Posts Tagged: "John White"

Don’t forget that as of the end of the 2011 fiscal year on September 30, 2011, the PTO has a “backfile” of nearly 679,000 patent applications that have not yet been given even a first Office Action. It will take at least 3 to 4 years, likely longer, to resolve all the patent applications currently pending. If you factor in appeals from those cases, continuation applications and requests for continued examination and we are realistically talking about 7 to 8 years for this chunk of applications to work their way through the system, with the inevitable outlier patent application that will take 10+ years thanks to multiple delaying episodes (i.e., chaining RCEs and an appeal together, for example). On top of this, we will still be filing patent applications subject to the old, first to invent system through March 15, 2013. This, as well as reexamination timeline realities (i.e., statute of limitations survives 6 years past a patent falling into the public domain), means that the “old law” will remain relevant to life at the Patent Office for quite some time.

I’m not suggesting that those who write the patent bar examination questions are testing irrelevant stuff, but what types of questions would you ask if you were writing an exam question that tried to determine whether someone who wanted to be admitted to the club understood the rules well enough to become a member? You would likely ask questions about organization rules and procedures that fell into one of several categories: (1) those that are commonly misunderstood or unknown by current members; (2) those that are of extraordinary importance due to the magnitude of harm that could accompany a misunderstanding or mistake; or (3) those things that are particularly weird. So it isn’t at all surprising that counter-intuitive rules that are commonly misunderstood or misapplied make up a statistically relevant portion of the exam.

Now, we’re about to toss it out in favor of a “first to file” bent with post grant challenges and derivation proceedings? Say what…….why? What did the statute do wrong? 8 million patents is a reasonable figure to have achieved. The US is the cross roads of the world’s technology with a statutory “negative pressure” that draws innovators and their ideas here. This country has flourished.

Most patents are obtained simply on the “refrigeration theory” as I call it. Just like if you are in food service you won’t get far without the preserving effects of refrigeration. Everything spoils unless eaten immediately. Likewise in technology; without the coverage of a patent, everything spoils unless consumed forthwith (first mover advantage). The decision is simple: if it is worth doing, i.e., putting resources into, it is worth patenting.

It has always been my belief that the PLI course is the best, and now I think there is absolutely no doubt. Yes, there are some competitors out there but how many other courses have two faculty members that are practicing patent attorneys and law professors? John and I both have a private practice and we have made legal education an important part of our careers. We are even patent attorneys, which might sound like an odd thing to tout but there are actually courses out there that don’t have patent attorneys developing the course and creating materials. The patent bar exam is hard enough as it is, the rules of patent practice are almost ridiculously archaic and you think you can take a patent bar course taught by someone who hasn’t ever even passed the exam let alone represented anyone in real life? Yeah, right. Think again.

Effective April 12, 2011, the USPTO has dramatically updated the patent bar examination. As a result, the PLI Patent Bar Review Course has been completely updated – overhauled really. We had already been working on updates to our materials based on the inevitable change in the exam moving from MPEP Rev. 4 to MPEP Rev. 8. We knew it was only a matter of time before a new revision of the MPEP was tested, so we have had MPEP Rev. 8 materials at the ready. The text and questions have been completely revised and our lectures re-done. We feel confident the PLI patent bar review course is simply the best!

While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.

I believe it is time for the PTO to jump aboard the ship of the future and use document and data search techniques now being employed in the litigation and national security arenas. Many tools (software approaches) exist that multiply effort and get smarter with each go around. I believe these tools should have a place at the PTO. Search techniques that build on what others have done and that search not just publications, but file histories as well, would give examiners a leg up when trying to assess patentability and truly understand what references can and should be cited to demonstrate. Machine translation of foreign language art would also be very useful. The abstracts just do not provide enough for an Examiner to go on for foreign references. And, in many areas, foreign art is the best.

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 ABA. 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!

Today marks the 30th Anniversary of the most forward thinking patent legislation since Thomas Jefferson wrote the Patent Act in 1790, which was the third Act of Congress. Truthfully, the Bayh-Dole legislation is likely more forward thinking and inspired than even Jefferson’s work, given that the patent law written by Jefferson was merely an attempt to codify and improve upon the patent regime of Great Britain. The Bayh-Dole Act, which was enacted on December 12, 1980, has lead to the creation of 7,000 new businesses based on the research conducted at U.S. universities. As a direct result of the passage of Bayh-Dole countless technologies have been developed, including life saving cures and treatments for a variety of diseases and afflictions.

Eventually we are going to have a decision from the Supreme Court in Bilski v. Kappos, or we will know that the case will be held over until the next term of the Court, which beings in October 2010. The current Supreme Court term comes to an end on June 28, 2010, so something will soon happen worth discussing. PLI has selected a number of possible dates depending on when the Supreme Court hands down its long awaited decision.

And now a message from the shameless commerce division, brought to you by the #1 Patent Bar Review Course in the Nation… the PLI Patent Bar Review Course. PLI is offering a 20% discount for those who sign up to attend the Orange Country course in Costa Mesa, California. To take advantage of the 20% discount you need to call the PLI Patent Bar Review Hotline at 888.296.5973 by the close of business Eastern Time on Wednesday, May 26, 2010.

PLI is pleased to announce a new live course added to the schedule in conjunction with the Santa Clara University School of Law’s High Tech Law Institute. The Santa Clara course is scheduled for Monday, May 24, 2010 to Friday, May 28, 2010. The PLI Patent Bar Review course is not typically Monday through Friday, and there are always some that say they would prefer a Monday through Friday live course, so if that is your preference here is your chance.

On Tuesday, March 23, 2010, Ropes & Gray filed a motion seeking to dismiss a malpractice claim brought against the firm by Cold Spring Harbor Laboratory (CSHL). The complaint filed against Ropes & Gray also names patent attorney Matthew P. Vincent, who allegedly engaged in plagiarism by copying 11 pages of text from a patent application filed by another scientist, Dr. Andrew Fire. CSHL alleged that the copying of this material led to the United States Patent and Trademark Office concluding that the work of Dr. Hannon (of CSHL) was indistinguishable from Dr. Fire’s work and, therefore, unpatentable. The problem with this theory, as was pointed out in the Ropes & Gray motion to dismiss, copying text out of other patents and patent applications is done all the time.

Unlike Gene I did not really plan very well. I did not have credentials and am not (yet) a member of the Court. So, I was in line with the public. A patent centric public, but the public none-the-less. My fellow line standers included: Law students headed to taking the patent bar; a Finnegan partner (made me feel a little…