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USPTO

Enter the Sandman: USPTO Unhittable in Reciprocal Discipline Proceedings

Posted: Monday, Sep 22, 2014 @ 9:00 am | Written by Michael E. McCabe, Jr. | 7 comments
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Office of Enrollment and Discipline, Patents, USPTO

Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters out. For seventeen seasons, Mariano Rivera (a.k.a. “the Sandman”) dominated at his position and was virtually unhittable.

The USPTO Director also knows something about perfection, albeit in a far different context than baseball. For six years, the USPTO Director has dominated opposing patent practitioners, who have gone hitless against the Office in cases involving reciprocal ethical discipline.

Reciprocal discipline” is a process for disciplining an attorney in a second jurisdiction after the attorney has been ethically disciplined by another jurisdiction. A patent or trademark attorney who is publicly disciplined in another jurisdiction is subject to reciprocal discipline by the USPTO, even if the attorney’s conduct has nothing to do with their practice before the Office. And while it is theoretically possible for a patent or trademark practitioner to avoid reciprocal discipline in the USPTO, in reality they would have a better chance of hitting a Rivera cut fastball blindfolded with one arm tied. To date, the USPTO’s record in Section 11.24 cases is a perfect 77-0, and counting. Practitioners, meet the “Sandman.”



USPTO Considering Changes to PTAB Rules

Posted: Monday, Sep 22, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, Post Grant Procedures, Steve Brachmann, USPTO

EDITOR’S NOTE: Gene Quinn will host a free webinar discussion about the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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At the end of July, the Patent Trial and Appeal Board (PTAB) hosted a press conference to discuss ongoing progress with patent trials which have been or are being conducted under the terms of the America Invents Act (AIA). Scott Boalick, Acting Vice Chief Judge of the PTAB and head of the PTAB’s Trial Section, answered questions from the audience on various aspects of the AIA trials, as well as offer questions for public comments being sought by the U.S. Patent and Trademark Office in its attempts to determine how and if the AIA patent proceedings can be improved.

The online webinar was not the first time that the PTAB and USPTO have worked to gain feedback from various stakeholders on the progress of AIA trials. Earlier in spring and early summer of this year, representatives of the PTAB attended eight roundtable discussions in cities across the United States. Although one goal of these meetings was to educate the public about AIA trial proceedings, the PTAB was also interested in collecting feedback from those involved in trial proceedings. Of great importance to the board is methods of making these trial proceedings more effective at challenging patent validity than filing cases in district courts; encouraging the use of these type of legal proceedings is a major goal of the law.

Under the America Invents Act, it is possible to challenge the validity of a patent after its issuance. Some have argued in the past that allowing for third-party input in this way could improve patent quality, even after a patent is issued. However, with litigation involving patent validity as such a major issue in recent weeks, it’s understandable why the PTAB would reach out to stakeholders and see if the rules were serving them well.



How to Protect Your Patent from Post Grant Proceedings

Posted: Sunday, Sep 21, 2014 @ 9:00 am | Written by Gene Quinn | 10 comments
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Prosecution, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

EDITOR’S NOTE: I will host a free webinar discussion about the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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The American Invents Act (AIA) created three new ways to challenge the validity of claims in already issued patents. While the AIA was signed into law on September 16, 2011, the new post grant proceedings did not become effective until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review and covered business method review, which is a variety of post-grant review that is limited to business methods relating to the financial industry. Because post-grant review was specifically limited in applicability to patents that were examined under the new first to file law, only patents that have an effective filing date on or after March 16, 2013, are capable of being reviewed in a post-grant review proceeding. Therefore, so far the USPTO has only seen inter partes review and covered business method cases.

On August, 14, 2012, the United States Patent and Trademark Office promulgated final rules applicable to these new proceedings, and at that time the USPTO said that they anticipated  that 420 petitions for inter partes review would be filed in fiscal year 2013.  The USPTO also said they anticipated that in fiscal year 2014 there would be 450 petitions for inter partes review filed. See 77 FR 157 (August 14, 2012) 48713. The Patent Office severely under estimated the popularity of post grant proceedings, particularly inter partes review.



The Past, Present and Future of Post Grant Administrative Trials

Posted: Thursday, Sep 18, 2014 @ 11:43 am | Written by Gene Quinn | 1 Comment »
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Posted in: America Invents Act, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Legislation, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

EDITOR’S NOTE: I will host a free webinar discussion of the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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On September 16, 2011, President Barack Obama signed into law the most sweeping changes to U.S. patent law since at least the 1952 Patent Act, perhaps ever. One of the dramatic changes to the U.S. patent system was the creation of post grant administrative proceedings where a challenger could in a contested forum akin to a trial challenge one or more claims of a patent already issued. These new proceedings — post grant review, inter partes review and covered business method review — went into effect on the one year anniversary of the signing of the America Invents Act (AIA) on September 16, 2012.

The patent litigation landscape has forever changed thanks to the AIA. On that date the Patent Trial & Appeal Board (PTAB) was born. The precursor to the PTAB was the Board of Patent Appeals and Interferences (BPAI), which would hear appeals from applicants who had their patent applications rejected and also conducted interference proceedings. With the signing of the America Invents Act (AIA) the PTAB was born and the jurisdiction of the appellate body within the United States Patent & Trademark Office (USPTO) was greatly expanded.

