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.
Teresa Rae, Deputy Director of the USPTO, herself a statutory member of the Board, speaks at the March 1 ceremony.
Earlier this month, on Thursday, March 1, 2012, the United States Patent and Trademark Office held a ceremony, welcoming 9 new Administrative Patent Judges to the Patent Trial and Appeal Board. The oath of office being administered by Chief Judge Paul Michel (ret.) of the United States Court of Appeals for the Federal Circuit. For more on the ceremony see Patent Judges Sworn in at the USPTO.
You may have heard — the USPTO is hiring. Not only is the USPTO actively hiring and 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 I share the bios of the newest APJs, each individually pictured with Rebecca Blank, Deputy Secretary of Commerce.
USPTO Deputy Director Theresa Rea in her office on January 17, 2012.
I have known for a while now that I would be doing an in-depth look at the Senior Management Team at the United States Patent and Trademark Office. The series is currently in progress, and this is the second installment – my interview with Theresa Rea. Rea is a long time patent attorney and former President of the AIPLA. Currently, however, she is the person in the federal government with the longest title — Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Her title is longer than her boss’ title thanks to the inclusion of the word “deputy” twice.
When I interviewed USPTO Director David Kapposin December 2011, after the interview was concluded I asked him to give me some thoughts on his Senior Management Team. “When I say ‘Theresa Rea’ what are the first things that come to mind,” I asked. Kappos responded: “Tremendous background knowledge, energy, fun person to work with and to team with, deep knowledge of the life sciences sector…” Director Kappos would go on to say that with Rea at the agency “we’ve got all the bases covered. I’m the corporate guy, she’s the litigator. I’m the IT guy, she’s the Pharma person.” Indeed, Deputy Director Rae is the real deal and a nearly ideal compliment to Director Kappos.
Last week I wrote an article titled Business Methods by the Numbers, which took a look at the allowance rates for a variety of Art Units assigned to examine patents in class 705, the primary class where business methods and financial data processing inventions are classified in the United States. The article has raised a few eyebrows and has caused some to question whether there is disparate treatment among Art Units at the United States Patent and Trademark Office.
The fact that there is disparate treatment between and among various Art Units and patent examiners shouldn’t catch anyone by surprise. Everyone in the industry knows that some patent examiners feel they work for the Patent Granting Authority while others work for the Patent Rejection Office. Notwithstanding, there are some who are excusing what can only be characterized as truly alarming statistics as having something to do with the various types of patent applications assigned to each Art Unit. Allow me to call that out for what it is – hogwash! Class 705, including the applications handled by Art Unit 3689, is dominated by a who’s who of the largest technology and financial companies in the world. These companies hire some of the best attorneys in the world, they well understand how to write a patent application to articulate allowable subject matter and yet these large, well-funded companies represented by some of the best and brightest legal minds are incapable of obtaining a patent? If you believe that I have a bridge I want to sell you!
The United States Patent and Trademark Office earlier today welcomed 10 new Administrative Patent Judges of the Board of Patent Appeals and Interferences.
At 10:00am this morning in the North Auditorium of the Madison Building on the campus of the USPTO, Federal Circuit Chief Judge Randall Rader administered the oath of office to Jacqueline Wright Bonilla, Erica Franklin, James Housel, Deborah Katz, Neal Abrams, George Best, Andrew Caldwell, Thomas Giannetti, Andrew Metz and Grace Obermann.
The ceremony lasted approximately 45 minutes. It was well done, together with several musical numbers. After USPTO Director David Kappos’ brief opening remarks, Laverne Smith, a Board Supervisory Paralegal, sang “My Country, ‘Tis of Thee.” The program was then concluded with “God Bless America,” which was sung by April Mosby, a Board Patent Attorney.
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.
Washington – 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.
Smith currently serves as Associate General and Chief Intellectual Property Counsel of Illinois-based healthcare company, Baxter International, where he oversees its global patent, trademark and copyright affairs. He replaces Michael Fleming, the former Chief Judge who retired in the fall of 2010.
A colorized portion of Fig. 5 from the patent, showing the Founders celebrating the 4th of July in 2000.
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,” which is a decorative changes made to the Google logo to celebrate holidays, anniversaries, and the lives of famous artists and scientists. If you click on the Google Doodle on the Google website you are taken to Google search results related to the event being celebrated.
