Posts in USPTO

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.

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.

The amend to the rules of practice in patent cases is for the purpose of implementing the micro entity provision of the Leahy-Smith America Invents Act (AIA). If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA. The fee setting provision in the AIA sets the micro entity discount at 75% of the fees set or adjusted for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.

The United States Patent and Trademark Office (USPTO) today announced that the University of New Hampshire School of Law Library, which was designated as the Concord Patent and Trademark Resource Center (PTRC.) on January 30, 2012, is now open to serve the intellectual property (IP) needs of the public.

The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO) will host its second Clean Technology Partnership Meeting on Tuesday, June 12, 2012, to bring clean technology stakeholders together to share ideas, experiences and insights and provide a forum for discussion on how the USPTO can improve and expand on its clean technology programs.

In the QPIDS pilot, IDS submissions will be considered by the examiner before determining whether prosecution should be reopened. Prosecution will only be reopened where the examiner determines that reopening prosecution is necessary to address an item of information in the IDS. When the items of information in the IDS do not require prosecution to be reopened, the application will return to issue, thereby eliminating the delays and costs associated with RCE practice.

Information on the world’s specialized intellectual property courts can now be found in one place. The Study on Specialized Intellectual Property Courts, a joint effort published by the International Intellectual Property Institute (IIPI) and United States Patent and Trademark Office (USPTO), is the first study to catalog the world’s specialized intellectual property court regimes. Not surprisingly, the study concludes that governments around the world should adopt some form of specialized IPR court to handle intellectual property cases. Specialized IPR courts were found to enhance efficiency, lead to more timely resolution and foster more consistent rulings and outcomes. Such courts are also an important signal to individuals and industry that a country takes intellectual property enforcement seriously, which we in the industry know is a precursor to economic development and outside investment.

The United States Patent and Trademark Office (USPTO) today announced that it will open the current Trademark Law School Clinic Certification Pilot Program to admit 15 additional schools for the upcoming fall 2012 academic year. This pilot program allows law students to practice trademark law before the agency under the guidance of a law school faculty clinic supervisor. Submissions from interested law schools will be accepted through Monday, July 2, 2012.

Washington – The United States Patent and Trademark Office (USPTO) is seeking nominations to fill upcoming vacancies for the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC). Nominations must be postmarked or electronically transmitted on or before June 11, 2012. Submission details can be found in the Federal Registration Notice. The committees were created in 1999 through Patent…

Yes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! If nothing other than offering comic relief, the now infamous Borat patent rejection has hopefully illustrated at least one fundamental truth to the inventor and patent practitioner alike – don’t forget to do a thorough search of non-patent literature. I won’t bore you with citations from the MPEP. We all know what the Manual says. Instead I will attempt to provide some general insights into the examination process.

The Patent Office recently requested comment on the paperwork that applicants submit during post-filing, pre-allowance patent prosecution (Patent Processing (Updating), comment request., 77 Fed. Reg. 16813-17 (Mar. 22, 2012)). This is a highly significant opportunity to seek reform of problematic PTO regulations, one that only comes once every three years. This comment period gives the public access to an oversight officer outside the PTO whose job is to help reduce costs associated with PTO regulations or MPEP guidance that create unnecessary paperwork burden. The PTO has invited the public to challenge long-standing rules, and to seek reform.

Maybe it is the result of the case being of such little importance to the patent system as a whole, or maybe it is just evidence that every blind squirrel finds a nut every once in a while. Whatever the case may be, the United States Supreme Court yesterday did get it right in a patent case. Virtually no one brings appeals from the Patent Office to the district court under § 145 despite the far more favorable review standard, which we have known about at least since 1999 in Dickinson v. Zurko. § 145 will remain an infrequently used relic of the patent system, and we are left to lament that it would have been far better for the Supreme Court to get Mayo v. Prometheus right than for them to get Kappos v. Hyatt right. Sigh.