This Board, the adjudicative body of the USPTO, consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the AIA. Between September 16, 2012, and August 7, 2014, there were 1793 post grant challenges instituted. See USPTO PTAB Update, slide 5. Of those challenges 1,585 (or just over 88%) were inter partes reviews. There have been 201 covered business method challenges, 6 derivation proceedings and only a single post grant review. The fact that there has been only a single post grant review is not surprising giving that a PGR can only be instituted to challenge patents that were examined under the first to file rules of the AIA, which did not go into effect until March 16, 2013. The relatively low number of covered business method challenges suggests that this form of review is not nearly as popular as it was thought to have been prior to the enactment of the AIA.



Post Patent Issuance Challenges and the Quest for Patent Quality

Posted: Thursday, Sep 11, 2014 @ 9:00 am | Written by Manny Schecter | 12 comments
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Posted in: Government, Guest Contributors, IPWatchdog.com Articles, Manny Schecter, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

The America Invents Act (AIA) was a great leap forward in the effort to improve patent quality in the US, including the creation of three new post patent issuance challenge procedures: post grant review (PGR), covered business method review (CBM), and inter partes review (IPR). The US Patent & Trademark Office (USPTO) has regularly reported some basic statistics related to the new challenge procedures.[2] In an attempt to determine whether these new challenge procedures are serving their intended purpose of improving patent quality, I compiled and now report on additional statistics characterizing the parties and patents associated with completed challenge proceedings and correlated those characterizations to the nature of the outcomes.

The statistics reported by the USPTO focus on the petitions filed for the Patent and Trial Appeal Board (PTAB) to consider in determining whether to institute a challenge proceeding. Well over 1000 such petitions have been filed; the PTAB has instituted challenge proceedings in response to over 70% of the petitions. The USPTO has provided significantly fewer statistics with respect to the outcomes of the challenge proceedings that have been instituted. The outcomes are the end results of the challenge proceedings and, ultimately, should be the best indicator of what the proceedings are accomplishing.



Game of Patent Thrones

Posted: Wednesday, Sep 10, 2014 @ 8:00 am | Written by Sue D. Nym | 14 comments
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, USPTO

Just as in the land of Westeros, there is turmoil and intrigue in our government as to who is to lead the United States Patent & Trademark Office (USPTO).  Indeed, the top position of Under Secretary of Commerce for Intellectual Property and Director of the USPTO has been vacant since the resignation of David Kappos on February 1, 2013.  His deputy, Teresa Stanek Rea, became Acting Director, but she was not elevated to his post.  She resigned on November 21, 2013, which left both positions unfilled.

On January 13, 2014, Michelle Lee, former head of Patent and Patent Strategy at Google, was appointed Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, and in the ongoing absence of a Director, she holds the fort as Deputy Director, but with her position in administrative law limbo.  Despite the clear need for leadership at the USPTO, the search for the next Iron Throne holder is mired in ideology and lobbying.



USPTO Launches Redesigned KIDS! Web Pages

Posted: Tuesday, Sep 9, 2014 @ 8:00 am | Written by U.S.P.T.O. | No Comments »
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Posted in: Government, IP News, IPWatchdog.com Articles, Kid Tech, Technology & Innovation, USPTO

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property (IP) creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math (STEM) education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources.

“The USPTO looks to our children—the doers, makers, and tinkerers of the future—to reimagine the world and, as the Constitution calls for, ‘to promote the progress of Science and the useful Arts’ like never before,” said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. “As schools across the country ramp up their STEM programming, we look forward to putting even more tools in teachers’ hands that will ensure our next generation is well-versed in concepts of making, inventing, and creating the high-value intellectual property that drives our economy.”



Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution

Posted: Friday, Sep 5, 2014 @ 10:55 am | Written by U.S.P.T.O. | No Comments »
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Posted in: Government, IP News, IPWatchdog.com Articles, Trademark, USPTO

The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about this proposal to allow amendments to identifications of goods and services due to technology evolution. Please send comments regarding the proposal to TMPolicy@uspto.gov, with the subject line “Technology Evolution.” Comments may be posted on the USPTO website. In order to ensure that your feedback may be considered, please submit it no later than November 3, 2014.

Based on user input, including at a recent roundtable, the USPTO proposes to amend its current practice to permit amendments in limited circumstances to identifications of goods/services based on changes in the manner or medium by which products and services are offered for sale and provided to consumers due to evolving technology if the underlying content or subject matter has not changed. This change in practice takes into account the goal of preserving trademark registrations and applications in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem.



USPTO to Host AIA Roadshow in Seven Cities Nationwide

Posted: Wednesday, Aug 27, 2014 @ 11:10 am | Written by U.S.P.T.O. | 1 Comment »
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Posted in: America Invents Act, Government, IP News, IPWatchdog.com Articles, Legislation, Patents, USPTO

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that it will host seven roadshows across the country between September 16 and October 9, 2014, to increase understanding of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). The public meetings will serve as an opportunity for USPTO subject matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.

The USPTO specifically wants to broaden public knowledge of the FITF provisions and assist understanding of the provision’s administrative processes to aid inventors and their representatives in the filing and prosecuting of patent applications under the FITF system. At each roadshow, panelists will discuss FITF statistics to date, the applicability of the FITF provisions on patent applications filed today, the FITF statutory framework and its exceptions, and AIA evidentiary declaration practice useful to invoke these exceptions. The experts will present a variety of sample scenarios to illustrate both the applicability of the FITF provisions as well as tips for prosecuting applications filed under the FITF provisions.



PTO Seeks Comment on AIA Post Grant Administrative Trials

Posted: Wednesday, Aug 20, 2014 @ 11:41 am | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Litigation, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.

The administrative trial proceedings created by the AIA are:  (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.