Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the USPTO’s draft Strategic Plan for fiscal years (FY) 2014-2018 is posted for public review and comment on the USPTO website. The draft plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide.
In order to represent clients before the U.S. Patent Office it is necessary to take and pass the Patent Bar Examination. In order to be registered to practice before the Office the individual seeking registration must: (1) Apply to the USPTO Director in writing by completing an application for registration form supplied by the OED Director and furnishing all requested information and material; and (2) Establish to the satisfaction of the OED Director that the applicant possesses good moral character and reputation and the requisite scientific qualifications and competence to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.
In recent years the registration exam to practice before the United States Patent and Trademark Office has undergone significant change. For example, effective April 12, 2011, the patent bar examination was updated to test MPEP 8th edition revision 8, as well as KSR v. Teleflex, Bilski v. Kappos and the 112 Guidelines. This update in testable material brought the patent bar exam current through Winter of 2011.
Effective January 2012, the USPTO updated the patent registration examination to cover two new rules issued September 26, 2011 that relate to the Leahy-Smith America Invents Act. These new rules permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests. Additionally, the patent registration examination was also at this time updated to include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.
On February 17, 2011, Teresa Stanek Rea was announced as the new Deputy Director at the USPTO. Yesterday Teresa Rea, who is now the Acting Director of the United States Patent and Trademark Office, announced that she will be leaving the Office, ending speculation that she may be announced as the next Director of the Patent Office.
Now the wait continues for the announcement of a new Director, which could come at any time. I have been hearing rumors about who it may be, but at this time I’m not ready to publicly speculate. There seems to be a political candidate with ties to the tech industry that has risen to the top of the Obama White House list.
Upon joining the USPTO, Rea, who is known both inside and outside the Office as “Terry,” took the mantle of U.S. government employee with the longest title; Rea’s full title prior to becoming Acting Director was Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.
Terry is no stranger to the intellectual property world, and she will undoubtedly be coveted by firms and corporations alike as she re-enters the private sector. She is a former President of the American Intellectual Property Law Association (AIPLA), and a long time patent practitioner who is highly regarding in the intellectual property community.
Judge Raymond Chen of the United States Court of Appeals for the Federal Circuit.
Earlier today, at precisely 12:27pm ET, by a vote of 97 – 0, the United States Senate confirmed Raymond T. Chen to be a judge on the United States Court of Appeals for the Federal Circuit. Chen was nominated by President Barack Obama on February 7, 2013.
Prior to becoming the newest member of the Federal Circuit, Chen was the Deputy General Counsel for Intellectual Property Law and Solicitor at the United States Patent and Trademark Office. In this role, he defended the Under Secretary of Commerce and Director of the USPTO and the agency in court. By all accounts he was also a trusted senior member of the USPTO senior management team.
Prior to becoming Solicitor and Deputy General Counsel at the USPTO, Chen was an Associate Solicitor for 10 years. In this capacity he represented the USPTO’s decisions in federal court, briefing and arguing numerous cases before the U.S. Court of Appeals for the Federal Circuit.
Today I want to update you on the progress of our satellite offices in Dallas, Denver, and Silicon Valley, locations we identified in July 2012 as part of an America Invents Act (AIA) mandate. Given current budget constraints under sequestration, our efforts to move into permanent spaces for those three locations will be delayed, but continuing to operate from the temporary spaces and striving to grow our presence in the satellite office locations remains a top agency priority.
The USPTO is getting caught up in the sequestration budget battles despite the fact that the USPTO is fully user funded. As a result the USPTO stands to lose close to $150 million in Fiscal Year 2013, which runs through September 30, 2013.
There is a legislative proposal pending in Congress that would exempt the USPTO from sequestration, which was filed by the Members of Congress that represent Silicon Valley. See PATENT Jobs Act Seeks to Exempt USPTO from Sequestration. Silicon Valley would be the home to one of the new USPTO satellite offices if the agency had the money to open.
The law as it relates to software has been in flux over the last 10 years. Many older patent applications simply do not have enough detail to satisfy the current requirements to obtain a patent, although when drafted they would have been sufficient to satisfy the requirements then in place. Describing software as a pure method claim has not worked for a long time despite the fact that in reality software is really a method. Much more than a cursory description of software as a series of steps is required in order to have hope of obtaining patent protection for software.
Indeed, ever since the Federal Circuit en banc decision in Bilski, claims have been required to be tethered to tangible components, such as data storage devices, processors, databases, controllers, servers and the like. Unfortunately, however, the Patent Trial and Appeals Board at the United States Patent and Trademark Office now has taken the position that they will ignore the tangible components within a computer implemented method claim and then look to see what remains before determining whether the claim is patent eligible. See PTAB Kills Software.
