Posts in USPTO

With respect to Track I, of particular note is the fact that the Patent Office is considering limiting the number of claims in a prioritized application to four independent and thirty total claims. In addition, the USPTO is considering requiring early publication of prioritized applications so that applications would be published shortly after a request for prioritization is granted, or no later than eighteen months from the earliest filing date. While this will undoubtedly make those in the patent community nervous, I suggest holding off on reactionary judgment. Obviously, limiting the number of claims conjures up nightmare memories about the failed claims and continuations rules. The big problem there though was not the limitation of claims, it was the limitation of continuations. If the Patent Office wants smaller, bite-size patent applications I see no problem with that as long as continuation practice is not compromised. I see no reason to suggest continuation practice will be compromised, remembering full well that David Kappos famously opposed the rules by filing an affidavit in support of the AIPLA amicus brief to the District Court while then Vice President of IBM. Nevertheless, this bears watching.

The United States Patent and Trademark Office is seeking public comment on a major new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process. This newly proposed Three-Track program aims to provide applicants with the ability to go faster or slower through the patent process, which will in turn hopefully reduce the pendency of those patent applications that are the most time sensitive. Under Track I applications will be expedited, under Track III they can be slowed at the applicants request.

A packed room of at least 200 individuals, including the newly retired Chief Judge Paul Michel, former USPTO Director Q. Todd Dickinson, former USPTO Director Bruce Lehman and others listened to Kappos give an impassioned speech about how innovation can create jobs, how the Patent Office is unfortunately continuing to hold jobs hostage due to a staggering backlog of pending patent applications and how American economic security depends upon development of a comprehensive national IP strategy. I have heard Kappos talk about the job creating power of innovation and the role the USPTO can and should play, but there was something different about his speech today.

On Friday, May 28, 2010, USPTO Director David Kappos gave five suggestions for practitioners on the Director’s Forum (i.e., the Kappos blog). It would be wonderful if such things could occur in the prosecution of every case, but unfortunately the Federal Circuit has effectively prevented that from happening and forced upon the USPTO and the practicing patent bar a game of hide the ball, which benefits no one. With Congress not stepping up to the plate any time soon to do anything useful for the patent system there may be only one hope left; namely to get the CAFC judges to examine patent applications, sitting by designation, so they can better understand the mess they have created.

Coming on the heels of the BP disaster in the Gulf of Mexico the expansion of the green tech initiative at the PTO seems to be in line with the overall direction of the Obama Administration, which today shifted away from a true “all of the above” energy solution and is tending away from domestic oil exploration and drilling in favor of green technologies, including increasing the fuel efficiency of automobiles even further. The USPTO is front and center in a coordinate effort by the federal government to pursue green technologies as part of a unified energy plan. The latest USPTO green initiative will lead to faster patents and a coherent national policy built on the back of American inventors and entrepreneurs.

On May 19, 2010, USPTO Director David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu signed a Memorandum of Understanding (MOU) on comprehensive bilateral cooperation on patents. The signing took place during a signing ceremony held at the USPTO campus in Alexandria, Virginia. Second, in a separate and seemingly unrelated item, the USPTO also announced today that it would eliminate the fee for the petition to participate in Patent Prosecution Highway (PPH) programs. The elimination of the PPH petition fee is expected to encourage greater PPH participation by patent applicants. The good news is that yet more is being done to address the backlog and pendency. But I am still hoping for a plan aimed straight at independent inventors and start-up businesses here in the U.S.

The reality is that unless and until Congress steps up to the plate and does something, which seems extraordinarily unlikely, the Patent Office will be left to attempt to piecemeal together solutions. So while no one solution can or will solve all of the problems plaguing the patent system, if cascading solutions are employed at least some applicants can be helped and at least some applications can be accelerated. Of course, the name of the game today is job creation, so I propose a creative way to accelerate patent applications out of order upon proper showing that jobs will be created, and focus my suggestions on those companies that are most likely to create jobs; namely those 5 years or younger and with 99 or fewer employees.

