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.
What appears below is the speech Henry Nothhaft (Tessera President & CEO) gave at the Innovation Alliance conference on January 21, 2010, which is published with his permission. Readers may also find interesting Nothhaft’s recent article Looking for Jobs in All the Wrong Places: Memo to the President, relating to President Obama’s State of the Union Address and published by Harvard Business Review.
Hank Nothhaft addresses the Innovation Alliance Conference, 1-21-2011.
All told, I’ve helped create more than 6000 jobs and return 8 billion dollars to investors. And this work experience has given me first hand insight into a subject that economists are only now beginning to study closely. Namely the surprisingly powerful role that start ups play in job creation and economic growth. Of course, economists have been studying the sources of economic growth for a long time. 50 years ago, Robert Solo discovered to every one’s great shock that virtually all economic growth, or at least 80% of it comes from technological innovation. Not capital inputs or productivity increases or anything else, just technological innovation, the kind of break-through innovation that crates whole new industries and millions of jobs. Like the development of semiconductors, personal computers, software, and the Internet.
Kappos at the Innovation Alliance conference, 1-21-2011.
Yesterday David Kappos, the Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, went to Capitol Hill to testify before the House Subcommittee on Intellectual Property, Competition and the Internet, which is a part of the House of Representatives Committee on the Judiciary.
The title of Kappos’ prepared remarks was How an Improved U.S. Patent and Trademark Office Can Create Jobs. For those who are marinated in the goings on at the Patent Office a lot is review with a few tidbits of new information. Specifically, we learned that the USPTO projects an average first action pendency of 23 months by the end of fiscal 2011, that participating in the First Action Interview Pilot Program more than doubles the likelihood of getting a first action allowance, that Track 1 rules are imminent with rules for Tracks 2 and 3 to follow and during FY 2010 nearly 6,000 USPTO employees worked from home at least a portion of their work week. We also heard an ominous and declarative statement from Kappos, who told the House Subcommittee on Intellectual Property that the diversion of fees will cause the patent backlog to rise.
It has been an interesting year for us at IPWatchdog.com, from getting sued in January 2010, to exclusive interviews with the likes of Chief Judge Randall Rader, Chief Judge Paul Michel, Former U.S. Senator Birch Bayh, USPTO Director David Kappos and former USPTO Directors Todd Dickinson and Nick Godici and others, we have stayed busy. We have put more emphasis this year on reporting live from industry news events, such as from the BIO 2010 International Convention and the AIPLA Annual Meeting. Of course, the familiar opinion commentary that I so love to write has also been a mainstay.
The big news for us is just coming in as of today. I am pleased to announce that IPWatchdog.com was selected by the readers of the ABA Journal as their favorite IP Law blog for 2010. See ABA Journal Blawg 100 IP Law category for 2010. I am also pleased to announce that for 2010 we had over 2,000,000 visits, delivered nearly 11.8 million pages, our homepage was viewed 3.06 million times and we averaged over 67,000 unique monthly visitors! Thanks to all our readers for coming back day after day, and thanks to all of our Guest Contributors!
In a conference call this afternoon with reporters Commerce Secretary Gary Locke announced that the first Regional Patent Office would be located in Detroit, Michigan and will open at some point during 2011, employing some 100 patent examiners with some additional support staff. Locke explained that as a part of the nationwide workforce initiative of the Obama Administration high paying jobs would be coming to the USPTO Detroit Satellite Office. Locke said that while 100 patent examiners is an appropriate level of staffing initially that number could expand over time if the Regional Patent Office model proves successful. Secretary Locke also explained that the Detroit Satellite Patent Office will be “the first of several Patent Offices we hope to establish around the country.” When pressed during the question and answer phase of the call, Secretary Locke said that perhaps two additional Satellite Patent Offices might open “within the year after Detroit.”
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