Posts in USPTO

The USPTO Roundtable on genetic testing exposed claims that have driven the debate so far to a rare scrutiny.  Perhaps the bonfires being prepared for the accused are premature. One critic condemned universities issuing exclusive licenses as culprits responsible for preventing physician-run laboratories “that are begging to do the test” from offering competing testing services. The underlying notion appears that exclusive licensees who spend millions on test development and clinical validation actually provide shoddy lab work in practice, and that physician-run laboratories could do a better job. If so, no supporting evidence was given.

Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions.

The unfortunate thing is that all of these individuals were getting this question incorrect and anyone who relied on this information moving forward would get the question incorrect. The MPEP section that points to one answer as correct cites an old version of the Rule. The Rule was modified in a Federal Register Notice, which is a testable document and supersedes the MPEP. The new language of the Rule has not yet made it into the MPEP section. The moral of the story is that you have to be very careful when you rely on these forum sites and take advice from someone who is either studying or just passed the exam. They may be giving you good information, but they may be leading you astray.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today opened a new Patent and Trademark Resource Center (PTRC) in Smithtown, New York, at the Smithtown Library to better serve the intellectual property (IP) needs of the public.

David Gaudio was not a registered patent practitioner, but this was not a case where OED went after someone who was only engaged in trademark representation via a reciprocal discipline proceeding. The Law Office of David P. Gaudio, P.C. formed The Inventors Network, Inc. Gaudio was alleged to have engaged in the unauthorized practice of patent law. Gaudio knew that the representation of inventors without being a registered patent practitioner violated USPTO regulations. This case seems significant because it could well signal new USPTO interest in preventing those who are not registered practitioners from preying on unsuspecting inventors.

If I were a patent examiner that hadn’t issued patents for years I wouldn’t want anyone to know that either. Similarly, if I were a Supervisory Patent Examiner (SPE) in an Art Unit that routinely only issued patents after a long drawn out appeal process that resulted in the Board overturning the rejections I wouldn’t want the public to know about that either. Sadly, this type of gaming exists at the Patent Office. There are examiners who only rarely issue patents and Art Units that openly tell patent attorneys that they don’t issue patents unless ordered to do so by the Board. Knowing that this happens, which is supported by hard data, makes it impossible to tolerate the anti-patent zealots who routinely opine about just how easy it is to get a software or business method patent issued. Really? You have to be kidding!

The Board of Patent Appeals and Interferences did something fascinating in Ex Parte Yudoovsky. The Board sua sponte declined to consider an unauthorized new ground of rejection—even though the appellant never filed a petition. In other words, the Board refused to consider a new ground of rejection, because the Examiner failed to designate the ground as “new.”

Vice-Chief Judge Moore: “The statute requires that each of the judges have scientific ability.  It doesn’t actually require particularized training in any one individual specific area.  Permit me to key off of what the Chief said earlier — we do use that to advantage in some instances.  For example, imagine a software controlled electro-mechanical device which is useful in a biotechnology operation.  I could throw four different judges with four different specialties – biotech, electrical, mechanical, and software – on that so that that panel as a whole could understand it better and help each other through the process.  And that is a huge advantage.  We have at least one team here at the Board that’s truly multidisciplinary.  They handle all types of cases from all types of disciplines without regard as to their own personal technical training aspects.”

The Patent Office says that each roundtable event will provide a forum for an informal and interactive discussion of topics relating to patents that are particularly relevant to the software community. So will this be a free-for-all whereby everyone with an opinion, even an ill-formed opinion not based in fact, will be allowed time to rip the patent system and software patents specifically? There is no way of knowing what will actually happen at these roundtable events, and while patents don’t generally generate protests I have sneaky suspicion that we may see something that we have never seen before, which is an unruly crowd of protesters. Perhaps I am worrying to much, we shall see.

Chief Judge Smith: “The unique thing about the job particularly right now – and I think this is true for my job and the Vice Chief Judge job – is that while we have many, many administrative duties they do not remove from us completely the non-administrative judging duties that we have.  And I think we both like a mix in which we also get to the judging, sitting on panels for example.  We are under-emphasizing that part of our jobs right now because we absolutely have to do that.  There’s only so much judging you can get to in the typical 18-hour day when you have so many other things to do.”

Reed Technology and Information Services Inc., a part of the LexisNexis® family and a provider of content management services, announced earlier today that it has joined forces with PatentCore. You may recall that PatentCore is a publisher of online Patent Office analytics, which for the first time has given the patent bar and public a snapshot look at what goes on inside the Patent Office Art Unit by Art Unit and patent examiner by patent examiner.

An ambitious harmonization effort, CPC is the product of a joint partnership between the USPTO and the EPO to develop a common, internationally compatible classification system for technical documents used in the patent granting process that incorporates the best classification practices from both offices. It will be used by the USPTO and more than 45 patent offices – a user community totaling more than 20,000 patent examiners – all sharing the same classifications helping to establish the CPC as an international standard.

The interview took place on the Alexandria Campus of the USPTO in the Madison Building. We sat around a modest conference table in the office of Chief Judge Smith. We chatted for approximately 60 minutes. Smith and Moore give us a rare glimpse into the Board and the day-to-day inner workings of the two top Administrators who also work hard to seek opportunities to stay engaged and join panels whenever possible.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the launch of a permanent Patent Prosecution Highway (PPH) program with the Taiwan Intellectual Property Office (TIPO). The permanent PPH program, which started on September 1, 2012, will continue to permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality.

The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA). Certain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities. The USPTO is revising the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount.