The United States Patent and Trademark Office (USPTO) was granted fee setting and adjusting authority with respect to patent fees in the Leahy-Smith America Invents Act (AIA), which was signed into law on September 16, 2011. The fee setting (or adjusting) process is not a simple process. As you might expect, there are numerous hoops the agency was required to jump through before making the fees final. Those hoops have been jumped through and the final rules on patent fees will publish in the Federal Register on Friday, January 18, 2013.

Most of this final rules package on fees will go into effect 60 days later, with some portions not becoming effective until January 1, 2014. For example, in response to public comment, small and micro entity fee reductions for international application transmittal, filing, processing and search fees will be effective January 1, 2014 to permit adequate time for operational changes associated with international systems and forms.

One major step in the fee setting process was the publication of proposed fee rules in September 2012.  In response to public comments received after those proposed rules were published the USPTO modified some of its revenue and performance targets in the final rule, allowing the agency to reduce certain fees.

Since April 2011, the United States Patent Bar Examination has been a moving target. For many years the exam was static, largely remaining the same. Numerous repeat questions would be asked from administration to administration and changes to the law not tested. In fact, it was nearly 5 years before the USPTO started testing changes to the law of obviousness mandated by the U.S. Supreme Court in KSR v. Teleflex, which was difficult to imagine since the law fundamentally changed and impacts nearly ever application filed.

Enter David Kappos. As Kappos was setting out to redefine the USPTO he also made time to have his team update the stale patent bar exam. The first updates of the patent bar examination in some time were unveiled in April 2011, and with every new Federal Register Notice the exam is being updated to test the latest law and newest rules.

There does, however, remain a problem associated with studying for the patent bar exam. The Manual of Patent Examining Procedures is not up to date, and in places it is significantly out of date. That can make studying for the patent bar a daunting task for those who attempt to do it on their own. Without the guidance of a course that can pull everything together it is quite possible that a student will study the wrong material out of the MPEP, even believing they are about to get a question correct because the answer is included in the MPEP. A case in point will illustrate.

This is the final segment of my three-part interview with Chief Judge James Smith and Vice-Chief Judge James Moore of the Patent Trial and Appeal Board of the United States Patent and Trademark Office.

In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II of the interview picked up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.

In the finale, Part III (which is below), we talk about how cases are assigned to various panels, and we spend time chatting about how and why a case might be a good candidate for an expanded board.  We also discussed when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion with respect to the so-called mediation program that has as its goal the short-circuiting of appeals that ought to be unnecessary for the Board to consider.

QUINN: So there was something that you talked about a little bit before.  You just touched on the signing based on familiarity.  Obviously the Board is broken down like the examining corps because you don’t want somebody with—I tell clients all the time it’s like you don’t want me working on a biotech or chemical application at all so you have to have certain familiar—within that subside who is—do you just randomly assign or do you go within that unit and say okay well these judges have a particular facility with this type of technology because bio is big, chemicals big area, not everybody knows or has the same facility.  How is that decision made?  And then the second part of that question was I did want to go back and get into what kind of factors do you consider when you’re thinking about expanding a panel?  I’m not asking you to say well in this case we did it because or whatever, but is there like a list of factors or things that you maybe weigh one way or the other?

This is the final installment of my interview with Seth Waxman. In the finale Waxman goes through the process that the Supreme Court goes through to determine whether to accept a case and grant certiorari. As a former Solicitor General of the United States Waxman focuses on the interplay between the Supreme Court and the Solicitor’s Office, particularly detailing what is known as a Call for the Views of the Solicitor General, which Waxman explains comes in the form of an invitation to participate and share the U.S. government view of the issues.  Of course, “[a]s a practical matter you cannot RSVP your regrets,” Waxman says jokingly.

Without further ado, here is the final installment of my interview with Seth Waxman.

WAXMAN: [Y]our first question was what does the Supreme Court look to in deciding what kinds of cases to take… [T]hey are looking for either a court that has incorrectly decided an unquestionably important issue.  The paradigm would be a court has declared an act of Congress unconstitutional.  The Supreme Court is going to review that.  It may wait until a couple of other circuits have weighed in, but maybe not.

The other paradigm is there’s a split in the circuits.  The same legal question with the same set of facts will definitely be decided differently in different jurisdictions.  Then the Supreme Court has to step in because that can’t be in a national judicial system.

Have you ever wondered why the Supreme Court is taking so many patent cases over the last few years?  In Part I of my interview with Seth Waxman we learned that while he was the Solicitor General of the United States, and even before ascending to that position, he advocated within the Department of Justice for at least occasionally seeking Supreme Court review of Federal Circuit cases. That lead from a trickle of cases to what has become a handful of cases year after year.

