The U.S. Patent Office as it looked prior to the Civil War.
The Old Patent Office is one of the most beautiful buildings in all of Washington, DC. Presently, it hosts the Smithsonian American Art Museum and the National Portrait Gallery. For those who are not from DC or familiar with the city, allow me to explain that obtaining directions to the Old Patent Office on your electronic device of choice may be difficult because there is no street address. At least I have never been able to find a street address for the building. The Old Patent Office Building takes up an entire city block in DC, located on the corner of Eighth and F Streets, roughly between the White House and Capitol.
Yes, the Patent Office was once upon a time thought to be so important to our new nation that this ornate building was located between the White House and the Capitol. Yet today there are forces throughout academia and elsewhere that would rather see the entire U.S. patent system dismantled. Oh how we have departed from the views of Madison, Jefferson and the other founders who thought a strong patent system would be central to the success of the new nation. That, however, is a story for another day.
The Old Patent Office Building has had a storied history, which is commensurate with what our early leaders, such as Presidents Jefferson, Madison and Lincoln thought of the patent system. In addition to housing the Patent Office from 1842 to 1932, in 1865 the Old Patent Office hosted President Lincoln’s second inaugural ball in the model room. This marked the first time that a government building was used for the inaugural ball. See Inaugural Ball, from the Joint Congressional Committee on Inaugural Ceremonies.
Since April 2011, the United States Patent Bar Examination has been a moving target. For many years the exam was static, largely remaining the same. Numerous repeat questions would be asked from administration to administration and changes to the law not tested. In fact, it was nearly 5 years before the USPTO started testing changes to the law of obviousness mandated by the U.S. Supreme Court in KSR v. Teleflex, which was difficult to imagine since the law fundamentally changed and impacts nearly ever application filed.
Enter David Kappos. As Kappos was setting out to redefine the USPTO he also made time to have his team update the stale patent bar exam. The first updates of the patent bar examination in some time were unveiled in April 2011, and with every new Federal Register Notice the exam is being updated to test the latest law and newest rules.
There does, however, remain a problem associated with studying for the patent bar exam. The Manual of Patent Examining Procedures is not up to date, and in places it is significantly out of date. That can make studying for the patent bar a daunting task for those who attempt to do it on their own. Without the guidance of a course that can pull everything together it is quite possible that a student will study the wrong material out of the MPEP, even believing they are about to get a question correct because the answer is included in the MPEP. A case in point will illustrate.
WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today opened a new Patent and Trademark Resource Center (PTRC) in Smithtown, New York, at the Smithtown Library to better serve the intellectual property (IP) needs of the public.
“Patent and Trademark Resource Centers (PTRC) are the face of the USPTO on a local level,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The PTRC-designated libraries promote innovation and entrepreneurship and help ensure that members of the public interested in getting a patent have access to the resources they need.”
I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic this year is ethics, which will give me at least several CLE credits for teaching this ethics component and give those who attend live or via webcast 1 CLE credit hour of ethics.
I will be discussing some ethical issues raised by the America Invents Act, but when giving an ethics lecture I also like to take a look at some of the things that the Office of Enrollment & Discipline has been doing with respect to practitioner discipline. I did this several years ago, see Patent Office Disciplinary Actions and Lack Thereof, and more recently I looked at a handful of cases from January 2012, see, Ethics and OED 2012.
Over the coming weeks I will be publish more summaries of some of the more interesting disciplinary matters before the Office of Enrollment and Discipline during 2012. What follows are cases from November 2012 and December 2012. My goal is to work my way backwards and summarize as many decisions from 2012 prior to my PLI ethics presentation as I can.
One of the criticisms of the PatentCore database in the past was that the database was not a complete representation of the case files at the USPTO and gave a false impression. I never personally found that persuasive given that even when the database first became public there were approximately 1.5 million application files within the database. Still, many patent examiners scoffed at the notion that this data was accurate.
If I were a patent examiner that hadn’t issued patents for years I wouldn’t want anyone to know that either. Similarly, if I were a Supervisory Patent Examiner (SPE) in an Art Unit that routinely only issued patents after a long drawn out appeal process that resulted in the Board overturning the rejections I wouldn’t want the public to know about that either. Sadly, this type of gaming exists at the Patent Office. There are examiners who only rarely issue patents and Art Units that openly tell patent attorneys that they don’t issue patents unless ordered to do so by the Board. Knowing that this happens, which is supported by hard data, makes it impossible to tolerate the anti-patent zealots who routinely opine about just how easy it is to get a software or business method patent issued. Really? You have to be kidding!
The Board of Patent Appeals and Interferences did something fascinating in Ex Parte Yudoovsky.  The Board sua sponte declined to consider an unauthorized new ground of rejection—even though the appellant never filed a petition. In footnote 3 (slip. op. 5), the Board held:
In the “Response to Arguments” section of the Answer, the Examiner, for the first time, expresses an alternative rationale for unpatentability, which is that it would have been obvious to one of ordinary skill in the art to transform the RT2 and RT3 devices of Ohshimo into a single device, citing In re Larson, 340 F.3d 965, 968 (CCPA 1965) (Ans. 10). This abstract rationale is completely unrelated to the claim interpretation rationale of the Examiner’s stated rejections. We decline to consider this new rationale because it implicitly constitutes an unauthorized new ground of rejection. The “Response to Arguments” section of the Answer is not an appropriate place to raise a new rationale for unpatentability.
In other words, the Board refused to consider a new ground of rejection, because the Examiner failed to designate the ground as “new.”
PTAB Vice-Chief Judge Moore at recent swearing in ceremony.
This is the final segment of my three-part interview with Chief Judge James Smith and Vice-Chief Judge James Moore of the Patent Trial and Appeal Board of the United States Patent and Trademark Office.
In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II of the interview picked up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.
In the finale, Part III (which is below), we talk about how cases are assigned to various panels, and we spend time chatting about how and why a case might be a good candidate for an expanded board. We also discussed when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion with respect to the so-called mediation program that has as its goal the short-circuiting of appeals that ought to be unnecessary for the Board to consider.
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