Posts Tagged: "USPTO"

At the conclusion of the supplemental examination if the certificate issued indicates that a substantial new question of patentability is raised an ex parte reexamination will be ordered by the USPTO. The resulting ex parte reexamination, which will address each and every substantial new question identified, will substantially be conducted according to the rules and procedures associated with ex parte reexamination. Notwithstanding, there is one very notable exception — the ex parte reexamination is not limited to patents and printed publications. Additionally, a less consequential procedural distinction is that the patent owner will not have the right to file a statement pursuant to 35 U.S.C. 304.

Section 42.405(c) provides that a derivation is not sufficiently shown unless it is supported by substantial evidence. This includes at least one affidavit addressing communication and lack of authorization. Further, the showing of
communication must be corroborated. One open practical question is whether derivation proceedings will be at all useful. How will the inventor alleging derivation be in possession of sufficient evidence to demonstrate communication and lack of authorization? The best evidence of each will be in the hands of the party who is the alleged deriver, not the inventor claiming to be the source of the invention. Moreover, proving a negative (i.e., lack of authorization) may be challenging, as proving a negative can always be.

One of the primary objectives of the America Invents Act (AIA) was to streamline the filing and prosecution of patent applications. Under the AIA, the oath or declaration requirements for applicants have been substantially modified, with assignees now being permitted to apply for patents effective September 16, 2012. Provisions of the AIA (35 USC § 118) allow an assignee, or one to which the inventor is obligated to assign the invention, to make an application for patent. Additionally, a party who has a “sufficient proprietary interest” in the invention may make an application for patent as an agent of the inventor upon “proof of pertinent facts” of such interest.

The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. That is great, but micro-entity status will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.

The questions asked of the USPTO, and specifically Director Kappos, related to the USPTO interpretation of the grace period in 102(b)(1)(B). At one point, in response to a question, Direct Kappos responded: “We are reading the words just the way that Gene Quinn suggested in his comment.” I do not claim that everything below is in 100% alignment with the USPTO interpretation, but I write now to expand upon my remarks. We have a first to file system with an American flavor, not a first to publish system as so many seem to think.

The proposed fees are at least 22 percent lower for a routine patent process—i.e., filing, search, examination, publication, and issue fees—than the current fee schedule. The current proposed fees also are lower than those originally proposed by the USPTO in February. The USPTO is opening a 60-day comment period in which the public can provide input on the latest proposal. Following the comment period, the Office will prepare the final fee-setting rule, which would go into effect no less than 45 days after it is published in the Federal Register.

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) is seeking public comment on the possibility of adjusting trademark application fees, so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO. The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees, and the Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO. A Notice of Inquiry has been published in the Federal Register.

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.