Posts in USPTO

On Monday, September 22, 2010, the United States Patent and Trademark Office announced via Federal Register Notice that the Office is considering pro-business strategies for incentivizing the development and widespread distribution of technologies that address humanitarian needs. One proposal being considered is a fast-track ex parte reexamination voucher pilot program to create incentives for technologies and licensing behavior that address humanitarian needs. Under the proposed pilot program, patent holders who make their technology available for humanitarian purposes would be eligible for a voucher entitling them to an accelerated re-examination of a patent. Given that patents under reexamination are often the most commercially significant patents, it is believed that a fast-track reexamination, which would allow patent owners to more readily and less expensively affirm the validity of their patents, could provide a valuable incentive for entities to pursue humanitarian technologies or licensing.

My interview with Q. Todd Dickinson, the current Executive Director of the AIPLA and former Under Secretary of Commerce for Intellectual Property and Director of the Patent and Trademark Office, took place on August 19, 2010, in a conference room at AIPLA headquarters. In this final installment of the interview we discuss how current USPTO Director David Kappos is doing, whether his honeymoon period will ever end, whether there is any concern he will burn-out, and we discuss the AIPLA position on Three Track, plus the usual fun questions at the end.

I thought it might be interesting to take a look at what the Office of Enrollment & Discipline has been up to since the start of 2010. To be perfectly honest, I was quite surprised by what I found. Not only is there not a single case involving Rule 11.5, but the overwhelming majority are related to reciprocal proceedings where discipline was already taken by a State and the USPTO is taking appropriate matching action with respect to the practitioner. In fact, out of the 37 disciplinary proceedings this year 24 have been reciprocal proceedings, where the USPTO seems to hand out justice largely or solely based on justice being handed out by some State Bar authority.

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

The Visualization Center shows graphics that look much like a speedometer, which is where the Patents Dashboard moniker comes from, but the data is also available for those who want to see the numbers and figures used to create the easy to understand graphics. It is not pretty to see that the average pendency to a case where a Board decision is necessary is 76.1 months, and the average pendency of a case where one or more RCEs are filed is 60.7 months. This is unacceptable and hopefully leaders in Congress are paying attention! They have been mislead for many years. So the numbers are in some cases going to be terrifying, but ignoring the truth simply will not lead to the change and efficiencies needed.

The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update. The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.

The Commerce Department’s United States Patent and Trademark Office (USPTO) and the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) have agreed to partner in establishing a Patent Prosecution Highway (PPH) pilot program.

This past Sunday there was a brief but very interesting segment on Fox New Sunday that actually discussed the plight of the United States Patent and Trademark Office and how the enormous backlog of inventions in the queue at the USPTO is preventing organic job grow at a time when our economy desperately needs job creation. Sitting in for Chris Wallace was Brett Baier. He was interviewing Mark Zandi, who is Chief Economist for Moody’s Analytics, and Liz Claman, an anchor on the Fox Business News channel. The topic for this 11:54 second segment was the health of the U.S. economy and what can and should be done by our leaders in Washington, DC. Surprisingly, at least to me, Claman brought up the USPTO as an ideal opportunity for “instant stimulus.”

Patent applications as a whole over the past 10 years have had an average allowance to rejection ratio of about 0.3. We arrived at this ratio by generating a list of 300 randomly selected application serial numbers in the 10/, 11/, and 12/ series, and individually reviewing the transaction histories for each serial number. An allowance to rejection ratio of 0.3 corresponds to about one allowance for every three rejections. First office actions have a somewhat lower allowance ratio than the average. This is consistent with the common knowledge that applicants will take a more aggressive position with the claims that they file relative to the amended claims they present after a rejection. The allowance to rejection ratio for second and higher rejections remains relatively constant. This has the somewhat disturbing implication that practitioners and examiners are not getting any better at understanding each other as prosecution progresses. If practitioners and examiners were learning from each rejection – response interchange, then the allowance ratio would increase for each succeeding office action.

On Tuesday, August 10, President Barack Obama signed into law P.L. 111-224 that gives the United States Patent and Trademark Office (USPTO) the authority to spend an additional $129 million of the fees the agency will collect in Fiscal Year (FY) 2010. Due to an improving economy and increased patent examination productivity, the agency projects it will collect nearly $200 million more than its FY 2010 appropriation of $1.887 billion.

Straight from the “it’s about time” department comes breaking word that the so-called popular press are finally identifying the most under reported news story of this recession. The United States Patent and Trademark Office of foundering and it needs more money in order to do its job. Despite their lip service to innovation and job creation, politicians seem to year after year leave the Patent Office under funded and incapable of satisfying its purpose. But thankfully CBS did a 2 minute and 36 second segment on the crisis this past weekend!

Allvoice sought a remand of the Holt application to the examiner for further prosecution or to issue an order requiring AVRS to show cause why judgment should not be entered against the Holt application. Without requiring AVRS to even file a response, the Federal Circuit, per Chief Judge Rader, explained that there was simply no justification for the issuance of a writ of mandamus because there was no showing that an ordinary appeal wouldn’t suffice after the PTO finally disposed of the interference proceeding. Of course, that doesn’t take into consideration the need for Allvoice to quite title to proceed with its infringement action against Microsoft. The plot thickens!

On July 19, 2010, I was granted behind the scenes access to observe the United States Patent and Trademark Office. From 11am to 7pm I trailed David Kappos, the Undersecretary for Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. My hosts for the day were primarily Peter Pappas, Chief Communications Officer and Senior Advisor to Kappos, and one of his top lieutenants, Jennifer Rankin Byrne. As I went through the day I met members of the Senior Staff, some of whom I already knew and others who I was meeting for the first time, and sat in on a series of meetings with Director Kappos. In this part, Part 3 of the series, I will profile those Senior Staff members and high ranking lieutenants with whom I interacted with during my day at the USPTO.

In this interview Kappos discusses with me his management style, his famously long hours, how he manages to inspire the Office to work harder than ever before, his efforts to get funding for the Office, how the USPTO can help innovators create new businesses and new jobs, and how to inspire young people to do public service. We also learn that he and Judge Rader share the same favorite movie (see Judge Rader Interview at the end), he likes Star Trek and Star Wars equally (an astute political answer no doubt) and the famous American inventor he would like to meet is a “Mount Rushmore” inventor.

AbsolutelyNew, Inc., a next generation consumer products company that develops and launches the best ideas from independent inventors, has added former Director of the United States Patent and Trademark Office (USPTO) Jon Dudas to its Advisory Board. Jon will help AbsolutelyNew advance its successful strategy of harnessing the great ideas of independent inventors.