It’s tough to get a patent these days. All too often applicants and patent examiners lock horns and get stuck in an endless loop of rejection/response/rejection/response, etc. The applicant cannot convince the examiner to allow the patent and the examiner cannot convince the applicant to abandon the patent. It would be a lot easier to get a patent if there was a way to avoid this.

I have found in my own practice that each technology class at the USPTO is different. Some are easy. Some are hard. I have also found that this can change. Some of the easy ones suddenly get hard and some of the hard ones suddenly get, well maybe not “easy”, but at least better. You can see if a technology class is getting easier or harder by plotting the patent filing dates in that class versus patent issue dates. Here is an example for a “normal class”, semiconductor packaging, class/subclass 438/114.

Monsanto is a company that developed a system for weed control that employs genetically modified crops that resist glyphosphate herbicide (better known as Roundup). Upon planting such crops, farmers can spray Roundup over their fields to kill weeds while sparing the resistant crops, a technique that allows for much more efficient weed control than is possible with unmodified plants. See Monsanto Co. v. McFarling, 488 F.3d 973, 976 (2007). One of the patents embodying such genetically modified seeds is U.S. Patent No. 5,352,605.  The ‘605 patent claims relate to a plant cell containing a genetic promoter sequence that facilitates a plant’s production of a modified enzyme. Further, the parent application discloses methods used to infect plant cells, which were genetically transformed, causing them to become resistant to an antibiotic (kanamycin) at concentrations which are toxic to untransformed plant cells. Monsanto obtained patents to protect it’s methods for creating genetically modified seeds which are then licensed to farmers for a one time use.

Monsanto’s seeds aided soybean farmers in producing higher crop yields, which has greatly increased agricultural productivity. See Guanming Shi, Pricing of Herbicide-Tolerant Soybean Seeds: A Market-Structure Approach, 12 J. Agrobiotechnology Mgmt. & Tech. 8 (2009). The public benefits as well from efficient farming and agriculture innovation.  Additionally, the agricultural sector has acknowledged the spur in innovation fostered by the U.S. patent system.  Lead by the extension in the 1980’s of utility patents covering plants and animals (See Diamond v. Chakrabarty, 44 U.S. 1028 (1980); Ex parte Allen, 2 U.S.P.Q.2d 1425 (1984); Ex parte Hibberd, 227 USPQ 443 (1987)), Guanming Shi correctly concludes that patent protection provided incentives for private research and development investments in the U.S. seed industry.

Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.

The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings.  I would like to have you review the application before I submit it to make sure I haven’t made any mistakes.  I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.

The response by Hewlett Packard’s associate general counsel Paul Roeder to my essay supporting the International Trade Commission’s exclusion of imports that infringe U.S. patents brings to mind the classic George Orwell novella Animal Farm. In that allegorical tale, Orwell depicts how power quietly corrupts the leaders of a revolution, turning them into a self-satisfied hegemony that creates new rules and privileges for itself at the expense of everyone else.

But before I explain the relevance of Animal Farm to Mr. Roeder’s response, let me first reiterate what’s at stake in the efforts by HP and the other members of the self-described “ITC Working Group” to limit the enforcement powers of the International Trade Commission (ITC).

The ITC has the power under Section 337 of the Tariff Act of 1930 to prevent products that infringe U.S. intellectual property rights from being imported into the United States. Given that some foreign countries have economic ecosystems in which labor is cheap and IP protection is almost non-existent — a situation that many U.S. companies now benefit from, thanks to offshoring — the Section 337 process exists to fight unfair competition from such importers by excluding their goods from the U.S. if these products infringe American patents.

You may have heard of them, but as a rule I think it is safe to say that most patent attorneys and patent agents have never seen one, at least not in certain technology areas. They are called “first action allowances” and this happens when you file a patent application and the patent examiner does not reject any claims and instead finds that your submission is in order and allowable without amendment.

In some technical areas, such as class 705 – business method patents for example, first action allowances likely seem like the patent equivalent of a unicorn. Perhaps an even better analogy would be to Bigfoot! There are rumors of sightings but no hard proof to know that they exist for certain, or at least not proof that would stand up to true scientific scrutiny.

