Posts in USPTO

Those rushing to pay fees before September 26, 2011, will save 15%, but the Patent Office will not have access to that money. The budgetary calendar resets on October 1, 2011, which marks the start of Fiscal Year 2012. While the America Invents Act does not put an end to fee diversion key Congressmen in the House of Representatives pledged that they would allow the USPTO to keep 100% of the user fees collected. Thus, presumably, fees paid starting October 1, 2011, would go to the USPTO to use for the purpose intended by the payor; namely the examination of applications and ongoing business operations of the agency.

So the point is that there is the language of the bill, and then there is what we were told was in the bill, which actually isn’t what is in the bill if you are reading the plain meaning. In the coming days President Obama will sign the bill and then the Courts will embark on the long journey to decipher the text and tell us what it means. All the while the USPTO will be proposing and then enacting new rules. Patent law, practice and procedure is in a state of flux to say the least.

It looks like my prediction on Tuesday that the Senate would pass H.R. 1249, the America Invents Act, prior to President Obama’s much anticipated jobs and economy speech that begins at 7:00pm ET today, Thursday, September 8, 2011. The Senate voted to pass H.R. 1249 and send the House version of the America Invents Act to the White House for President Obama’s signature by a vote of 89 to 9. The Coburn Amendment, which would have once and for all put an end to fee diversion, was unsuccessful, being tabled by a vote of 50 to 48.

“The ePetitions program is an instrumental part of the USPTO’s continuing efforts to expand its eCommerce capabilities and augment its ability to provide new tools and services to patent practitioners,” said Commissioner for Patents Robert Stoll. “Online filing of these specific ePetitions offers an important time saving advantage to petitioners as these submitted petitions are auto-processed and decided immediately upon receipt by the USPTO.”

The United States Senate voted 93 to 5 earlier this evening to end debate on patent reform, which should set up a vote on H.R. 1249 in the coming days. Debate on patent reform is now over in the Senate. In the coming days the Senate will vote on and almost certainly pass H.R. 1249, sending it to the White House for the signature of President Obama. The Obama Administration has lobbied hard for this patent reform and although they are not getting everything they wanted, most notably an end to the practice of fee diversion, President Obama’s signature is guaranteed.

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.