Posts Tagged: "board of patent appeals"

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

The one thing that will be markedly different from federal court practice, however, is that for the most part only registered Patent Attorneys or Patent Agents will be able to appear before the Patent Trial and Appeal Board. The Patent Office considered broadly permitting practitioners not registered to practice by the Office to represent parties at the Patent Trial and Appeal Board. Notwithstanding, the Patent Office decided against allowing non-registered practitioners from representing parties at the Patent Trial and Appeal Board the proposed rules set forth in February 2012. The USPTO explained this was because they believed that making the practice open to non-registered attorneys would present burdens on the Office in administering the trials and in completing the trial within the established timeframe and Office rules.

The biggest myth about patent appeals is that that the examiner usually wins. The Patent Trial and Appeal Board (“Board”) posts that it reverses examiners only one out of every three decisions —33%. That number is accurate, and reflects the percentage of reversals among Board decisions. But another number is more helpful — 75%. That is the rough percentage of reversals among all appeals—not just Board decisions. The difference arises because not all appeals result in a Board decision. In fact, the vast majority of appeals (80%) never reach the Board. The Board’s 33% number has nothing to say about this invisible sea of patent appeals.

You may have heard, but the USPTO is hiring. Not only is the USPTO searching for Administrative Patent Judges, but they are finding some extremely well qualified candidates to add to the ranks of those already serving. With the permission of each of the new APJs, and the cooperation of James Smith, Chief Administrative Patent Judge, it is with pleasure that share the bios the newest APJs, each pictured with Rebecca Blank, Deputy Secretary of Commerce.

These proposed fees will undoubtedly be commented on, and the early criticism, which seems quite valid, asks how the addition of a single additional claim to be reviewed can add such large amounts to the cost. For example, if you file a petition for post-grant review and want 30 claims reviewed the fee will be $53,700. If you want 31 claims reviewed the fee will be $71,600, so that extra claim reviewed will cost you $17,900. Of course paying that $17,900 entitles you to bring challenges to 9 other claims, which would be free once you paid for the 31st claim. Essentially, with rigid segmentation of fees it is difficult, if not impossible, to see a cost of recover implementation at work. It would be far more in keeping with the statutory authority to have additional claim fees akin to what happens during prosecution when you go beyond three independent claims or 20 total claims.

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.

Deputy Director Teresa Rea has now been at the USPTO for approximately 1 year, but seems as invigorated and full of energy as she did when I first met up with her.  She seems to love the job and relish the challenges that come with this moment in Patent Office history. We chatted for approximately 55 minutes, discussing USPTO hiring, the Board of Patent Appeals and Interferences, the America Invents Act, what a typical day looks like on her calendar and much more.

The data clearly suggests that that inquiry should be made into what is going on in Art Unit 3689. If there is nothing odd after evaluation then I will be the first to report that and say that after further evaluation the patent examiners in Art Unit 3689 are doing a fantastic job. In the meantime, however, one way that we can get a more complete glimpse of what is going on in Art Unit 3689 is to take a look at the patents granted only after a decision from the Board of Patent Appeals and Interferences. Currently, according to the data available in the PatentCore system, 13 of the 24 patents granted have been granted after a decision from the BPAI, and 3 others were granted only after the applicant filed an appeal brief. That rate seems extraordinarily high to me, as does the 76.5% reversal rate at the BPAI. A look at some of the appeals themselves is elucidating.

After Judge Moore’s remarks, James Donald Smith, Chief Administrative Patent Judge, then took the podium to deliver his remarks and to introduce all of the new APJs; an impressive bunch that averages 3 advanced degrees in either science or law, some of who come from the largest patent law firms in the country, including Arnold & Porter, Foley & Lardner, Jones Day, Hunton & Williams and Finnegan Henderson. Others of the new Judges come from within the USPTO or the Department of Justice. Several of the new APJs were formerly on the Board and are now returning after a period of time in private practice.

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.

By eliminating certain briefing requirements the PTO hopes to reduce the number of non-compliant appeal briefs and the number of non-compliant examiner’s answers. Non-compliant briefs and non-compliant examiner’s answers needlessly delay consideration of an appeal by the Board, which contributes to the long delays applicants on the appeals track face. Delays due to non-compliant briefs and answers are particularly unconscionable given the average pendency for an application that must proceed to appeal, which as of October 2011 stands at 81.8 months! That is nearly 7 years from the filing of an application to resolution if action by the Board is required. When the non-compliance is minor or relates to information the Board could well obtain for itself right in the Office files it is downright nonsensical to interject delay by kicking non-compliant briefs and examiner answers. Hopefully these new rules will help at least a little bit for some applicants.

For example, does a hair dryer with integrated radio, beer bottle opener, shaving cream dispenser that floats sound marketable? Perhaps as a gag gift maybe, but the addition of random features for the sake of obtaining a patent is not usually wise. I’ve seen terribly broad disclosures filed for an inventor with one extraordinarily specific embodiment. Right away I can tell what is happening. The patent attorney (or patent agent) is drafting the disclosure so that at least one claim, no matter how narrow, can be obtained. Unfortunately, it does not typically make sense to layer on specifics unless those specifics contribute to marketability, and in most cases layer after layer of detailed specifics only makes the claim narrow and less valuable. So if you are going to try and get around prior art to obtain a patent make sure the specifics added will provide an advantage.

U.S. Commerce Secretary Gary Locke has appointed James Donald Smith of Chicago, Ill. to serve as the next Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent and Trademark Office (USPTO). As BPAI Chief Judge, Smith will lead the board that hears and adjudicates patent appeals from decisions of patent examiners. Smith begins serving as Chief Judge on May 8, 2011.

Earlier this week Google received U.S. Patent No. 7,912,915, titled “Systems and methods for enticing users to access a web site.” The patent covers what is known as a “Google Doodle.” The patent application was originally filed back in 2001, and due to Patent Office delay Google was awarded a whopping 2,618 days of patent term extension.