The United States Patent and Trademark Office (USPTO), in cooperation with the Office of the Intellectual Property Enforcement Coordinator (IPEC), today announced the launch of a new online database where U.S. government agencies are now posting information about the intellectual property rights (IPR) training programs they conduct around the world.
The Global Intellectual Property Education: Training Program Database was a product of the 2010 Joint Strategic Plan on Intellectual Property Enforcement. The Strategic Plan called for the creation of a central database in which agencies that conduct international intellectual property enforcement training could deposit training materials to promote greater coordination and avoid duplication of resources.
U.S. Commerce Secretary Gary Locke will belatedly commemorate World Intellectual Property Day on Thursday, May 5, 2011, in a ceremony at the Rayburn House Office Building in the House Judiciary Committee hearing room. The event will take place starting at 4:00 pm. Secretary Locke’s remarks will begin at approximately 4:10 pm, and he is expected to highlight the importance of intellectual property protection and enforcement to the U.S. economy, celebrating the 11th anniversary of World Intellectual Property Day. World Intellectual Property Day is April 26, 2011, each year. For more on the worldwide celebration of World Intellectual Property Day this year see Ranting on Congress: Not a Happy World IP Day in the US.
Manny W. Schecter, Chief Patent Counsel, IBM Corporation
On April 4, 2011, I had the honor to interview Manny Schecter, the Chief Patent Counsel for IBM Corporation. I met Manny in October 2010 when I did a CLE presentation at IBM’s offices in Armonk, New York. Since that time I have worked to schedule a time to chat with him on the record, and we were recently able to coordinate and chatted on the record for approximately 60 minutes. During our conversation we talked about numerous topics, including patent reform, Microsoft v. i4i, Patent Office initiatives such as the Three Track initiative and Peer to Patent. We also discussed David Kappos, his former boss, as well as Watson’s Jeopardy triumph, the new Intellectual Property @ IBM blog and the usual fun questions.
We started the interview diving straight into patent reform. In the fast moving and shifting landscape of patent reform it is worth noting that the most recent amendments to the House version of patent reform had not been discussed or voted on when our interview took place, so for those who have been hanging on every twist and turn you will notice that the House Judiciary Committee vote on patent reform was not a topic of discussion because it had not yet happened.
I recently had an opportunity to sit down with Terry Rea for an interview in her office on the campus of the USPTO in Alexandria, Virginia. Among other things, in part 1 of my interview with the newly minted Deputy Director Rea we discussed Obama Administration interest in harmonizing patent laws, but standing firm on patent eligibility remaining very broad in the United States. In part 2 of the interview we discuss the energizer bunny, known better as USPTO Director David Kappos. We also discuss what skills she has brought from a private law practice that she feels will help her most at the Patent and Trademark Office. Finally, we discussed initiatives the USPTO is pursuing to assist women entrepreneurs and the inevitable questions about where we stand with patent reform.
Unfortunately, due to a tight schedule we were not able to get to some of the familiar fun questions that give us a look at Terry Rea the person, such as favorite author, favorite movie and that sort of thing. She has agreed to go back on the record, so that will be forthcoming at a date and time yet to be determined.
Congressman Bob Goodlatte (R-VA), Chair of House IP Subcommittee
Today the House Subcommittee on Intellectual Property, Competition and the Internet, which is a subcommittee of the House Committee on the Judiciary, held a hearing on the America Invents Act, the House version of patent reform. While the House and Senate bills are largely identical, there is one striking difference between the two, and that difference relates to prior user rights. In the United States we have a very limited prior user rights defense today that relates to business methods only, but the House bill would extend a prior user rights defense to all inventions and patents except those that created through funding by the U.S. federal government or those funded solely by Universities. According to Congressman Jim Sensenbrenner (R-WI) the inclusion of prior user rights might just be the poison pill that kills patent reform.
