Washington - The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. These rules become effective on September 16, 2012. With this publication, all of the administrative trial rules the USPTO was tasked by the AIA to complete will have been published.

The final rules for inter partes review and the transitional program for covered business method patents apply to any patent issued before, on, or after the September 16, 2012 effective date. By contrast, the post-grant review final rules apply to patents issuing from applications subject to the first-inventor-to-file provision of the AIA, which does not become effective until March 16, 2013.

In early November 2011, Bob Stoll, Commissioner for Patents at the United States Patent and Trademark Office, announced his intention to retire from the agency effective December 31, 2011. Stoll was appointed Commissioner for Patents by Under Secretary Kappos in October 2009, serving a little more than 2 of his 29 years as an employee at the USPTO as Commissioner for Patents.  Bob is currently a partner in on the patent team in the Intellectual Property Group at Drinker Biddle & Reath LLP.

In his 29 years with the Patent and Trademark Office Stoll held several leadership posts including training foreign officials on all aspects of intellectual property (IP), overseeing the Office of Enforcement, and directing federal legislative priorities for the Agency. In his tenure as Commissioner for Patents, Stoll was in charge of implementing initiatives to improve the speed and quality of the patent review process, was instrumental in reducing the patent application backlog, and undertook an initiative to clean out the oldest cases on the USPTO docket, which for a time actually raised some of the key metrics but was objectively the right thing to do. Of course, Stoll was also an integral part of the USPTO team working to get patent reform across the finish line and then in the early implementation efforts of the AIA.

I tried to get Stoll on the record while he was at the USPTO.  I don’t think he dodged me, it just never worked out.  I travel a lot, he travels a lot and when it was convenient for one of us it was never convenient for the other.  In the time I have known Bob we have become friends.  I respect him enormously. Bob’s knowledge of all things patent is extraordinarily deep, and whenever we get together it is always a lively conversation.  So I am extremely happy to bring this on the record interview to you.

In this conversation we talk about life after the USPTO, billable hours, Presidential politics, being on the famed K Street in Washington D.C., the U.S. economy, improvidently granted patents and much more. So without further ado, here is my interview with Bob Stoll.

We are rapidly closing on the next wave of implementation for the America Invents Act in the United States.  On 16 September 2011, the U.S. enacted landmark patent legislation.  As a result of the Leahy-Smith America Invents Act (AIA) the patent laws of the United States will experience the most widespread changes since the initial patent statute was first passed in 1790.  Not even the 1952 Patent Act is as sweeping because that almost exclusively codified decades of common law into the statute, with only one significant departure from the law as it evolved under the guidance of the Judicial system.

The most sweeping changes to American patent law will not take effect until March 16, 2013, but there have already been some changes and the next wave of changes become effective on September 16, 2012, on the anniversary of President Obama signing the bill into law.  The next round of changes largely deal with post grant procedures and challenges, but also deal with a variety of smaller issues, such as implementing the OED statute of limitations for disciplinary actions and the submission of third party prior art during a patent prosecution.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.

Earlier this week the United States Patent and Trademark Office issued an Advisory to the patent bar, reminding everyone about regulations of the European Patent Office that requires search results to be filed with the EPO without delay after the search results are made available to applicants.  This arises in the situation where a European patent application filed on or after January 1, 2011 claims priority to a previously filed application.

It seems virtually certain that the USPTO is starting to notice problems associated with U.S. applicants complying with the new EPO rule mandating the electronic delivery of searches, which is what prompted this advisory reminder.

Earlier today the United States Patent and Trademark Office published proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.  The USPTO also published proposed rule changes to implement first to file in the Federal Register this morning as well.

At least over the last  year there has been great debate on IPWatchdog and elsewhere about the meaning of the new grace period under the AIA.  I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Further, I have explained that disclosures of third-parties who independently arrived at the invention will be used against the inventor. Said another way, there is no grace-period relative to third party, independently created disclosures.

Imagine a world in which the most innovative technologies spur economic growth and create jobs while also helping the world’s poorest populations.  Mobile phone apps built for social networking would provide critical infrastructure to connect isolated markets. Advances in material sciences would be retooled to provide cost effective energy solutions for Americans struggling to pay their utility bills. Medical technologies would be adapted to meet the needs of people in developing countries.

To help make this dream a reality, the USPTO several months ago launched a prize competition — Patents for Humanity — to recognize individuals, universities and companies that have used their patented technologies for humanitarian purposes anywhere in the world. We will be taking submissions for our prize competition through the end of August.

In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”.  A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.

To recap, last year, the same panel ruled that the composition claims reciting isolated DNA were patent eligible, with Judges Lourie and Moore supporting patent eligibility and Judge Bryson dissenting.  All three Judges also agreed method claims involving “analyzing” or “comparing” DNA were not patent eligible.  Lastly, all three Judges agreed that a screening claim (claim 20 of the ‘282 patent) was patent eligible.  For a full discussion of last year’s decision (in English and Japanese), please click here.  After the decision, AMP appealed to the Supreme Court, who later vacated the CAFC decision and remanded the case to the CAFC for further consideration in view of their Mayo decision (English summary;Japanese summary).

