Posts Tagged: "patent office"

Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos will participate in both events, joined by several senior USPTO officials. An in-person roundtable addressing the upcoming shift to a first-inventor-to-file system will be held Thursday, Sept. 6, from 1:30 to 4:30 p.m. at the USPTO headquarters in Alexandria, Va. It is open to the public and will be webcast. A separate webinar will be held Sept. 7 from 12:30 to 1:30 p.m. to discuss all aspects of the AIA.

Post Grant Review, Inter Partes Review and the Transitional Program for Covered Business Method Patents were instituted with the goal of improving patent quality by giving third parties methods to challenge patents that are less expensive and less involved than litigation. Each of these procedures is a trial before the Patent Trial and Appeal Board (Board) composed of Administrative Patent Judges and subject to Part 42 of 37 C.F.R., Trial Practice Before the Patent Trial and Appeal Board. The trials allow for limited discovery, which has not been available in Ex Parte or Inter Partes Reexamination, the existing procedures for challenging patents in the U.S. Patent and Trademark Office. Because the discovery is limited, it is unlikely that these procedures will be used in cases where large amounts of evidence may be needed to prove patent invalidity.

Hearing from our online filers will assist us in gathering requirements, creating functional designs, and evaluating product releases. We will hold focus sessions to discuss the proposed process changes. We want to hear your thoughts on how the patent application process can work for you, identify any concerns, and work towards resolutions to create a user-friendly text-based filing system. We look forward to the opportunity to work with you. To participate in these focus sessions or for additional information please send an email to [email protected].

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that its Denver regional satellite office will be located in the Byron G. Rogers Federal Building in Denver, Colorado. The USPTO announced plans to open a regional office in the Denver area in July, along with satellite offices in the Dallas-Fort Worth, Texas and Silicon Valley, California, areas as part of efforts to support innovation and creativity, help protect and foster American innovation in the global marketplace, help businesses cut through red tape, and create new economic opportunities in each of the local communities.

Although such Final Rules were widely criticized by most companies in the United States, a sole individual, Dr. Triantafyllos Tafas, a co-inventor of a computerized automated microscope, stood alone against the Rules package for nearly three months against the might of the USPTO. Dr. Tafas filed suit because he truly believed the U.S. patent system was being manipulated by a few large entities to the significant detriment of research-intensive entities such as emerging companies, universities, and research institutes, particularly those in the chemical, bioengineering, pharmaceutical, and biotech fields. Dr. Tafas’ beliefs grew from his experience attempting to start his company in Europe where he found few investors willing to invest in small companies whose only major asset was a patent portfolio. However, he found investors in the U.S. to be much more respectful of U.S. patents and willing to invest in companies with a good patent portfolio, irrespective of whether they were owned by a large multinational or the new kid on the block. This cemented Dr. Tafas’ belief in the importance of the U.S. patent system.

Inventors who attend these USPTO sponsored inventor conferences will receive practical advice from successful inventors, experienced practitioners and USPTO officials. The registration fee is $80 per person ($70 for seniors or students) and includes all sessions and presentations, morning and afternoon refreshments, lunch both days and the networking reception. Having been involved several times with the conference when it is held in Alexandria, Virginia, I can say first hand that this event is excellent, informative and educational. I highly recommend it for inventors and business people who need to become more familiar with patents and trademarks.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. These rules become effective on September 16, 2012. With this publication, all of the administrative trial rules the USPTO was tasked by the AIA to complete will have been published.

I tried to get Stoll on the record while he was at the USPTO.  I don’t think he dodged me, it just never worked out.  I travel a lot, he travels a lot and when it was convenient for one of us it was never convenient for the other.  In the time I have known Bob we have become friends.  I respect him enormously, his knowledge of all things patent is extraordinarily deep.  I always enjoy getting together with him, it is always a lively conversation.  So I am extremely happy to bring this on the record interview to you. In this conversation we talk life after the USPTO, politics, being on the famed K Street in Washington D.C., the U.S. economy, improvidently granted patents and much more. So without further ado, here is my interview with Bob Stoll.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.

Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.

For well over a year I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Disclosures of third-parties who independently arrived at the invention will be used against the inventor. Now that the USPTO has come out with examination guidelines we find out the truth. I was right all along.

GUEST CONTRIBUTION BY USPTO DIRECTOR DAVID KAPPOS… President Obama’s Global Development Policy — the first by a U.S. Administration — recognizes that raising the living standards of humanity is not just a moral imperative for the United States; it is vital for our economic and national security. Patents for Humanity advances this policy by leveraging the power of invention to improve lives. I invite all patent holders to consider how your inventions could further the aims of the President’s Global Development Policy. If you are actively addressing humanitarian needs with your patents, please apply to our Patents for Humanity prize competition by August 31st, 2012.

Although predictions on the outcome of an unusual case such as this are probably worthless, I think that it is most likely that this panel will rule in 2012 the same way that it ruled in 2011. It is probably safe to presume that the judges are fairly entrenched in their positions. In my view, no arguments were presented which show that Mayo was a game-changer with respect to the isolated DNA claims and the screening method claim. In particular, AMP’s main point about the relevance of Mayo—the preemption argument—was harshly criticized by Judge Moore. Among the three members of the panel, Judge Moore would appear to be the most likely to change sides, and I do not see this happening. Thus, I expect the same outcome as last year. However, the long-term outcome is much murkier, with an en banc hearing and/or a Supreme Court appeal almost certain.

This new final rule eliminates 37 CFR 1.99, which provided for third-party submissions of patents, published patent applications, or printed publications in published patent applications, but did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to up to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever is earlier.

The Detroit USPTO will create approximately 120 highly-skilled jobs in its first year of operations alone. The IP experts in the office will work closely with entrepreneurs and help further reduce the backlog of patent applications and appeals. Reducing the backlog of patents and simultaneously speeding up the process will allow businesses to move their innovation to market more quickly, saving critical time and resources.