Posts Tagged: "patent prosecution"

When I interviewed USPTO Director David Kappos in December I asked him about Focarino and the first words out of his mouth were: “What a wonderful leader.” While that is lofty praise, it is consistent with what I have heard many times over the years.  Indeed, I have only heard positive things about Focarino, and everyone expresses that she is not only a very nice person but a knowledgeable and respected leader within the Office.  She is also someone that I personally respect and like.

It does seems clear that the allowance rate for large corporations is much higher than the average allowance rate for all patent applications. But does that suggest some nefarious bias? Not so fast my friends! At the end of the day it seems to me that the way patent applications are prepared and strategic decisions made during prosecution of the patent application explain why larger corporations have a much higher allowance rate than the average.

We begin by discussing first action allowances and whether they are frowned upon, then discuss the examination process and weave our way to Track 1 and whether you really must use Track 1 for patents likely to be litigated because you get a much more condensed, streamlined prosecution history. Over the past 10 days I have also interviewed Peggy Focarino (Commissioner for Patents), Deborah Cohn (Commissioner for Trademarks) and Peter Pappas (Chief of Staff). These interviews are being transcribed and prepared for publication. So stay tuned.

Part 2 of my interview with Deputy Under Secretary Rea picks up with discussion of the America Invents Act. We generally discussed the rulemaking process, the fact that the post-grant proposed rules are a bit late in coming, comments and what the USPTO will do with them, as well as the upcoming Road Show the USPTO is taking across America for the purpose of discussing implementation of the America Invents Act.

Deputy Director Teresa Rea has now been at the USPTO for approximately 1 year, but seems as invigorated and full of energy as she did when I first met up with her.  She seems to love the job and relish the challenges that come with this moment in Patent Office history. We chatted for approximately 55 minutes, discussing USPTO hiring, the Board of Patent Appeals and Interferences, the America Invents Act, what a typical day looks like on her calendar and much more.

I have found it helpful to think about patent classifications as being large buckets with subclassifications being little buckets within the larger classification buckets. There are currently more than 450 classifications and over 150,000 subclasses. According to the USPTO, “A class generally delineates one technology from another. A Subclass delineates processes, structural features, and functional features of subject matter encompassed with the scope of the class.” It is also important to realize that although every patent has only one primary classification (class and subclass) it may include others as applicable to the patent.

The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

The data clearly suggests that that inquiry should be made into what is going on in Art Unit 3689. If there is nothing odd after evaluation then I will be the first to report that and say that after further evaluation the patent examiners in Art Unit 3689 are doing a fantastic job. In the meantime, however, one way that we can get a more complete glimpse of what is going on in Art Unit 3689 is to take a look at the patents granted only after a decision from the Board of Patent Appeals and Interferences. Currently, according to the data available in the PatentCore system, 13 of the 24 patents granted have been granted after a decision from the BPAI, and 3 others were granted only after the applicant filed an appeal brief. That rate seems extraordinarily high to me, as does the 76.5% reversal rate at the BPAI. A look at some of the appeals themselves is elucidating.

What these numbers tell you is if your application is in Art Unit 3622 or 3689 you are in for a long wait to obtain a patent. The numbers also show that if you carry the case all the way through appeal there is quite a high success rate for applicants; 66.7% when in Art Unit 3622 and 71.4% when in Art Unit 3689. It is hard to know for sure what is going on in Art Units 3622 and 3689, but one number jumps out at me as particularly alarming. In Art Unit 3689 nearly 4 out of 5 of the applications they allow require the applicant to hop on the appeal track.

Therefore, returning to my hypothetical inquiry above, assume a continuation is filed on or after March 13, 2013, but is accomplished in such a manner so that its does not qualify to be treated as a patent application under current law. This means, as a consequence, that if, for example, the parent application when originally filed relied upon the one year grace period or if someone else files a patent application describing the subject matter of the invention before the filing of the parent application (but otherwise was not the “first to invent”), the claims of the continuation will be rendered unpatentable. Furthermore, since it would have been possible to file the continuation in a manner so that current law continued to apply even after March 13, 2013, one might imagine that a patent prosecutor in this situation may be subject to liability and/or perhaps a bar complaint. If I now have your attention, continue reading, because this situation can take place much more easily than I certainly would have imagined.

I spoke to five patent practitioners (attorneys and agents) who filed successful 12 month accelerated examination cases in 2011 to get their input on how the process went for them and what subjects should be considered by applicants and their patent counsel before embarking on it.

The beginning of Part 2 of my interview picks up where we left off, but more generally broadens out to generically ask how Kappos approaches the daunting task of getting over 6000 patent examiners on the same page to provide uniformity when by the very nature of the decisions they make they are dealing with one-of-a-kind innovations. There is always going to be subjectivity in prosecution, but the Kappos Administration seems to have gone back the philosophy of old, which is that patents should be granted on patentable inventions and it is the job of patent examiners, with the help of applicants and attorneys, to work together to find patent allowable matter in applications. But getting the message from the 10th floor of the Madison Building to trickle down to 6000+ patent examiners is something that cannot be taken for granted.

Early in my career, I encountered a series of approximately 20 patent applications that were assigned to a small number of different art units. During the time it took to bring the cases to resolution, I kept detailed notes of my experiences prosecuting each case. It eventually occurred to me that the information I’d collected might be useful to other prosecutors working with the same examiners and/or art units. I wondered whether my colleagues, by reviewing my notes and gaining insight from my experiences, might be able to accomplish resolution more effectively and efficiently. However, the subjective and anecdotal nature of my notes limited their practicality. Recognizing that fact, I began to consider strategies for facilitating ways in which practitioners could more effectively share their prosecution experiences with one another.