge.

My review indicated that 44% of patentees in IPR proceedings (those owning the patents undergoing challenge by way of IPR) are PAEs. I defined a PAE as an entity with the primary business purpose of generating revenue from patents. Even with my conservative definition of PAE, and allowing for differences between my definition and that used by Patent Freedom], the difference between 44% and 2% can only be described as startling. The incidence of patents owned by PAEs that undergo IPR challenge appears to be disproportionately more than the incidence of all patents that are owned by PAEs – and substantially so. Those that argue PAE patents are of low patent quality should welcome this finding. Note later reference to the correlation between patents that are both challenged and litigated – PAE patents may be challenged at a higher because PAEs disproportionately participate in patent litigation.

Although the current administration talks the talk of promoting invention and innovation, they are influenced by special interests that have negative views regarding patents and the patent process, particularly in view of the “patent troll problem.” Unfortunately, it appears that the reason for the long delay in selecting a USPTO head lies almost exclusively with the administration’s and Congress’ views on the patent troll issue, i.e., the head person must be willing to make whatever changes to the patent system to curtail patent trolling, apparently regardless the effect on the patent system as a whole.

The USPTO announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property (IP) creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math (STEM) education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources.