On January 17, 2012, I sat down with Terry Rea, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. We met in her office, which is on the 10th floor of the Madison Building adjacent to Director Kappos’ office and overlooking Dulany Street.

In part 1 of the interview we discussed USPTO hiring and Director Rea told me that the plan “this fiscal year was to hire approximately 1,500 examiners.” The Office, according to Rea, is also looking to hire another 80 Administrative Patent Judges during this fiscal year and the salary is approximately $165,300. With respect to APJs the Office is looking for “talented examiners to promote from within” but is “also interested in talented attorneys from outside of the agency,” said Rea.

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.

Cummins Inc. (NYSE:CMI),  announced today that Sharon R. Barner, formerly a top official in the United States Patent and Trademark Office and a leading intellectual property litigator, has joined the Company as Vice President and General Counsel.  Cummins Inc. designs, manufactures and distributes engines and related technologies, including fuel systems, controls, air handling, filtration, emission solutions and electrical power generation systems.

Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.

I have known for a while now that I would be doing an in-depth look at the Senior Management Team at the United States Patent and Trademark Office. The series is currently in progress, and this is the second installment – my interview with Theresa Rea.  Rea is a long time patent attorney and former President of the AIPLA.  Currently, however, she is the person in the federal government with the longest title — Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Her title is longer than her boss’ title thanks to the inclusion of the word “deputy” twice.

When I interviewed USPTO Director David Kappos in December 2011, after the interview was concluded I asked him to give me some thoughts on his Senior Management Team. “When I say ‘Theresa Rea’ what are the first things that come to mind,” I asked. Kappos responded: “Tremendous background knowledge, energy, fun person to work with and to team with, deep knowledge of the life sciences sector…” Director Kappos would go on to say that with Rea at the agency “we’ve got all the bases covered. I’m the corporate guy, she’s the litigator. I’m the IT guy, she’s the Pharma person.”  Indeed, Deputy Director Rae is the real deal and a nearly ideal compliment to Director Kappos.

The patent applicant is required to furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. Said another way, whenever a drawing would assist in the understanding of an invention you need at least one patent drawing. Based on my experience I can say that a patent drawing is almost always required, or at the very least you would do well to understand the rule as a patent drawing is virtually always required.

The only time patent drawings are not required is when the invention relates to a chemical compound or composition.  You can also get away without a drawing sometimes with method inventions, but I wouldn’t advise it.  There is almost always at least some illustration that could assist the reader (and patent examiner) and the drawings are a part of the overall disclosure. For example, just take a look at the illustration below, taken from U.S. Patent No. 6,618,977, which relates to a method and device for harvesting earthworms. 

Over the last year, while building ArchPatent, I have spent a lot of time speaking with inventors and lawyers about various aspects of prior art research, and I learned a few great tricks along the way which I wanted to share. In particular, I wanted to write this article to explain how a key word patent search can be enhanced by filtering the results using US classifications and subclassifications. First, I’ll provide some background about the U.S. Patent Classifications Systems (USPC), discuss how filtering key word search results by US classifications and subclassifications fits within the seven step prior art search strategy outlined by the USPTO and provide specific instructions for how this type of search can be conducted to find highly useful results and save significant time over the current manual process.

Overview of US Classification and Subclassifications

In June of 2011, The USPTO published a helpful 15 page report titled, “Overview of the U.S. Patent Classifications Systems (USPC).” This report provides a very thorough overview for anyone seeking a deep dive into the US Classifications system.

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes will implement provisions of the America Invents Act

Washington – 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.

Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States.  The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.

The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise.  Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office.  Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit.  Allow me to call that out for what it is – hogwash!  Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world.  These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent?  If you believe that I have a bridge I want to sell you!

The United States Patent and Trademark Office earlier today welcomed 10 new Administrative Patent Judges of the Board of Patent Appeals and Interferences.

At 10:00am this morning in the North Auditorium of the Madison Building on the campus of the USPTO, Federal Circuit Chief Judge Randall Rader administered the oath of office to Jacqueline Wright Bonilla, Erica Franklin, James Housel, Deborah Katz, Neal Abrams, George Best, Andrew Caldwell, Thomas Giannetti, Andrew Metz and Grace Obermann.

The ceremony lasted approximately 45 minutes.  It was well done, together with several musical numbers.  After USPTO Director David Kappos’ brief opening remarks, Laverne Smith, a Board Supervisory Paralegal, sang “My Country, ‘Tis of Thee.”  The program was then concluded with “God Bless America,” which was sung by April Mosby, a Board Patent Attorney.

Has the economy impacted your foreign filing strategy?   What do you see as the defining IP trend of 2011?

The third annual U.S. IP Trends Survey, sponsored by inovia, is now open for U.S. patentees and your input is needed to make the survey a success. The results of the survey will provide an in-depth look at the global outlook and foreign filing strategy of U.S. companies and universities.  It is anticipated that the survey will take only between five to fifteen minutes to complete, and responses will remain strictly confidential.  Only aggregate, anonymous information will be made public.

Click here to take the survey.

We say all the time that in a patent application you can define the terms you want to use in the claims to give them the meaning you intend; the meaning that will apply during any claim interpretation.  But what happens when you do not define a term in the specification?  Well, that really all depends.  As a general rule the ordinary plan meaning of the term will be used.  This issue of defined meaning arose recently in a high profile case, giving us a chance to review the ruling and discuss defining terms more generally.

Recently in the ongoing patent war between Apple and Motorola, Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit issued a ruling, while sitting by designation as a trial judge.  See Apple v. Motorola No. 1:11-cv-08540 (N.D. IL., Jan. 17, 2012). Motorola had argued that Apple’s U.S. Patent No. 7,479,949 was invalid because it used the term “heuristic,” thereby rendering the claims invalid as being indefinite and in violation of 35 U.S.C. 112, ¶ 2.