Posts in USPTO

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.

This week marks the first anniversary of the Supreme Court issuing its decision in Bilski v. Kappos. The decision held that the machine-or-transformation test is not the exclusive test for patent eligibility, and that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply. The summary of cases prepared by Attorneys Holoubek and Sterne is excellent! It is absolutely must reading for attorneys prosecuting and litigating in this space.

United States House of Representatives passed H.R. 1249, which is known as the America Invents Act by a vote of 304-117. This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet. There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.

Obviously, Congressman Rogers is not being completely straight forward. The funds that exceed the appropriation to the USPTO would be available for use by the USPTO if and only if that is consistent with grants by appropriators. That is a far cry from saying the USPTO would get to keep 100% of the user fees it receives. Of course, this would not be the first time that Congressman Rogers was less than completely accurate regarding PTO funding.

General Electric was not the only large U.S. corporation not to pay taxes. According to Citizens for Tax Justice, General Electric had some company. In fact, American Electric Power, Dupont, Verizon, Boeing, Wells Fargo, FedEx and Honeywell all had tax rates between -0.7 percent and -9.2 percent for the stretch between 2008 to 2010. On the other hand, the United States Patent and Trademark Office continues to have user funds siphoned off, making the USPTO a much larger taxpayer than the largest U.S. corporations.

The United States Patent and Trademark Office has just announced the expansion of the PCT-PPH pilot program with the Korean Intellectual Property Office (KIPO), as well as two new PPH pilot programs; a new pilot project for the Patent Prosecution Highway with the Nordic Patent Institute (NPI) based on NPI’s Patent Cooperation Treaty (PCT) work products and a new pilot project for the Patent Prosecution Highway (PPH) with the Israel Patent Office (ILPO).

Despite the fact that Congressmen Ryan and Rogers would like this to be about the Obama Administration, the fact is that Senator Tom Coburn (R-OK) is the one who championed the amendment in the Senate that would give the Patent Office the ability to keep the fees it collects. Senator Coburn is known as “Senator No” for his staunch fiscally conservative stance on virtually all issues. So if you are willing to let facts influence your viewpoint there is absolutely no way that Patent Office funding within proposed patent reform can be an issue upon which Republicans can beat up Democrats. It was a leading fiscally conservative Republican in the Senate who brought the USPTO funding issue out of obscurity and to the top of the agenda.

What I can report is that the USPTO did, in fact, meet the April 12, 2011, deadline and the newly testable material is being tested as advertised. The USPTO is also continuing to update the exam through a rigorous process of writing, vetting, and testing new questions. In addition to covering long-standing areas of patent practice, questions are being added to the database that are directed to new and emerging trends in the law and evolving rules of procedure. The subject matter covered by the exam as a whole will continue to test rules, laws and regulations that have been in existence for years, but will also increasingly include questions testing the changes.

Today the United States Patent and Trademark Office (USPTO) announced that it is carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures. The agency also announced that it expects to soon issue guidance to applicants related to the prior art and information they must disclose to the Office in view of Therasense.

Judge Rader wrote: “Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.” Chief Judge Rader would go on to say that materiality is a “but-for” test, and actually breathed real life into the intent requirement, saying: “Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” The Federal Circuit did decline to adopt the USPTO version of the duty of candor outlined in Rule 56, which I have advocated for, instead opting for an even better, more patentee friendly standard than I myself have advocated for over the years. Today is a good day no doubt. Intent now actually requires intent, and a reference must actually be material in order to satisfy the materiality requirement. What a radical concept!

PPH will permit each office to benefit from the PCT work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. The PCT-PPH program will use international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.