Posts Tagged: "patent office"

“Time is money” rings especially true for those pursuing patents at the USPTO. Anyone who has previously dealt with this organization can attest to the fact that it is slow moving and extremely costly. Being that this single government entity is charged with processing upwards of 600,000 patent applications per year, the speed at which it operates is unsurprising. However, what is surprising is the substantial variance in speed at which each technology center and individual art unit operates. For example, technology center 2900 has the quickest average time to disposition while technology center 2400 has the slowest.

Having to defend their patent in post grant reviews such as an IPR can easily cost patent owners between $700,000 to over $1 million when the subject matter of the patent under challenge relates to the biological or pharmaceutical sciences, due in part to the need to cast a wide net for relevant prior art, according to experienced practitioners like Brad Olson, a partner with Barnes and Thornburg, LLP. Such expenses are particularly threatening to new companies finding the patents that drive their business under attack just as they are desperately trying to raise money for their very survival. Given the track record of IPR’s as “patent death squads” potential investors or licensees can’t be blamed for waiting until the reviews are completed to finalize pending deals.

Perhaps the most shocking difference between Track One applications and standard applications is allowance rate. Standard applications have an allowance rate of 70%; however, Track One applications are approved 89% of the time. Put another way, a Track One application is 19 percentage points more likely to receive an allowance than a standard application.

One of the issues that took up a significant amount of time during the first half of the hearing was the proposed extension of the transitional program covered business method review. The amendment submitted by Congressman Issa (R-CA) sought to extend CBM by pushing back the sunset period until December 31, 2026. The Issa amendment to extend CBM was defeated by a vote of 18-13.

According to Grassley’s office, the amended PATENT Act will provide important reforms for the way that the Patent Trial and Appeals Board (PTAB) of the United States Patent and Trademark Office (USPTO) operates. For instance, the managers amendment would: (1) Require the PTAB to apply the claim construction standard used in federal district court (i.e., the Phillips standard) and further requires the PTAB to consider if claims have previously been construed in district court. (2) Makes explicit that for purposes of PTAB adjudications patents are presumed to be valid, although does so retaining the current law providing that the petitioner has the burden to prove a proposition of unpatentability by a preponderance of the evidence. (3) Makes clear that the Director has discretion not to institute an IPR or PGR if doing so would not serve the interests of justice. (4) Allows patent owners to submit evidence in response to a petition to institute an IPR or PGR, and petitioners to file a reply to respond to new issues. (5) Directs the PTO to modify the institution process so that the same panels do not make institution and merits decisions. (6) Directs the PTO to engage in rulemaking in order to institute a Rule 11-type obligation in IPR and PGR proceedings.

Art Unit 3689 has the lowest allowance rate at 7.7%. Art Unit 3659 has the highest at 98.3%. Oddly enough, these two art units are from the same technology center. It’s worth noting, however, that the 3600s deal with a variety of inventions, including transportation, e-commerce, and national security. Of the 20 art units with the lowest allowance rates, eight are in the 3600’s. This is not surprising. After all, the 3600’s host many business-method art units.

The Patent Application Alert Service (PAAS), born of a partnership between the USPTO and Reed Tech, a LexisNexis company, is a system that provides customized email alerts to the public for free when a patent application is published. Users of the system create an account and then save one or more searches. Whenever a patent application relevant to the search publishes an email alert is automatically sent. The Patent Office is hopeful that the new system will lead to greater numbers of pre-issuance third party submissions of prior art.

In the patent arena it is not hypocrisy that is fueling the misguided strategies of tech companies. Instead it is the self-interest of tech CEOs who are increasingly only concerned about the short term. This is tragic because corporations are supposed to exist in perpetuity, not just until the current CEO can cash out with his or her golden parachute. Short term thinking of tech CEOs is destroying the patent system and wasting shareholder assets. What are these companies going to do when foreign corporations push their way into the U.S. marketplace? How will CEOs explain away the existential threat they face when foreign manufacturers flood the market with goods and services without regard to long since crippled patent portfolios of the former tech elite?

The USPTO has also created an increasingly sophisticated cyber security defense system to protect the nation’s patents and related information. In this multi-layered system, the USPTO guards against virtually every possible type of intrusion, protecting their systems against a multitude of potential denizens, from lone wolf to suspected nation-state Advanced Persistent Threat (APT) attackers. Compared to the USPTO, or even corporations, most law firms are easy targets and the client IP on their networks is low hanging fruit that is all too easily harvested. Too many law firms still view ‘reasonable’ security as signature-based (passwords) access and malware protection, like McAfee, as good enough. Today, it is not nearly enough.

When Section 32 of the Leahy-Smith America Invents Act became law in fall 2011, the USPTO began working with intellectual property law associations across the country to establish pro bono programs designed to assist financially under-resourced independent inventors and small businesses secure patent protection for their inventions. Minnesota was the first state to establish a program, and now joins the growing list of programs expanding to cover nearby states. The efforts of those programs, in conjunction with the USPTO, has been astounding: within the past ten months, the number of states now having access to a patent pro bono program has more than doubled.

In January 2005, Focarino was promoted to Deputy Commissioner for Patent Operations, a role that made her responsible for all patent-examining functions in the eight Patent Technology Centers and all operational aspects of patent application initial examination, patent publications, and international Patent Cooperation Treaty (PCT) applications processing. Upon the resignation of Jon Dudas from the USPTO in January 2009, then Commissioner for Patents John Doll rose from his post as Commissioner for Patents to become the Acting Director of the Patent Office. At this time Focarino was promoted to Acting Commissioner for Patents. Upon Director Kappos assuming control of the Patent Office, Focarino was retained on the senior management team, with the creation of a new position — Deputy Commissioner for Patents. Subsequently, after Commissioner Bob Stoll retired, Focarino was promoted, this time being appointed Commissioner for Patents.

During a free-flowing conversation the former leaders of the Patent Office agreed on a number of items, including the biggest problem for the Patent Office over the last generation: fee diversion. Both Dickinson and Mossinghoff pointed to fee diversion as a constant and continuing challenge. Dickinson recalled one particular budget where nearly $250 million was diverted from the Patent Office budget, a huge sum given that at the time the USPTO annual budget hovered around $1 billion.

Through a partnership with Reed Technology and Information Services, the USPTO announces the release of the Patent Application Alert Service. This system provides customized, email alerts to the public for free when patent applications of interest are published. Additionally, the system offers direct access to the published applications that meet your search criteria.

The Innovation Protection Act, one of the lesser known patent bills percolating in Congress over the past few years, would provide a source of permanent funding for the USPTO. The fees the USPTO collects would remain available to the USPTO until expended. This common sense idea has been floated for years, but it never seems to go anywhere. Appropriators have been unwilling to commit to allowing the USPTO to keep user fees, diverting $1 billion worth of collected fees from the USPTO according to the Intellectual Property Owners Association. This may not seem like much but is a lot of money, but for an agency the size of the USPTO it is a lot of money.

A fair treatment of the issue of patent quality would have necessarily considered those applicants that were wrongfully denied, as well as the extraordinary wait one must endure on appeal to the Patent Trial and Appeal Board to rectify examiner mistakes. Anything short of a fair and even-handed inquiry is not only inappropriate, but seems intended to lead to a conclusion that supports a preordained narrative. Sadly, this preordained narrative fits perfectly into the view of one side of the patent reform debate. With Congress considering patent reform in both the House and Senate the timing on the release of this one-sided report seems hardly coincidental.