Personally speaking, I am sick and tired of legislative carve outs. If prior user rights are such a great idea then have them apply across the board. Of course, prior user rights are decidedly not a good idea and the bill could never pass if there were not an exception for Universities. That should tell you something right there! Unfortunately, the House will be urged to retain prior user rights defenses and some of the arguments in favor at the hearing are flat wrong, disingenuous and border on wanton misrepresentation.
Renee Quinn (left) and Senator Landrieu (right) at the USPTO Women's Entrepreneurship Syposium
On Friday March 11, 2011, I attended the Women’s Entrepreneurship Symposium in honor of Women’s History Month at the United States Patent and Trademark Office. The program was co-sponsored by the US Women’s Chamber of Commerce and focused on women entrepreneurs, the importance of intellectual property protection for their innovations, how to leverage economic opportunities for women-owned businesses and what resources are available exclusively for women-owned small businesses. The topics discussed focused solely on American business.
The exhibition “The Great American Hall of Wonders” examines the 19th-century American belief that the people of the United States shared a special genius for innovation. It explores this belief though works of art, mechanical inventions and scientific discoveries, and captures the excitement of citizens who defined their nation as a “Great Experiment” sustained by the inventive energies of Americans in every walk of life. “The Great American Hall of Wonders” will be on view at the Smithsonian American Art Museum from July 15 through Jan. 8, 2012. The museum is the only venue for the exhibition, which is organized by Claire Perry, an independent curator who specializes in 19th-century American cultural history. Until 2008, Perry was curator of American art at the Cantor Arts Center at Stanford University.
In an e-mail circulated within the United States Patent and Trademark Office earlier today USPTO Director David Kappos announced that Teresa Stanek Rea has been appointed to be the new Deputy Director of the USPTO. Rea will start in her new role on March 1, 2011. According to a press release issued by the USPTO: “Rea will take charge of an office that encourages innovation and technological advancement, and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace.” I’m not exactly sure what that means, but it seems to be an attempt to define the responsibilities she will have spearheading initiatives within the Office.
Deputy Director Designate Rea is a patent attorney herself, having been admitted to the patent bar on December 15, 1981. According to her profile page on her firm’s website – Crowell & Moring LLP – Rea’s practice has focused on complex patent litigation and inter partes matters, as well as patent procurement and portfolio management, including patent preparation and prosecution. Rea also has experience in drafting infringement and validity opinions, as well as interference, and licensing matters. Therefore, it seems that the push to have high achievers with industry specific patent experience continues at the Patent Office, which is refreshing.
Earlier today, in the Federal Register, the United States Patent and Trademark Office published Supplementary Guidelines for determining compliance with 35 U.S.C. 112 and for the treatment of related issues in patent applications. According to the Patent Office, these Supplemental Guidelines are based on current law and are believed to be fully consistent with the binding precedent. In reviewing the guidelines I would agree. There seem to be no surprises or Trojan horses. Nevertheless, I do expect that practitioners will find it quite useful to review these Guidelines given the numerous instances of pro-applicant language and direction to patent examiners.
Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.
Earlier today the United States Patent and Trademark Office announced more details relating to the “Three-Track” program, which was first published for public comment in June 2010. See USPTO Announces New Examination Rules). The Three-Track initiative is designed to enable applicants to choose the speed with which their patent application is processed. On Friday, February 4, 2011, the USPTO will publish in the Federal Register a notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date for a proposed fee of $4,000.
Sadly, because the Patent Office does not have fee setting authority there will be no reduction in fees available to small entities who otherwise normally pay 50% of most Patent Office fees. Because the Congress controls which fees qualify for small entity preference everyone will need to pay $4,000 to accelerate under Track One. Perhaps this will get Congress to stand up and take notice of the patent system they have so long neglected. I can only imagine the outcry from independent inventors and the small business community. If you are offended by the high fee just be sure to direct your ire where it is deserved; namely in the direction of Congress.