In Part 1 of our interview we discussed Track 1 and the nuances of rulemaking that will delay a small entity and micro entity fee break until likely March 2013. We also discussed Requests for Continued Examination, or RCEs.
The beginning of Part 2 of my interview picks up where we left off, and may seem a little odd as a starting point. Despite my own best efforts to keep up with everything I was unaware that a small entity discount is available under Track 1. I had thought that everyone needed to pay the $4,800 fee, but Director Kappos explains that a small entity status discount is available, making the fee $2,400 for small entities. It is the micro-entity discount that will not be available until March 2013. Perhaps others caught onto this, but given the importance of getting patents quickly for some clients I wanted part 2 of the interview to start here and highlight that point.
USPTO Announces Location for Elijah J. McCoy Satellite Office in Detroit
Riverfront office space confirmed; Agency targets July 2012 opening
WASHINGTON—The United States Patent and Trademark Office (USPTO) announced on January 10, 2012 that it has concluded a five-year lease agreement through the U.S. General Services Administration’s (GSA) Great Lakes Region for a 31,000 square foot space to be located at 300 River Place Dr. in Detroit, Michigan 48207. The building, listed on the National Historic Registry, was the former home to Parke-Davis Laboratories as well as the Stroh’s Brewery Headquarters.
Manny W. Schecter, Chief Patent Counsel, IBM Corporation
Earlier today IBM (NYSE: IBM) announced that it set a new U.S. patent record in 2011, marking the 19th consecutive year that the company has led the annual list of patent recipients. IBM inventors earned a record 6,180 U.S. patents in 2011, more than quadrupling Hewlett-Packard’s patent total and exceeding the combined totals of Apple, Amazon, Google, EMC, Hewlett-Packard, Microsoft and Oracle/Sun.
Leading up to this announcement I had the opportunity to chat with Manny Schecter, who is the Chief Patent Counsel for IBM, and someone I interviewed previously. Whenever I talk with Schecter I always ask him whether it is a struggle to continue to have senior management at IBM buy into eye-popping research and development budgets. Although I am sure I always sound like a broken record I am genuinely amazed. Schecter replied, as he always does, “it is not a struggle… everyone at IBM is on board with being the industry leader.” IBM spends nearly $6 billion annually on research and development and has now spent a generation as the top patenting company in the world.
Editorial Note: Last week I published an article titled Patent Strategy: Discovering Crucial Patent Examiner Data. There were numerous, substantive questions posed about the PatentCore software, so I invited co-creator and patent attorney Chris Holt to address those questions in the article that follows.
We are very pleased with the interest generated in the PatentCore information system. The feedback has been overwhelmingly positive. A number of people have had questions about some of the specifics of the system. The purpose of this article is to address the most common questions possed by IPWatchdog readers in response to a recent article; Patent Strategy: Discovering Crucial Patent Examiner Data, which was published on January 4, 2012.
One of the most persistent questions asks us to address the inspiration for and reasoning behind the system. As patent attorneys ourselves, we have prosecuted patents for many years for a wide variety of clients. As committed professionals, we are constantly trying to improve our own performance to ensure that we are delivering quality services to our clients. That was, quite frankly, the inspiration for the system. As we began to explore the concepts behind PatentCore, we realized that we could bring value not only to our clients but to the patent community as a whole. The primary goal of PatentCore is to improve the patent process for patent examiners, patent attorneys and, therefore and primarily, for our clients.
On Monday, July 19, 2010, I was granted behind the scenes access to the United States Patent and Trademark Office, and was allowed to follow USPTO Director David Kappos throughout the day as he went from meeting to meeting. Nearly 18 months has passed since, and we have just entered what could be the final year of the Obama Administration, so it seemed as if the timing was right to once again sit and chat with the Under Secretary of Commerce for Intellectual Property.
I requested an interview through proper channels and it was arranged to take place at the USPTO on the 10th floor of the Madison Building in Director Kappos’ office. The interview took place on Thursday, December 22, 2011. The title Kappos 2.0 is how I have referred to this follow-up series. In the initial series spawned three different articles; one about what I observed as a day in the life of Director Kappos, the interview with Director Kappos and an article about Kappos’ Senior Management Team. In addition to what will be a three-part interview with Director Kappos, the Kappos 2.0 series will also entail in depth interviews with some of Kappos’ Senior Management Team, so stay tuned through the first quarter of 2012 for more.
On Thursday, January 5, 2012, the United States Patent and Trademark Office published three Notices of Proposed Rulemaking regarding implementation of various provisions of the Leahy-Smith America Invents Act (AIA). A fourth Notice of Proposed Rulemaking was published in the Federal Register on Friday, January 6, 2012. The Notices of propose rules concern inventor oaths and declarations (77FR982), as well as for third party submissions of prior art (77FR448) in a patent application and for third party citations of prior art (77FR442) in a patent file. The Patent Office also published proposed rules related to the statute of limitations under which registered practitioners may be disciplined for misconduct before the Office (77FR457).
When I first set out to write this article my intention was to do something that briefly summarized the proposed rules to bring everyone up to speed. Unfortunately, that is not going to be possible. These proposed rules are the first wave of rules in 2012 that are aimed at the implementation of the AIA. As we all well knew, the changes to patent law and practice were going to be enormous. Even these seemingly peripheral rules have layers of nuances, making cursory summary nearly impossible. For that reason I am going to go one at a time through the proposed rules, today tackling the proposed rules relating to the time limit for the Office of Enrollment and Discipline to bring an action against a patent practitioner for alleged misconduct.
Every so often I hear something about how it is unfair or unjust that patent attorneys charge so much money for the services they provide. When I hear that I always chuckle. It seems that universally people believe that whatever a patent attorney charges goes straight into his or her pocket. If only that were true! On Wednesday I published an article titled Patent Strategy: Discovering Crucial Patent Examiner Data. As the comments to the article progressed on topic for the most part, things started to get a little off topic just a bit, which is what is prompting this article.
In Patent Strategy I explained that a reasonable quote for an office action response is $2,000. Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average. This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”
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