Personally I think there are plenty of cases that the Federal Circuit gets wrong and should be taken by the Supreme Court to get things correct. But that is now what the Supreme Court does.  They are looking for meaty issues, not just to get some esoteric point of patent law correct. In fact, it is my observation that the more esoteric and the more incorrect the Federal Circuit the less likely the Supreme Court will get involved. But that is just my view from the sidelines.

Waxman, steeped in the rules, procedures and art of Supreme Court advocacy drills down deeper.

WAXMAN: Well, I think it’s a combination of several different things.  When you’re talking about patent decisions of the Federal Circuit, for purposes of answering this question it’s useful to distinguish between rulings about litigation procedure in patent cases and rulings about the meaning of substantive patent law.  With respect to the former, it’s easy to see why the Supreme Court’s interest would be piqued if a petitioner says, as it did for example in Medimmune, “there’s a general rule that applies across all the regional circuits with respect to standing in declaratory judgment actions.  But the Federal Circuit applies a different  rule  in patent cases.”  That is just the kind of disuniformity the Supreme Court is looking for.  It’s proverbial “split in the circuits” that the Court feels it needs to address — where a particular law or set of procedures is being interpreted or applied differently in one part of the country than another.

Seth Waxman was the 41st Solicitor General of the United States, in that position from November 1997 until January 2001. Since the time he left the Department of Justice and put representing the United States behind him he has become one of the most sought after appellate advocates in the country.  Waxman, who practices at WilmerHale in Washington, DC, has also become quite in demand in the patent community, both as a counselor during patent litigation and then as litigation turns into appeals he takes center stage.

Waxman has become one of America’s super lawyers, specializing in all kinds of appeals before the Supreme Court of the United States. He is in such demand in patent matters because the Supreme Court has never been known to be a warm and welcoming place for patent owners, but Waxman has achieved notable victory where many in the industry suspected certain defeat.

I spoke with Waxman in August 2012 on the record. What follows is Part II of my interview with Seth Waxman. In Part I we discussed the path to becoming Solicitor General and how and why Waxman decided to leave private practice. Part III (forthcoming) will discuss why the Supreme Court is so interested in patent cases, and the finale, Part IV (also forthcoming), will discuss the mechanics of a Supreme Court grant of certiorari, so stay tuned!

Seth Waxman is not your ordinary appellate attorney.  He has an undergraduate degree from Harvard, a law school degree from Yale and early in his life he spent a year in Africa doing humanitarian work.  Indeed, Waxman is committed to the cause of pro bono representation, which is far more than a polite nicety or done to score political points with the bar.  One of America’s “super lawyers” devotes as much as 20% of his practice life to pro bono causes.

Waxman rose from law clerk to the Honorable Gerhard A. Gessell, to be a successful attorney in private practice for 17 years.  Ultimately Waxman would be invited to work at the Department of Justice, where he became Associate Deputy Attorney General and finally Solicitor General during President Bill Clinton’s second term.

All of these accomplishments would be more than enough to fill out a lifetime spent in the law, but upon leaving the Department of Justice, Waxman has become nationally recognized and highly sought after as one of the preeminent appellate attorneys in America.  He has also developed a particular niche in the area of patent law and litigation.

When the weight of the Supreme Court fist seemed poised to come down upon the presumption of validity enjoyed by patents it was Waxman who argued the case and prevailed. Such a victory was no small feat. This case presented a substantial uphill battle given the presumption of validity was so universally applied by the Federal Circuit. The only reason the Supreme Court would have taken the case would be to change the law, but thankfully that did not happen.

This month I have been running a series of articles on the United States Supreme Court, which is now back in session as they open ever October with a new term.  So far we have looked at Supreme Court Copyright Fair Use Cases and Supreme Court Trademark Cases.  Today we switch things up a little and talk patents, focusing on one of the most important decisions the Supreme Court has made over the last generation — i4i v. Microsoft.

Some would argue that i4i v. Microsoft was not such an important case, and I suppose that is one way to look at this.  The Supreme Court got the decision correct, so it just managed to keep the status quo in place.  But if the Supreme Court had chipped away at the presumption of validity of a patent the way the Microsoft and many amici asked the patent system would be far worse off today.  In fact, patents would almost not be worth the effort if they could so easily be challenged.

With this in mind I recently chatted with Michael Cannata, who is a Partner with NW Patent Funding Corporation. Through a joint venture with NW Patent Funding Corporation, Michael is an advisor and manager to the Northwater Intellectual Property Fund, which was established in 2005 as one of the 1st funds involved in patent litigation financing.

