Posts Tagged: "patent office"

The biggest myth about patent appeals is that that the examiner usually wins. The Patent Trial and Appeal Board (“Board”) posts that it reverses examiners only one out of every three decisions —33%. That number is accurate, and reflects the percentage of reversals among Board decisions. But another number is more helpful — 75%. That is the rough percentage of reversals among all appeals—not just Board decisions. The difference arises because not all appeals result in a Board decision. In fact, the vast majority of appeals (80%) never reach the Board. The Board’s 33% number has nothing to say about this invisible sea of patent appeals.

On Monday, April 30, 2007, the United States Supreme Court issued its final decision in the matter of KSR v. Teleflex, which overruled the Federal Circuit’s application of the so-called “teaching, suggestion, motivation” test (or simply TSM) as it applies to determining whether an invention is obvious. At least for the last generation (and likely longer) no other Supreme Court case in the patent arena has been nearly as influential as the Court’s decision in KSR v. Teleflex. This is because obviousness is where the rubber meets the road for the patentability of inventions. This 5th Anniversary of the ruling provides an opportunity to revisit the decision and where we have come since. This will be a recurring theme this week on IPWatchdog.com as we look at the law of obviousness in the wake of this infamous decision.

Yes, it was I. The former Borat applying patent examiner turned law student. See Prior Borat: Non-traditional Prior Art Rejections! If nothing other than offering comic relief, the now infamous Borat patent rejection has hopefully illustrated at least one fundamental truth to the inventor and patent practitioner alike – don’t forget to do a thorough search of non-patent literature. I won’t bore you with citations from the MPEP. We all know what the Manual says. Instead I will attempt to provide some general insights into the examination process.

The Patent Office recently requested comment on the paperwork that applicants submit during post-filing, pre-allowance patent prosecution (Patent Processing (Updating), comment request., 77 Fed. Reg. 16813-17 (Mar. 22, 2012)). This is a highly significant opportunity to seek reform of problematic PTO regulations, one that only comes once every three years. This comment period gives the public access to an oversight officer outside the PTO whose job is to help reduce costs associated with PTO regulations or MPEP guidance that create unnecessary paperwork burden. The PTO has invited the public to challenge long-standing rules, and to seek reform.

Maybe it is the result of the case being of such little importance to the patent system as a whole, or maybe it is just evidence that every blind squirrel finds a nut every once in a while. Whatever the case may be, the United States Supreme Court yesterday did get it right in a patent case. Virtually no one brings appeals from the Patent Office to the district court under § 145 despite the far more favorable review standard, which we have known about at least since 1999 in Dickinson v. Zurko. § 145 will remain an infrequently used relic of the patent system, and we are left to lament that it would have been far better for the Supreme Court to get Mayo v. Prometheus right than for them to get Kappos v. Hyatt right. Sigh.

The thing that struck me most from these survey results was the superiority of USPTO searches. I’m sure you have heard the same criticisms and joking that I have. Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO. If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO. After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search. So when they rely on US references that means they must have been more relevant than what they found. So much for the alleged inferiority of USPTO searches.

Today I attended the an event on Intellectual Property and the US Economy which was held in the Eisenhower Executive Office Building on the White House grounds. The purpose of the event was to unveil a study — Intellectual Property and the U.S. Economy: Industries in Focus — prepared by the Economics and Statistics Administration and the United States Patent and Trademark Office. The study found that intellectual property intensive industries support at least 40 million jobs in the United States and contribute more than $5 trillion dollars to U.S. gross domestic product (GDP). That is to say that 27.7% of all jobs in the U.S. were either directly or indirectly attributable to IP-intensive industries, and the amount contributed to the U.S. economy represents a staggering 34.8% of GDP.

The United States Patent and Trademark Office (USPTO), Invent Now® and the National Academy of Inventors™ invite you to the Florida Regional Inventors Conference, a great chance to get practical advice from expert USPTO staff and to network with fellow creative entrepreneurs. The conference will be held April 27-28, 2012 at the Embassy Suites Hotel located on the campus of the University of South Florida.

How this will philosophically change things remains unclear because the America Invents Act requires that the petition filed to institute a derivation proceeding demonstrate that the claimed invention in the subject application or patent was derived from an inventor named in the petitioner’s application without authorization. The Patent Office has also recognized the similarity between derivation proceedings and interference practice, saying: “Petitions to institute derivation proceedings, while distinct from interference practice, raise similar issues to those that may be raised in interferences in a motion for judgment on priority of invention. Currently, motions for judgment on priority of invention, including issues such as conception, corroboration…” See 77 Fed. Reg. 7035 (10 February 2012).

The United States Patent and Trademark Office (USPTO) and Hungarian Intellectual Property Office (HIPO) signed a Memorandum of Understanding making permanent the Patent Prosecution Highway (PPH) program between the two offices and setting forth the common desire to implement further developments of the PPH program during a high level event in Budapest honoring Hungarian inventors and innovative companies.

All and all this seems like a positive development. If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search. Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and allowed to be added to the case. This should be quite beneficial to independent inventors, small businesses and start-ups who absolutely, positively need to get patents as quick as possible to continue to raise funds from investors.

The United States Patent and Trademark Office (USPTO) today announced that it will open the current Patent Law School Clinic Certification Pilot Program to admit 10 additional schools for the upcoming fall 2012 academic year. This pilot program allows law students to practice patent law before the agency under the guidance of a law school faculty clinic supervisor. Submissions from interested law schools will be accepted through Friday, June 1, 2012.

The U.S. Department of Commerce’s Patent and Trademark Office (USPTO) and National Institute of Standards and Technology (NIST) Manufacturing Extension Partnership (MEP) yesterday unveiled a new web-based IP Awareness Assessment Tool designed to help manufacturers, small businesses, entrepreneurs and independent inventors easily assess their knowledge of intellectual property (IP).

An exhibition showing the intellectual property (IP) behind Steve Jobs’ innovations opens to the public at WIPO on March 30, 2012 and will run through to World Intellectual Property Day on April 26, 2012. The exhibition ties in with this year’s World Intellectual Property Day theme – Visionary Innovators.

You may have heard, but the USPTO is hiring. Not only is the USPTO searching for Administrative Patent Judges, but they are finding some extremely well qualified candidates to add to the ranks of those already serving. With the permission of each of the new APJs, and the cooperation of James Smith, Chief Administrative Patent Judge, it is with pleasure that share the bios the newest APJs, each pictured with Rebecca Blank, Deputy Secretary of Commerce.