Posts in USPTO

The United States Patent and Trademark Office (USPTO) will host a ceremonial signing Thursday for patent no. 8 million at the Smithsonian American Art Museum. Acting U.S. Commerce Secretary Rebecca Blank and Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos will present the patent to Second Sight Medical Products, Inc., for a visual prosthesis apparatus that enhances visual perception for people who have gone blind due to outer retinal degeneration. Following the signing, company President and CEO Robert Greenberg will demonstrate the new product, Argus® II.

That there was a majority (and a dissenting) opinion in the remand of Classen wasn’t surprising. But that there was yet a third “additional views” opinion would likely not have been predicted by anyone. And it is that “additional views” opinion, along with the majority and dissenting opinions, that will certainly generate a “firestorm” through the Federal Circuit, and which may eventually reach the Supreme Court. The judicial donnybrook on the question of what the standard is (or should be) for patent-eligibility under 35 U.S.C. §101 is about to begin in earnest.

The United States Patent and Trademark Office (USPTO) today announced the designation of Iowa’s Davenport Public Library as a Patent and Trademark Resource Center (PTRC). As the 81st library in the nationwide network, Davenport marks Iowa’s return to the PTRC program and serves as the first center geared away from the “paper depository” concept towards electronic access and training for patent and trademark information.

Earlier today the Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued U.S. Patent No. 8,000,000. The 8 million patent was issued to Second Sight Medical Products, Inc., for a visual prosthesis apparatus that enhances visual perception for people who have gone blind due to outer retinal degeneration. The invention uses electrical stimulation of the retina to produce the visual perception of patterns of light. The product – the Argus® II – is currently in U.S. clinical trials and has received marketing approval in Europe.

The United States Patent and Trademark Office is poised to issue U.S. Patent No. 8,000,000, which will likely happen on Tuesday, August 16, 2011. This got me to thinking — when exactly can we expect U.S. Patent 9,000,000 to issue? Then my mind wandered to Office pools and I heard the immortal words of Fred Flintstone: “Bet, bet, bet, bet, bet….” So I thought it might be a little fun to engage in some speculation. I pick Tuesday, May 24, 2016.

Yesterday the United States Patent and Trademark Office profiled U.S. Patent No. 1,000,000, which was issued on August 8, 1911. Under the current numbering system for patents, U.S. Patent No. 1 was issued on July 13, 1836 to John Ruggles of Thomaston, Maine for his invention related to the locomotive steam engine. Therefore, it took just over 75 years to issue 1,000,000 United States patents. Today the U.S. Patent and Trademark Office is poised to soon issue patent number 8,000,000, perhaps as soon as next week. Just over 5 years since U.S. Patent No. 7,000,000 issued.

If you are a serious inventor you need to go to this Conference. Last year there were inventors who came to the USPTO campus for the two-day event from all over the East Coast, and those that I talked to thought it was well worth their time and money. Where else are you going to be able to meet Senior USPTO officials and talk to them one-on-one? There will be patent examiners and trademark examining attorneys present to answer your questions. Local intellectual property attorneys will give their time to participate in teaching sessions, as well as giving free consultations to attendees to answer questions. Even if you have to travel to California and stay in a hotel for a couple nights you will get far more out of the Conference than you will spend. I understand money is tight, but serious inventors, whether they are newbies or old pros, will gain a tremendous amount of valuable information and personal connections by attending the Conference.

Cloture is the only procedure by which the Senate can vote to place a time limit on consideration of a bill or other matter, and thereby overcome a filibuster. Under the cloture rule (Rule XXII), the Senate may limit consideration of a pending matter to 30 additional hours, but only by vote of three-fifths of the full Senate, normally 60 votes. Without 60 votes cloture fails and debate continues. Unfortunately for those who would like to see patent reform derailed, the fact that there was unanimous consent in the Senate for a cloture vote almost certainly suggests that there will be at least 60 votes to end debate on H.R. 1249, which will bring it to a vote, likely sometime later in the week of September 6.

The real sin is that reexamination could be a much better process. Those in Congress talk about alleviating the burden on the district courts by having a reexamination proceeding available, but they don’t seem to appreciate why it is that reexamination is under utilized. On top of that, patent reform circulating in Congress does absolutely nothing to revamp reexamination in a way that would streamline the process and make it more appealing. What patent reform does do, however, is add yet another procedure to bog down the Patent Office while not allowing the Patent Office to set fees and keep those fees they collect to do the work that is promised when they accept those fees. So if patent reform passes you can anticipate that the reexamination pendency numbers will get even more ugly, making the option even less appealing.

In Duramed, the invention claimed in U.S. Pat. No. 5,908,638 (the “’638 patent”) involved a conjugated estrogen pharmaceutical compositions for use in hormone replacement therapies. The critical aspect of the claimed invention was the moisture barrier coating (MBC) which surrounded the composition. Claim 7 (which depended from independent Claim 1) specified that this MBC “comprises ethylcellulose.” During patent prosecution, the examiner rejected both Claims 1 and 7 for obviousness under 35 U.S.C. § 103. As a result of an interview with the examiner, Claim 1 was amended to include the recitation in Claim 7, and in due course, the ‘638 patent issued. Sounds to me like a classical instance of prosecution history estoppel coming into play and barring any application of the doctrine of equivalents.

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings. It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office. Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant. The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.

Ocean Tomo released the results of its Patent Quality Benchmark Study. The Patent Quality Study is intended to provide a benchmark for those studying patent quality across the 430 United States Patent Classes as defined by the United States Patent and Trademark Office. The Study reflects Nanotechnology (class 977) as the number one technology class for patent quality.

Hardly a month passes without there being yet another Patent Prosecution Highway (PPH) announcement from the United States Patent and Trademark Office. The PPH is lauded by the USPTO with great frequency, and for good reason. But what exactly is the PPH and how do you use it to your benefit? Through the end of June 2011 there have been only 6,657 PPH requests, with upwards of 40,000 registered and practicing patent attorneys or agents in the United States, which means there is not a lot of collective experience with the PPH despite the obvious advantages.

The vast number of America’s companies that need patents to prosper and grow should fear the post-grant provisions for challenging patents in H.R. 1249, the patent reform bill passed last month by the House of Representatives. In a system already plagued by delays in granting patents, they threaten to delay courts from enforcing patents once finally granted. This threat has received little attention, perhaps because advocates of the bill promise promptness that they cannot deliver.

In almost all cases, inter partes reexamination is better than ex parte reexamination, except of course where the requester wants to stay anonymous or the application from which the patent issued was filed before November 1999. The opportunity to reply to the patentee’s arguments and to address the specific concerns of the examiner is quite valuable. This is especially true where the examiner cites his or her own prior art. Issues commonly evolve over the course of reexamination, so that arguments in an ex parte request often are no longer persuasive by the end of the proceeding. I would add that some of the frequent users of reexamination, such as Apple and Google, almost always select inter partes reexamination when it is an option.