Posts Tagged: "patent office"

The USPTO specifically wants to broaden public knowledge of the FITF provisions and assist understanding of the provision’s administrative processes to aid inventors and their representatives in the filing and prosecuting of patent applications under the FITF system. At each roadshow, panelists will discuss FITF statistics to date, the applicability of the FITF provisions on patent applications filed today, the FITF statutory framework and its exceptions, and AIA evidentiary declaration practice useful to invoke these exceptions. The experts will present a variety of sample scenarios to illustrate both the applicability of the FITF provisions as well as tips for prosecuting applications filed under the FITF provisions.

The administrative trial proceedings created by the AIA are: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.

Back on June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. A further 11 weeks has passed and we are still without a presidential nominee to run the USPTO. Between the diametrically opposed lobby groups who love and hate patents, the reality that many candidates who have been approached have declined, and those qualified candidates who are willing to accept cannot get support in the Senate, President Obama may not have a Director during his second term, which is truly embarrassing.

To facilitate electronic file sharing between IP offices, such as the sharing relating to the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO), USPTO is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the USPTO to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application. A change to the rules is required to accomplish this due to the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122.

Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.

Paying for tuition is an excellent way to keep dedicated, talented employees while they continue to obtain training that will help them fulfill their duties at the USPTO. But a question of fairness jumps to mind. What about all the employees who paid for their own education during the time when the tuition reimbursement program was shelved? It seems a little unfair, and unwise, to pay for the tuition of new students but to do nothing about those employees who continue to work for the Office and who paid for their own courses and degrees. This is particularly true where other agencies do provide loan repayment to keep employees.

The United States Patent and Trademark Office (USPTO) is seeking public input to determine the optimal first action and total pendency target levels for patents… The Patent Office believes that by reviewing the optimal pendency levels the Office will be in a better position to plan for patent examination staffing levels and other agency resource requirements. Furthermore, revised or reaffirmed target goals for pendency will inform patent fee levels and revenue estimates during the biennial patent fee review.

Lee will tell Congress that the USPTO is on pace during FY 2014 to receive nearly 600,000 patent applications, which represents an increase of more than 5% as compared to FY 2013. The PTO backlog of unexamined patent applications is less than 620,000 which is down from more than 750,000 in 2009 (a 17.3 percent decrease)… On a cynical note, I will observe that reducing the backlog will become much easier for the USPTO, as will meeting pendency goals, based upon the United States Supreme Court’s breathtaking decision in Alice v. CLS Bank. While not a subject of this hearing, as more and more becomes per se unpatentable as the result of 35 U.S.C. 101, the USPTO should easily be able to meet these goals, particularly in light of the reality that over 50% of patents issued by the USPTO related to software innovations.

Dave Kappos did more for PTO-academic relations than any other Commissioner or Director in the history of the Office. This is a true statement, but hardly does credit to his real contributions in this area. That’s for the simple reason that very few former leaders of the Patent Office had much if anything to do with academics. The bar was so low in fact that had Dave been merely cordial and refrained from open derision of academics and their research, he might well have set a new standard with only that. He did much more, of course. Director Kappos actively sought out academic researchers. He brought them into formal roles in the PTO.

Over the last several days I have heard of an alarming trend from the United States Patent and Trademark Office — Patent Examiners are canceling Notices of Allowance and yanking previously granted claims back into prosecution while citing the United States Supreme Court’s ruling in Alice v. CLS Bank. In some instances granted claims are being pulled back into prosecution only to be rejected as lacking patent eligible subject matter even after the issue fee has been paid. This is an alarming trend that seems to be building steam as virtually everyone who operates in this space is now seeing this happen and/or they are seeing supplemental office actions issued where the pending office action never rejected claims based on patent eligibility grounds.

Johnson has detractors, which is almost incomprehensible, but there are those who are unhappy. . . Johnson’s detractors are also pointing to the fact that he was not in support of the most recent round of patent “reform,” but truthfully very few within the industry were in favor of the latest patent legislation, which is why it went down to a rather ignominious defeat. There were some within the tech sector who were pushing hard for the latest failed patent reform, such as Google, but after being in harmony with Google for many years Apple and Microsoft finally broke off and similarly did not support the failed patent legislation. Therefore, anyone who says that “tech is upset because Johnson didn’t support patent reform” is simply not being completely truthful. There were many within the tech sector who rely on patents to make their research and development worthwhile who were in agreement with Johnson. Furthermore, there is absolutely no doubt that the pharmaceutical industry will find Johnson acceptable, and the pharmaceutical industry is one of the most important of all U.S. industries.

If there was a major message to take away from Michelle K. Lee’s speech at Stanford Law School on Friday, June 27, it was that the patent system needs change to properly address the needs of an ever-growing list of stakeholders in the patent process, including the general public… Lee argues that, currently, the benefits of maintaining our country’s patent system outweigh the costs, but the dialogue which needs to effect positive change requires a critical view of the role of patents in regards to innovation. In this respect, Lee is quick to point out that patents aren’t the only drivers of innovation. The first-mover advantage of bringing a product to market before others can be its own incentive to innovate, she said, and open source models are chosen by some organizations that develop technology. Copyrights, trademarks and trade secrets are other options through which innovation can be protected.

Acting U.S. Deputy Secretary of Commerce Bruce Andrews and Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee, along with several elected officials, today participated in a ribbon-cutting ceremony to officially open the permanent location for the USPTO Rocky Mountain Regional Office in Denver, Colorado. Located in the Byron G. Rogers Federal Building in Denver’s central business district, the new office will help the region’s entrepreneurs advance cutting-edge ideas to the marketplace, grow their businesses, and more efficiently navigate the world’s strongest intellectual property system.

At least initially, the USPTO instructions to examiners seems extremely patentee friendly, which I must say comes as a surprise given the largely anti-patent rhetoric that has come from the White House over the last 16 months. Indeed, the USPTO has told examiners that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” Hirshfeld also told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” Therefore, nothing has changed as far as the USPTO is concerned.

The United States Patent and Trademark Office (USPTO) will host its next Software Partnership Meeting on Tuesday, July 22, 2014, at the USPTO headquarters in Alexandria, Virginia, from 1:00 pm – 4:30 pm.