Posts Tagged: "bpai"

U.S. Patent Office Finalizes New Appeal Rules

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.

James Donald Smith Named Chief Patent Judge at USPTO

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.

Google Patents the Google Doodle

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.

Patent Truth and Consequence: File First Even in the U.S.

The date of invention relates to your conception. This is true whether you are engaging in an interference proceeding seeking to obtain a claim instead of another who is also seeking the claim, or you are attempting to demonstrate that you can get behind a reference used by an examiner because you have an earlier date of invention. The hallmark of a first to invent system is that those who file second can obtain a patent under very strictly limited scenarios. A byproduct of a first to invent system is that if the examiner finds prior art you can “swear behind” the reference using a 131 affidavit to demonstrate that reference is not prior art for your invention. In both the interference context and the 131 affidavit context there needs to be proof of conception that will satisfy the patent laws.

Smucker Loses Reexam Battles, But May Win Litigation War

The Board’s analysis might interest patent prosecutors who routinely face rejections based on “applicant’s admissions,” not to mention the applicants who feel obliged to submit hundreds of litigation documents to comply with the duty of disclosure. Similarly surprised will be the litigators who ask whether admissions in pleadings are binding or can be withdrawn, not whether they are admissible. The Board’s refusal, because of lack of resources, to compare Smucker’s accused commercial squeeze bottle with the disclosure of the Seaquist reference is also open to question, especially since there does not appear to be any dispute regarding the structure of Smucker’s commercial nozzle. Reexamination practitioners take note.