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Another Summer Without a USPTO Director

Posted: Monday, Aug 18, 2014 @ 10:14 am | Written by Gene Quinn | 1 Comment »

Back on June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. A further 11 weeks has passed and we are still without a presidential nominee to run the USPTO. The letter from Senator Hatch to President Obama is reproduced below.

In the letter, Senator Hatch also questions whether USPTO Director Michelle Lee was appointed consistent with 35 U.S.C. § 3(b)(1). Dennis Crouch and Hal Wegner have covered that issue with some detail, so there is no need to rehash that here, but suffice it to say that the Director is supposed to nominate the Deputy Director for the position, but there has not been a Director of the Office since David Kappos left in January 2013. At the time Lee was nominated Peggy Focarino, the Commissioner for Patents, had been vested with the powers and duties of the Director by the Obama Administration, although not given the title.





The Government vs. General Alexander: Who Owns His Inventions

Posted: Sunday, Aug 17, 2014 @ 10:39 am | Written by Peter J. Toren | 8 comments

General Keith Alexander (ret.)

Since retiring as the director of the National Security Agency in March of this year, General Keith Alexander has co-founded a company, IronNet Cybersecurity Inc., that reportedly charges up to $1 million a month to assist companies in protecting their computer networks from hackers. Gen. Alexander has suggested that this fee is justified in part because his company’s technology is based on his inventions relating to a “unique” approach to detecting hackers. Alexander has stated that he plans to file at least nine patent applications relating to this technology.

Certainly, Gen. Alexander can seek to leverage his NSA experience and expertise in developing a lucrative post-government career, however, the filing of the patent applications so soon after leaving government service and their cybersecurity subject raises serious questions about who actually owns these inventions and whether Gen. Alexander is seeking to profit from inventions that actually belong to the government. In interviews, Gen. Alexander has asserted that he discussed the ownership of these patent applications with lawyers at the NSA and has been assured that his inventions are not related to any work he did for the NSA, and, consequently, the inventions belong to him and not to the government. That NSA lawyers have purportedly concluded that his inventions are unrelated to his work is cold comfort in this era of Edward Snowden revelations.





Getting Your Invention to Market: Licensing vs. Manufacturing

Posted: Saturday, Aug 16, 2014 @ 9:42 am | Written by Gene Quinn | 2 comments

In my experience the reason most people do not succeed is because they just don’t know what to do, not because they are lazy or unmotivated. My hope is that this article will educate inventors and help take some of the mystery out of the steps associated with turning an invention into a profitable endeavor.

Before you consider contacting anyone the best first place to start is with a simple question, which will help you chart the right course. Ask yourself: What you want to do with your invention? Do you want to make and sell your invention? Or, do you want to sell your invention rights to an individual or company who would make and sell your invention? Or, do you want to try and license one or more individuals or companies to make and sell your invention? After you make this determination your initial strategy should come into focus.





USPTO Trademark System Maintenance Aug. 17 – 18

Posted: Friday, Aug 15, 2014 @ 12:06 pm | Written by U.S.P.T.O. | 1 Comment »

On August 17th through 18th, the USPTO will perform maintenance on the following trademark systems:

(1) The Trademark Electronic Search System (TESS) will be unavailable from 12:01 a.m. until 5 a.m. on Sunday, August 17th.

(2) The Trademark Official Gazette (TMOG), Trademark Status and Document Retrieval (TSDR), Trademark Electronic Application System (TEAS), and Trademark Electronic Application System International (TEASi) will be unavailable from 12:01 a.m. until 8 a.m. on Sunday, August 17th.

(3) The Trademark Trial and Appeal Board Inquiry System (TTABVUE), Trademark Identification Manual for Acceptable Goods and Services (TIDM), TEAS, TEASi, TESS, TMOG, and TSDR may experience intermittent service disruptions from 11:30 p.m. on Sunday, August 17th until 3 a.m. on Monday, August 18th.





PTO Proposes Rule Changes to Enable Electronic File Sharing

Posted: Friday, Aug 15, 2014 @ 11:54 am | Written by Gene Quinn | No Comments »

Earlier this summer, on July 11, 2014, the United States Patent and Trademark Office published a request for comments regarding electronic filing sharing with other Patent Offices around the world. See Changes To Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices. Written comments must be received on or before September 9, 2014. Comments should be sent by email to: AC95.comments@ uspto.gov.

In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.

Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.





Deadline Approaches for Public Comments on Patent Term Adjustment

Posted: Thursday, Aug 14, 2014 @ 4:21 pm | Written by Gene Quinn | No Comments »

Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.

Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of 35 U.S.C. § 154(b)(1)(B).  As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.





USPTO Retention Efforts – Tuition Reimbursement Returns but No Loan Repyament

Posted: Thursday, Aug 14, 2014 @ 8:05 am | Written by Gene Quinn | 3 comments

By agreement signed with the Patent Office Professional Association on June 24, 2014, the United States Patent and Trademark Office is once again providing tuition reimbursement for employees who are enrolled in law school seeking a Juris Doctor degree. See 2014 Supplemental Agreement on the Non-duty Hours Legal Study Program. To qualify the employee must have at least 2 years of USPTO experience and sign a continuing service agreement.

The continuing service agreement requires an employee who received tuition reimbursement to provide continued service with the federal government for 30 days for each credit paid for by the USPTO. If the employee leaves the federal government prior to completing the required length of the continued service, the employee’s tuition reimbursement obligation will be on a pro rata basis (based on thirty-day increments).





CAFC Can’t Review Vermont Demand Letter Enforcement

Posted: Wednesday, Aug 13, 2014 @ 11:15 am | Written by Gene Quinn | 7 comments

Last week the United States Court of Appeals for the Federal Circuit issued a decision in State of Vermont v. MPHJ Technology Investments, LLC. The decision, which was really not much of a decision because the Federal Circuit concluded they lacked jurisdiction, is interesting for at least several reasons.

First, MPHJ Technology Investments is the company that New York Attorney General Eric T. Schneiderman reached a settlement with in January 2014. See NY Attorney General Settles Investigation into Patent Troll. The other reason this case is of interest is because of Vermont’s extremely aggressive stance against the bad actors in the patent litigation industry. See Vermont Approves Patent Troll Legislation.

While Vermont’s actions are undoubtably laudable, despite what some conclude I suspect that when challenged the legislation will fall because it pre-empts patent law, which is federal. For example, one of the factors that would suggest a bad faith patent enforcement under the Vermont statute is if there has previously been a lawsuit or threatened lawsuit based on the same or similar claim of patent infringement.