As a general rule patent examiners will always find something to reject, and, in fact, there is growing evidence to support the anecdotal stories about certain Art Units and Supervisory Patent Examiners simply refusing to ever issue a patent unless the applicant appeals.  See Denial of Due Process. Obviously, such a refusal to award patents is troubling and evidence of an enormous problem facing the Patent Office.  The data capable of being obtained by PatentCore is voluminous and eye-opening.  I have no doubt that it will eventually lead to significant changes and the eradication of patent examiners who refuse to issue patents.

I have often stated that the lifeblood of any high-tech enterprise is the intellectual property (IP) rights that it controls or potentially controls.  This is especially true for my small- and medium-sized enterprise (SME) clients with respect to their short-term salability, long-term profitability, and eventual ability to undertake an IPO or sale exit.  It seemed that public sentiment and the popular press were in accord with this view no more so than when President Obama signed the America Invents Act into law on September 16, 2011.  The law, which received bi-partisan support by passing the U.S. House of Representatives 304-117, and the U.S. Senate 89-9, was widely-praised as the first major overhaul to the U.S. patent system in almost 60 years.  The recent (and mostly negative) headlines concerning the “Smart Phone Patent Wars,” however, has made me wonder if IP rights – and more specifically, patents – are once again getting a bad rap?

The smart phone wars began in 2011 as mobile industry giants either gained or lost profits due to the growth of alternative mobile platforms.  As the wars heated up, Google, Inc. acquired Motorola Mobility Holdings, Inc. – and its 17,000 patents – for US$12.5B on August 15, 2011. (After netting out other assets and liabilities, the price per patent was US$510,204.08!)  This led to the increased headlines.  A nice graphical summary of the wars – whose battlegrounds have been the U.S. International Trade Commission (ITC) in Washington, D.C., the European Commission in Belgium and federal trial courts all over the U.S., Europe and Asia – can be found here.

Peter Pappas is an attorney who served in the Clinton White House Counsel’s office and who held important communications, government relations and policy positions at the State Department and at the FCC in the last Democratic Administration. After serving as a broadcasting executive overseeing legal, regulatory and government affairs and corporate communications, he was appointed by David Kappos to serve as Senior Advisor and Chief Communications Officer when Kappos took office. Although he is not a patent attorney, Pappas has quickly become an important and influential player in the patent community. He is now David Kappos’ Chief of Staff, a position he assumed last Fall, and a top advisor. His area of expertise is in politics, government and public relations. On January 24, 2012, I sat down with Peter Pappas to go on the record.

While there is no doubt that the rejuvenation of the Patent Office during the Obama Administration is directly related to the capable and steady leadership of Director Kappos, I equally have no doubt that Pappas has played a major role in reshaping the public image of the USPTO. During the Bush Administration there was a feeling that the patent bar was the enemy, not to be trusted. The flow of information from the USPTO to the industry and public was largely non-existent. That has all changed and Pappas has been at the center of coordinating the USPTO with other government agencies and in coordinating the message so that the industry and public can know and understand what the USPTO is doing and why.

Several weeks ago the United States Patent and Trademark Office (USPTO) issued a report to Congress on International Patent Protections for Small Businesses. The report examined how the capacity for American small business to create jobs is at risk due to the high costs of acquiring, maintaining and enforcing patents outside the United States. The report’s findings suggest that many small businesses may benefit from extending patent rights outside the U.S., but few are aware of the need to do so, or are unable to fund the high cost of international patenting.

The USPTO report states what virtually everyone knows — small businesses are the primary driver of job creation in the United States.  Young start-up companies create on average three million U.S. jobs per year, and one of the most significant ways these companies grow is to compete internationally.  Indeed, competing globally is a prerequisite to success for most companies in what is an ever increasingly global marketplace.  To compete globally American firms engage in licensing, franchising, or exporting. For many small companies it is patent protection that provides the only means to obtain an advantage over established industry leaders.  Patent protection prevents established industry leaders from simply copying new innovations, and aids small businesses and start-ups in attracting investor capital needed to grow, build market share, and create jobs. Unfortunately, small companies face significant financial challenges in acquiring, maintaining, and enforcing patents outside the United States.  What they need is a strategy to lay the foundation for foreign rights, building off a credible and appropriate U.S. patent filing.