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On October 10, 1999, first went live on the Internet. It has been an honor and privilege to get to know so many wonderful people in our industry over the last 15 years, to talk to many industry leaders on the record, and to in some small way continue to push the debate forward. Thanks to our readers and contributors we have been recognized as as one of the top 100 legal blogs by the American Bar Association for 5 years in a row. For 3 of the last 4 years (2010, 2012, 2013) we were recognized as the top intellectual property law blog according to the ABA. In January 2014 we were also honored to be inducted into the ABA Blawg Hall of Fame. CLICK HERE to read more.

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An Interview with Sharon Barner, Former PTO Deputy Director

Posted: Sunday, Apr 10, 2011 @ 11:47 am | Written by John White | 1 Comment »

Sharon Barner

Sharon 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.

While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.

Learning from Apple Patent’s Newsreader for Mobile Devices

Posted: Friday, Apr 8, 2011 @ 6:10 pm | Written by Gene Quinn | 15 comments

Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.”  The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days.  While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained.  I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded.  It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

When reading a patent I never jump first to the claims, preferring to start to get an understanding of what the invention is and taking everything in before trying to tackle the claims.  This is typically helpful, I find, because the specification is the omnibus disclosure of the invention and works to support the language and terminology presented in the claims, which are nearly universally a subset of the overall invention disclosed in the specification.

USPTO to Remain Open Even if U.S. Government Shuts Down

Posted: Thursday, Apr 7, 2011 @ 8:16 pm | Written by Gene Quinn | 6 comments

Because of sufficient funding not linked to the current fiscal year, the United States Patent and Trademark Office will remain open for business and will continue to operate as usual through the close of business on Monday, April 18, 2011 even in the event of a government shutdown. The USPTO has enough reserves to operate for 6 business days even in the event of a government shutdown, and should a shutdown occur and continue longer than 6 days the USPTO anticipates that limited staff would still be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.  Thus, USPTO employees are not in any immediate risk of a furlough due to the ongoing fiscal year 2011 budget battle being waged between Speaker of the House John Boehner, Senate Majority Leader Harry Reid and President Barack Obama.

Lessons: 5 Odd Things Inventors Tell Patent Attorneys

Posted: Thursday, Apr 7, 2011 @ 8:39 am | Written by Gene Quinn | 6 comments

As you might be able to imagine, I get quite a bit of e-mail.  Much of the e-mail I get is from inventors and small businesses who are looking for representation, or from those who are seeking to ask some questions to help point them in the right direction.  Over the years the one thing that has probably amazed me most is that those who contact me for assistance or advice frequently ask the same questions and present with the same stories, although not the same inventions or technologies.  So I thought it might be worthwhile to write about the most common misconceptions in the inventor community.

First, I don’t want this article to come off as suggesting that I don’t get good business from the Internet.  At this point nearly all of the legal work I do comes as a result, in one shape or form, from my activities by and through  But in addition to writing about the inside baseball of the patent world I also write various informational articles and tutorials aimed at an audience with a variety of levels of understanding.  So some of those who present for assistance of one kind or another are best described as “newbies.”

Increasing Patent Allowance Rates by Selectively Targeting a More Technological Patent Class

Posted: Wednesday, Apr 6, 2011 @ 2:46 pm | Written by Nowotarski, Zank & Bowman | 8 comments

Class matters.  Technology class, that is.  In some of the more rapidly growing areas of our economy, like Social Networking and Mobile Phone Apps, it looks like you can almost double patent allowance rate by making sure your patent application is classified in the more technological patent office art units.  For entrepreneurs, a faster allowance rate and earlier acquisition of patents can directly translate into better fund raising, more secure commercialization and more profitable licensing.  For large corporations, it means substantially reduced patent costs.  And with some forethought you can probably influence which class your application is placed in while at the same time creating a more comprehensive patent application.

The Problem with Software Patents? Uninformed Critics!

Posted: Tuesday, Apr 5, 2011 @ 3:50 pm | Written by Gene Quinn | 42 comments

The problem with software patents isn’t that they are granted on obvious innovations, but rather that those who spend so much time complaining about them are just about completely clueless, at least with respect to patent law. It borders on the comical to observe some of the apoplectic rants against software patents, which almost universally conclusively prove that the person writing (or ranting) has not read past the title of the software patent in question. That is, of course, assuming they have even looked at the patent and are not merely mimicking what they have read from some other equally clueless and irresponsible critic.

WIPO: International Trademark Filings Rise 12.8% in 2010

Posted: Tuesday, Apr 5, 2011 @ 9:04 am | Written by Gene Quinn | Comments Off

International trademark activity recovered during 2010, according to the World Intellectual Property Organization (WIPO), which received 39,687 applications under the 85-member Madrid System for the International Registration of Trademarks (“the Madrid system”). This increase in application from 2009 to 2010 represents a 12.8% rate of growth. Growth was the largest for the Republic of Korea (+42.2%), China (+42%), Italy (+38.7%), United States of America (+29.6%), European Union (+26.9%) and Japan (+20.2%).

USPTO to Begin Accepting Requests for Prioritized Examination of Patent Applications on May 4, 2011

Posted: Monday, Apr 4, 2011 @ 5:45 pm | Written by U.S.P.T.O. | 7 comments

Washington– The United States Patent and Trademark Office (USPTO) announced today plans for the agency to begin accepting requests for prioritized examination of patent applications – allowing inventors and businesses to have their patents processed within 12 months. It currently takes nearly three years to process the average patent. The program, called Track One, launches May 4, 2011, and is part of a new Three-Track system, which will provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process.

Interview Part 2: USPTO Deputy Director Terry Rea

Posted: Monday, Apr 4, 2011 @ 12:31 pm | Written by Gene Quinn | 1 Comment »

USPTO Deputy Director Terry Rea

I recently had an opportunity to sit down with Terry Rea for an interview in her office on the campus of the USPTO in Alexandria, Virginia.  Among other things, in part 1 of my interview with the newly minted Deputy Director Rea we discussed Obama Administration interest in harmonizing patent laws, but standing firm on patent eligibility remaining very broad in the United States.  In part 2 of the interview we discuss the energizer bunny, known better as USPTO Director David Kappos.  We also discuss what skills she has brought from a private law practice that she feels will help her most at the Patent and Trademark Office.  Finally, we discussed initiatives the USPTO is pursuing to assist women entrepreneurs and the inevitable questions about where we stand with patent reform.

Unfortunately, due to a tight schedule we were not able to get to some of the familiar fun questions that give us a look at Terry Rea the person, such as favorite author, favorite movie and that sort of thing.  She has agreed to go back on the record, so that will be forthcoming at a date and time yet to be determined.

House Inter Partes Review Provisions Threaten Patent Reform

Posted: Sunday, Apr 3, 2011 @ 1:52 pm | Written by Gene Quinn | 5 comments

On March 8, 2011, the United States Senate passed S. 23, the Senate version of patent reform, by an overwhelming vote of 95 to 5.  Just about three weeks later the House Judiciary Committee unveiled the House version of patent reform.  While the framework of the House bill is largely the same as the framework of the bill that achieved overwhelming bipartisan support in the Senate, there are some non-trivial deviations that place the likelihood of achieving patent reform squarely in doubt.  The two big ticket items being kicked around as differences that threaten the entirety of patent reform are inter partes review and prior user rights.  These two issues could cause a splintering of stakeholders and place us back in the limbo we have been in for the past 6 years, which would be tragic because Congress is finally poised to adequately fund the United States Patent and Trademark Office.