Having fun with the corporate logo by redesigning to celebrate an occasion was largely unheard of, but since the first Google Doodle launched in 1998 it has become a part of the branding of Google, with many looking forward to the next release of a new Google Doodle. The patent application, which issued as a patent on March 22, 2011, was originally filed back in 2001. Due to Patent Office delay Google was awarded a whopping 2,618 days of patent term extension.
Most who are even casually familiar with patent law and patent practice understand that it is far better to file a patent application sooner rather than later. There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar of 35 U.S.C. 102(b) from preventing a patent from issuing. Perhaps the most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US patent application being filed. In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security. What so many inventors don’t realize is that third-party activity can start the 102(b) clock ticking. So many inventors think what they have invented is so unique that no one else could ever have come up with it, thus there is nothing to worry. This logic ignores the reality that creative people do frequently engage in the same inventive activities.
On Thursday the PTO Board of Appeals affirmed (here, here) the reexamination examiner’s findings that two patents – U.S. Patent Nos. 7,314,328 and 7,325,994 – are valid over certain prior art. The ‘328 and ‘994 patents are owned by Mack-Ray and claim nozzle structures for “a spreader apparatus,” e.g., a squeeze bottle for holding jelly and spreading it on bread. Mack-Ray sued Smucker (the jelly company) for infringing the two patents, and both companies subsequently requested the present reexaminations. What will interest reexamination practitioners, however, is the extreme reluctance of the Board to consider issues not strictly within the PTO’s reexamination jurisdiction.
The United States Patent and Trademark Office today issued a Notice of Proposed Rulemaking that proposes changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. The notice requests public comment on the proposed changes, which include rescinding the highly unpopular 2008 Final Rule, implementation of which has been stayed. According to the Patent Office, this latest proposal to change appeals practice comes after consideration of the comments USPTO received at a public roundtable held in January and in response to an Advance Notice of Proposed Rulemaking in December 2009.
“We hear often from stakeholders that the patent appellate process is too complicated and burdensome,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The goal of this proposed rulemaking is to simplify the appellate process in a way that reduces the burden on appellants and examiners to present an appeal to the Board.”
Yesterday, November 8, 2010, the United States Court of Appeals for the Federal Circuit issued a decision in a case that will likely have limited applicability for most, but will definitively add another weapon in the arsenal of those who wish to challenge the final determinations of the United States Patent and Trademark Office. In a peculiar oddity (redundancy on purpose) those who choose to challenge the final determinations on patentability of the Board of Patent Appeals and Interferences (BPAI) can elect to either proceed directly to the United States Court of Appeals for the Federal Circuit, or they can elect to proceed to the United States Federal District Court for the District of Columbia. The question presented and considered by the full Court at the Federal Circuit was whether new evidence (i.e., evidence not previously presented to the USPTO) can be presented to the District Court when challenging a decision of the BPAI. The short answer — YES. However, without new evidence at the District Court the Federal Circuit must continue to give deference to the USPTO on further appeal.
The potential use of reexamination by an accused infringer to reverse, in essence, a CAFC holding of patent validity was demonstrated anew this past week in the PTO Board’s decision, Ex parte Funai Electric Co., Ltd.
Funai filed a complaint in 2007 at the U.S. International Trade Commission alleging that Vizio and a number of other manufacturers had violated Section 337 through the importation into the United States of digital television sets that infringed Funai’s U.S. Patent No. 6,115,074. The ITC found the ‘074 patent to be valid and infringed, and issued a limited exclusion order prohibiting the importation of infringing television sets into the United States. In May of this year the CAFC affirmed the ITC’s ruling, including its determination that the ‘074 claims were “not invalid” over the combination of prior art references asserted by Vizio and the other Respondents.
Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.
On February 12, 2010, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office (USPTO) issued an decision invalidating Pfizer’s broad claim for treating male erectile dysfunction (ED). U.S. Patent No. 6,469,012, entitled “Pyrazolopyrimidinones for the Treatment of Impotence” issued on October 22, 2002 and assigned to Pfizer, Inc. (NYSE: PFE). The patent issued from U.S. Patent Application No. 08/549,792, filed March 4, 1996, which is the national phase of PCT/EP94/01580, filed May 13, 1994, and which claims benefit to GB Patent Application No. 9311920, filed June 9, 1993. The patent claims cover the first commercially successful male impotence drug — Viagra®. Immediately after the decision was handed down Pfizer spokesman, Chris Loder, said “the decision has no effect on Pfizer’s patent claims relating to Viagra.” Loder also said Pfizer would appeal the decision. As yet there remains no word on an appeal by Pfizer.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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