Posts Tagged: "patent office"

Earlier today the Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued U.S. Patent No. 8,000,000. The 8 million patent was issued to Second Sight Medical Products, Inc., for a visual prosthesis apparatus that enhances visual perception for people who have gone blind due to outer retinal degeneration. The invention uses electrical stimulation of the retina to produce the visual perception of patterns of light. The product – the Argus® II – is currently in U.S. clinical trials and has received marketing approval in Europe.

The Patent Bar Examination is a daunting exam, and one that has gotten a bit more difficult recently as a result of newly testable material coming online. The exam has never been easy, and likely never will be easy, but promises to get even harder in the likely event that patent reform (i.e., the America Invents Act) passes. The America Invents Act will dramatically change the fundamental underpinnings of patentability, as well as add a variety of new processes and procedures. The amount you will need to know once the America Invents Act gets tested will go up dramatically, so if you have been thinking about taking the exam it is probably a good idea to take it sooner rather than later.

Yesterday the United States Patent and Trademark Office profiled U.S. Patent No. 1,000,000, which was issued on August 8, 1911. Under the current numbering system for patents, U.S. Patent No. 1 was issued on July 13, 1836 to John Ruggles of Thomaston, Maine for his invention related to the locomotive steam engine. Therefore, it took just over 75 years to issue 1,000,000 United States patents. Today the U.S. Patent and Trademark Office is poised to soon issue patent number 8,000,000, perhaps as soon as next week. Just over 5 years since U.S. Patent No. 7,000,000 issued.

If you are a serious inventor you need to go to this Conference. Last year there were inventors who came to the USPTO campus for the two-day event from all over the East Coast, and those that I talked to thought it was well worth their time and money. Where else are you going to be able to meet Senior USPTO officials and talk to them one-on-one? There will be patent examiners and trademark examining attorneys present to answer your questions. Local intellectual property attorneys will give their time to participate in teaching sessions, as well as giving free consultations to attendees to answer questions. Even if you have to travel to California and stay in a hotel for a couple nights you will get far more out of the Conference than you will spend. I understand money is tight, but serious inventors, whether they are newbies or old pros, will gain a tremendous amount of valuable information and personal connections by attending the Conference.

Cloture is the only procedure by which the Senate can vote to place a time limit on consideration of a bill or other matter, and thereby overcome a filibuster. Under the cloture rule (Rule XXII), the Senate may limit consideration of a pending matter to 30 additional hours, but only by vote of three-fifths of the full Senate, normally 60 votes. Without 60 votes cloture fails and debate continues. Unfortunately for those who would like to see patent reform derailed, the fact that there was unanimous consent in the Senate for a cloture vote almost certainly suggests that there will be at least 60 votes to end debate on H.R. 1249, which will bring it to a vote, likely sometime later in the week of September 6.

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

The mutually assured destruction approach to patenting can explain in part why large companies continue to patent at the rate they do, but the justification completely misses the point that these large tech giants were not always large. They were, at one time, rather small companies that pursued an aggressive agenda of innovation. A big part of that innovation strategy included obtaining protection for said innovation, largely in the form of acquiring patents. That undeniable truth makes it hard not to question whether the tech giants that lament the failings of the patent system and want to limit or abolish it are simply engaging in good old-fashioned protectionism.

The real sin is that reexamination could be a much better process. Those in Congress talk about alleviating the burden on the district courts by having a reexamination proceeding available, but they don’t seem to appreciate why it is that reexamination is under utilized. On top of that, patent reform circulating in Congress does absolutely nothing to revamp reexamination in a way that would streamline the process and make it more appealing. What patent reform does do, however, is add yet another procedure to bog down the Patent Office while not allowing the Patent Office to set fees and keep those fees they collect to do the work that is promised when they accept those fees. So if patent reform passes you can anticipate that the reexamination pendency numbers will get even more ugly, making the option even less appealing.

In view of Therasense, the Patent Office is proposing to revise the materiality standard for the duty to disclose information to the Office in patent applications and reexamination proceedings. It is the belief of the Patent Office that the Therasense standard will reduce the frequency with which applicants and practitioners are being charged with inequitable conduct, thereby reducing the incentive for applicants to submit marginally relevant information to the Office. Thus, the Therasense standard should curtail the practice of filing Information Disclosure Statements that refer to boxes full of prior art that is of marginal significance, allowing patent examiners to focus on that prior art that is most relevant. The USPTO adopting the Therasense standard could, as a result, lead to improved patent quality and even a streamlining of prosecution in at least some cases.

Ocean Tomo released the results of its Patent Quality Benchmark Study. The Patent Quality Study is intended to provide a benchmark for those studying patent quality across the 430 United States Patent Classes as defined by the United States Patent and Trademark Office. The Study reflects Nanotechnology (class 977) as the number one technology class for patent quality.

Hardly a month passes without there being yet another Patent Prosecution Highway (PPH) announcement from the United States Patent and Trademark Office. The PPH is lauded by the USPTO with great frequency, and for good reason. But what exactly is the PPH and how do you use it to your benefit? Through the end of June 2011 there have been only 6,657 PPH requests, with upwards of 40,000 registered and practicing patent attorneys or agents in the United States, which means there is not a lot of collective experience with the PPH despite the obvious advantages.

Small businesses are the backbone of the nation’s economy and those that are most likely to engage in job creation. Unfortunately, the small businesses surveyed tell a tale of little or no job creation over the next 1 to 3 years, and in fact suggest there will be more layoffs coming. The respondents see too much uncertainty in Washington, DC, too many regulations and a number of other matters (i.e., the deficit, debt, health care and taxes) as significant impediments to job creation. This on the heels of a disappointing jobs report for June 2010, downward revisions of the number of jobs created in April and May, and unemployment rising to 9.2%, this Chamber survey only piles on the continuing terrible news for the economy. With Congress bickering over the obvious — namely that we simply cannot spend money we don’t have and need to start spending less than we bring in to cut the deficit — it doesn’t seem there is likely to be any good news on the horizon.

In almost all cases, inter partes reexamination is better than ex parte reexamination, except of course where the requester wants to stay anonymous or the application from which the patent issued was filed before November 1999. The opportunity to reply to the patentee’s arguments and to address the specific concerns of the examiner is quite valuable. This is especially true where the examiner cites his or her own prior art. Issues commonly evolve over the course of reexamination, so that arguments in an ex parte request often are no longer persuasive by the end of the proceeding. I would add that some of the frequent users of reexamination, such as Apple and Google, almost always select inter partes reexamination when it is an option.

The focus of the litigation now shifts to the Patent Office. How Allen’s patent claims will fare in that forum is unknown, but certainly his odds of maximizing the monetary value of his patent portfolio are diminished. Reexamination has been ordered by the PTO for all four Allen patents, and in one (the ‘314 patent), a non-final rejection has issued. Had Allen chosen a different court and his cases not been stayed, his patents would still be in reexamination. Yet, his court trials would likely be completed before the reexaminations, with obvious advantages for him.

United States House of Representatives passed H.R. 1249, which is known as the America Invents Act by a vote of 304-117. This bill differs from the Senate version of patent reform, S. 23, so there will be no bill going to the desk of President Obama just yet. There are important differences between the two bills, chief among them is funding for the United States Patent and Trademark Office.