As most of you are undoubtedly aware, the United States Patent and Trademark Office has been cranking out proposed rule packages one right after another.  The speed at which these rules packages are coming out is impressive, but also makes it virtually impossible to keep pace while you continue to try and represent clients.  The USPTO is obviously putting in a lot of time and effort, and by and large it seems that they are doing a good job.  But as you start to review proposed rules package after proposed rules package you start to get the sense that the America Invents Act (AIA) is going to change even more than anyone expected.

One of the rules packages that is sure to capture the attention of patent attorneys and litigators alike is the recently released Rules of Practice for Trials Before the Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (hereinafter “Board rules”).  What a mouthful! This particular rules package is some 35 pages in the Federal Register 3 column format.  If you copy and past into Word with Arial 12 point font this rules package is 86 pages, just to give you some idea of the magnitude.

In the annual State of the Union Address President Obama explained: “Innovation is what America has always been about.”  Today the Obama Administration took major steps forward to collaboratively work with private industry to tap American ingenuity to assist in a world-wide humanitarian effort.  The United States government will work with the private sector, universities, and non-profits to foster game-changing innovations with the potential to solve long-standing development challenges in health, food security and environmental sustainability.

I had the honor of being invited to the White House today for the Innovation for Global Development Event, which was held in support of the President’s commitment to using harness the power of innovation to solve long-standing global development challenges.  As a part of this event, David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, launched a pilot program dubbed Patents for Humanity, which is a voluntary prize competition for patent owners and licensees.  The pilot program seeks to encourage businesses of all kinds to apply their patented technology to addressing the world’s humanitarian challenges.

At this time of the year many attorneys and agents are not paying all that much attention to the rules and requests for comments coming out of the Patent Office. Truthfully, with the number of changes that have taken place under the Kappos run Patent Office and the enormity of the America Invents Act many patent attorneys, including myself, are worn out!  Add to that the typical end of the year matters for clients and our own businesses and it is easy to miss announcements in November and December.

With that in mind I thought I would take this opportunity to try and bring everyone up to speed on the various patent related announcements and notices in the Federal Register that were published in November 2011 and December 2011.  I am told that more are on the way in January 2012.  I can’t wait!

The United States Patent and Trademark Office was busy last week with Federal Register Notices while most of the business world seemed to be slowing down for the Thanksgiving holiday in the United States. Look for more on the various USPTO Federal Register Notices for November 2011 in the coming days, but let’s focus our attention on what most will likely consider the “big-ticket” item to emanate from the USPTO last week — changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, which were announced in the Federal Register on Tuesday, November 22, 2011.

First and foremost, it is worth saying that the PTO has finally withdrawn the previously published final rule set relative to ex parte appeals before the Board, which never went into effect.  This withdrawal of the failed 2008 changes to PTO appeals is effective November 22, 2011.  For more on these previously published rules and the procedural background leading up to these amendments to USPTO appellate practice see PTO Proposes Rescission of Stayed Ex Parte Appeals Rules. The remainder of these new rules will go into effect on January 23, 2012.

The difference between a successful and unsuccessful season for an NFL Football Team often times hinges upon the outcome of a single game. In some cases, a single play of a game can doom a team’s season or even a coaching/playing career. Due to the heightened importance of games in the NFL, indeed, the importance of every play, instant replay is utilized more often in this sport than in any other.

Instant replay is employed as a supervisory review mechanism, aided by video technology, to challenge referee decisions made during an NFL game. For example, if a referee mistakenly decides that a player has fumbled the football, the coach of the allegedly fumbling team can request a short conference whereby the deciding referee confers with other game officials on the decision, in view of video evidence (i.e., instant replay). In order to overturn the decision there must be clear visual evidence of a mistake.

To quote Lee Corso of ESPN College Football Gameday fame — not so fast my friend!  The Office of Management & Budget (OMB) will not be able to complete its review of the Final USPTO Appeal Rules before they were to go into effect tomorrow, December 10, 2008, so OMB is forcing Jon Dudas and the Patent Office to delay implementation of these rules! 

I cannot remember OMB ever stepping in to stop a rules package of the PTO, but this really doesn’t come as much of a surprise to me given all of the trouble the USPTO has had with respect to getting any of its proposed rules into place.  As readers will undoubtedly recall, the USPTO has famously been prevented from implementing the claims and continuations rules, and the Federal Circuit is now considering the Patent Office’s appeal.  For a detailed chronology of the claims and continuations rules and their being enjoined see USPTO v. GSK & Tafas Chronology.