This unique initiative seeks to reduce the backlog of patent applications by getting rid of those that are no longer important to applicants or are of marginal value. In exchange for giving up on certain applications and abandoning them another application will be advanced out of order to the front of the examination queue. Over and over again the message directly from Kappos and his top Lieutenants is that the backlog is costing America high paying jobs. This initiative picks up on the recently released PTO study that concluded that high-tech jobs are high paying jobs, innovators rely on patents and an overwhelming majority of Venture Capitalists say that they want to see issued patents before they invest in start-up companies. The expanded Exchange Program is yet another attempt to help give the Patent Office the tools necessary to unleash commercially viable innovation into the marketplace so that funding can be obtained, jobs created and innovation can play its role in economic recovery.

On Wednesday, May 26, 2010, the Department of Justice, the Federal Trade Commission (FTC), and the Department of Commerce’s United States Patent and Trademark Office (USPTO) will hold a joint public workshop on the intersection of patent policy and competition policy and its implications for promoting innovation. Assistant Attorney General for the department’s Antitrust Division Christine Varney, Under Secretary of Commerce for Intellectual Property and Director of the USPTO David J. Kappos, and U.S. Chief Technology Officer Aneesh Chopra will give opening remarks at the morning session of the workshop. FTC Commissioner Edith Ramirez will open the afternoon session.

If we can spend trillions in a failed effort couldn’t we spend a billion or two in an effort that is virtually guaranteed to succeed? I say for every $1 trillion wasted we should spend at least $1 billion on things that will work. By my estimates that means $4 billion more for the Patent Office. Not being a greedy guy I am happy to take that in four equal installments of $1 billion over a 4 year period. For those who are math adverse, that would mean the USPTO budget for FY 2011, 2012, 2013 and 2014 would be whatever they collect plus $1 billion, which for FY 2011 would likely be in the neighborhood of about $3.2 billion.

On Wednesday, May 5, 2010, David Kappos testified in front of the United States House of Representatives Committee on the Judiciary. See Hearing Page and Kappos Prepared Remarks. Many issues were covered during the hearing, but there were a couple matters that jump out as quite important. Most significantly, it seems that once again the Senate patent reform bill may be running into some difficulty in the House of Representatives. Some in the House of Representatives seem interested in slowing down regarding the substantive changes embodied in the Senate bill, but seem willing to consider legislation less grandiose and focused solely on giving the Patent Office fee setting authority and perhaps the ability to retain its fees. This, however, lead to a heated exchange that has been misreported in some outlets, so lets set the record straight.

The United States Court of Appeals for the Federal Circuit earlier today decided to take up important issues relating to inequitable conduct en banc, vacating the earlier panel decision in Therasence, Inc. v. Becton Dickinson and Co., which issued January 25, 2010. Hopefully the entire Federal Circuit will be able to put to rest the nonsense that has become inequitable conduct, and if the questions presented are any indication we might be in store for a major re-write and settling of the law of inequitable conduct.

In a Wall Street Journal op-ed piece Robert Reich, former Secretary of Labor under President Clinton, painted a bleak picture of the future of the US economy over the next decade. The reality he paints is altogether true, unfortunate and extremely unnecessary. He concludes that “those who have lost their jobs to foreign outsourcing or labor-replacing technologies are unlikely ever to get them back. And they have little hope of finding new jobs that pay as well.” This may be true, but I know that it doesn’t have to be that way. The outsourcing of jobs is largely in violation of US export laws and that seems to me to demonstrate the reckless disregard for the American worker rampant in Washington, DC. The US government is not doing anything to enforce US export laws on the books and stop outsourcing that is in violation of US law.

There were probably about 40 people in the room, and the event was broadcast live over the Internet. Kappos took a number of questions and seemed very engaged. It is a breath of fresh air for the USPTO to be listening to the inventor community in a substantive way like this. But it goes beyond just listening. The USPTO proposal with respect to essentially extending the life of a provisional patent application to 24 months, which was announced officially last week, was the result of a suggestion Kappos received at a round-table event in California. So not only is the USPTO listening, they are taking what the hear into consideration. What a novel, yet profound concept.

On Friday, April 2, 2010, the Federal Register will have a Notice requesting comments on proposed changes to Missing Parts Practice. Don’t just jump over this as something inconsequential. This is the proposal that David Kappos has been talking about regarding extending the pendency period of provisional patent applications to 24 months.