Of course, after you remove or ignore the tangible components what remains is a naked process, which is patent ineligible. Thus, deciding to ignore tangible components leads to the inescapable conclusion that no software is patent eligible. Such disingenuous reasoning has the effect of punishing applicants for writing claims as the Patent Office has mandated ever since the machine-or-transformation test was first announced by the Federal Circuit in Bilski. The test announced in SAP/Versata, which was the first covered business method review decision announced by the PTAB, cannot be the correct test, and ultimately the decision (or at least the rationale) will be reversed. Any test that has the net effect of rendering all software patent ineligible, like the SAP/Versata test, is simply not correct as I will explain more clearly below.
Earlier today Peter Pappas, the Chief of Staff at the United States Patent and Trademark Office, announced to senior management that he will be leaving the Office at the end of June 2013 to pursue other opportunities.
While perhaps not widely known by patent attorneys in the day-to-day trenches, Pappas is well known both at the Patent Office and in Washington, DC more broadly. And although Pappas is not a patent attorney, upon joining the Patent Office in 2009, he became an important and influential player in the patent community.
Pappas is an attorney with a Clinton White House pedigree, spending time in the White House Counsel’s office. He also held various communications, government relations and policy positions at the State Department and at the FCC during the Clinton Administration. He joined the Obama Administration early in the first term, first as Chief Communications Officer at the USPTO and then later as Chief of Staff at the USPTO. He remained as Chief of Staff even after Kappos left the USPTO, working closely with Acting Director Teresa Rea.
As a long time observer of the USPTO, I can attest to the positive impact Pappas has had on the Office, albeit typically behind the scenes. In fact, while David Kappos was Director it was Pappas who was his right-hand man. As such, he was a central figure on the Executive Team at the USPTO long before he became Chief of Staff.
Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem.
AFCP 2.0 began on May 19, 2013 and will run through September 30, 2013. The USPTO says that any request for participation in the program must be filed on or before September 30, 2013. Of course, as is always the case, the USPTO left open the possibility that the pilot would be extended beyond that date.
The Patent Office should be estopped from raising a § 112 (a) rejection after raising a § 102 or § 103 rejection in an earlier office action. 35 U.S.C. § 112 (a) states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention
Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office should not have sufficient information to suggest that the application is not novel or obvious. In order to determine something is not novel or obvious you first have to know what it is. I have no objection to the Patent Office putting a 35 U.S.C. § 112 (a) and novelty/obviousness rejection in the same Office Action, where the PTO explains that to the best of their understanding of the invention it would not be novel or obvious for the following reasons.
Judge Richard Linn, U.S. Court of Appeals for the Federal Circuit, Feb. 8, 2013.
On Friday, February 8, 2013, I had the honor to interview Judge Richard Linn of the United States Court of Appeals for the Federal Circuit. Those in the industry know that Judge Linn is one of a small group of Judges who are patent attorneys. He is one of us in so many ways. He is a very real and genuine person, he is a great believer in the patent system, and he has long been a friend to patent groups and a mentor to many. Judge Linn started his a career as so many patent professionals have — as the newest patent examiner at the United States Patent and Trademark Office. We learn in the interview that his interest in patent law started well earlier, thanks to his Uncle who was a patent illustrator.
After leaving the Patent Office Judge Linn rose through the ranks to become a prominent patent attorney in Washington, DC. Ultimately, he was in the right place at the right time, and he was fortunate enough to be recognized by the right people. He was appointed to the Federal Circuit to replace the legendary Giles Sutherland Rich. Big shoes to fill no doubt, but in terms of influence on the Court and impact on the profession few can compare to Judge Linn. He has, and continues, to carve out his own legacy as one of the preeminent patent leaders in the United States.
We spent approximately 60 minutes on the record with my iPhone recorder on, meeting in his chambers at the Federal Circuit, which overlooks Lafayette Park. Judge Linn recently took senior status, and lives full-time in Florida. He returns approximately every other month, sometimes more frequent, to hear cases. He will soon be giving up this office once the President’s appointments to the Court are confirmed. Judge Linn assures me he will remain active with the Federal Circuit.
When I sit down to interview someone I sometimes have a sense where things may lead, but inevitably interesting topics arise, sometimes based off a seemingly innocuous question. In Part I, which is below, I asked a familiar question: Do you find that the harder you worked the luckier you got? Judge Linn used this to discuss the importance of practicing law with integrity while managing to be a zealous advocate and without sacrificing civility. This theme carriers over into Part II of the interview and should, in my opinion, be mandatory reading for law students and associates. In fact, it is a good reminder for more senior attorneys who sometimes might lose sight of the forest for the trees.