And round 2 of the implementation of the America Invents Act (AIA) at the United States Patent and Trademark Office (USPTO) has begun.  Earlier today the USPTO published final rules to implement the preissuance submission provisions of the AIA. The preissuance submission final rules appear in the Federal Register and set forth the procedure that a third party must follow to submit patents, published patent applications, or other publications of potential relevance to the examination of another’s pending patent application.

“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The agency is please to publish the preissuance submission final rules in the Federal Register several weeks before September’s effective date of the provision to give stakeholders ample time to learn the requirements of the final rules.”

Acting U.S. Commerce Secretary Rebecca Blank and Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos, along with elected officials, today participated in a ribbon-cutting ceremony to officially open the Elijah J. McCoy USPTO in Detroit, Michigan – the first-ever Patent and Trademark Office outside of Washington, DC. The new office is the first to open out of four recently announced USPTO satellite offices that will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating hundreds of highly-skilled jobs in each of the local communities.

“Patents are the fuel for American innovation,” said Acting Commerce Secretary Rebecca Blank. “By opening the doors to America’s first-ever satellite patent office in Detroit, we are going to put more patents in the hands of entrepreneurs throughout this region and across the country. The McCoy office will make America’s patent system stronger, empowering America’s innovators to attract capital, put their business plans into action, and create more good jobs for the middle class.”

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program.  The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program.  Further inquiry will be made into whether the program should be extended further or made permanent.  During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

The FAI Pilot Program is intended to expedite disposition of an application by enhancing communication between an applicant and an examiner at the beginning of the examination process. Specifically, the program allows an applicant to have an interview with an examiner prior to the issuance of an Office action, but after receiving the examiner’s search results and initially identified issues. It is the belief of the USPTO that by fostering this early communication the patent practitioner can bring the patent examiner up to speed quickly on the substance of the invention, while the patent examiner can discuss the prior art with the practitioner in an effort to crystalize issues before work even begins on a First Office Action.

I have been doing a lot of research and writing on obviousness and KSR v. Teleflex lately, but not for publication on the blog so far.  Last Friday, July 6, 2012, I filed a petition for rehearing en banc in Plasmart v. Kappos.  I represent the Appellee-Patentee.  The case arose out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner found some of the claims allowable, the Board found all of the claims allowable, and then in a nonprecedential opinion the Federal Circuit overturned the Board.

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result.  The problem with that reasoning, however, is that not all of the elements were found within the prior art.  In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

Acting U.S. Commerce Secretary Rebecca Blank and Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos today announced plans to open regional USPTO offices in or around Dallas, Texas, Denver, Colorado, and Silicon Valley, California. These offices are in addition to the already-announced first USPTO satellite office to open on July 13 in Detroit, Michigan. The four offices will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating new economic opportunities in each of the local communities. Next week, Acting Secretary Blank and Under Secretary Kappos will travel to each of the newly selected cities to meet with local businesses, entrepreneurs and public officials to discuss the new office openings.

“Intellectual property protection and innovation are engines of economic growth and the bedrock of America’s private sector,” said Acting U.S. Commerce Secretary Rebecca Blank. “The Obama administration is committed to making certain our businesses and entrepreneurs have the resources they need to grow, create jobs and compete globally. These new offices are an historic step toward further advancing our world’s best IP system, and reinforcing the United States as the number one destination for innovation capital, and research and development around the world.”

On April 20, 2012, the Patent and Trademark Office published a Notice in the Federal Register titled Notice of Request for Comments on the Feasibility of Placing Economically Significant Patents Under a Secrecy Order and the Need To Review Criteria Used in Determining Secrecy Orders Related to National Security.  It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key.  Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

Many law firms are starting to contemplate the new business opportunity that will arise on September 16, 2012, when the new post grant review procedures are ushered into effect thanks to the America Invents Act.  The next wave of changes in patent law go into effect on September 16, 2012, which is one year to the day that President Obama signed the bill.

Section 7 of the Leahy-Smith America Invents Act changes the name of the current “Board” from the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board.  The AIA also dictates that the Patent Trial and Appeal Board members will include the Director, Deputy Director, Commissioner for Patents, Commissioner for Trademarks, and Administrative Patent Judges. The duties of the Patent Trial and Appeal Board are to: (1) Review adverse decisions of examiners upon an application for patent; (2) review appeals of reexaminations pursuant to section 134(b); (3) conduct derivation proceedings pursuant to 35 U.S.C. 135; and (4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32 of title 35, United States Code. The AIA further requires that each appeal, derivation proceeding, post-grant review including covered business method patent review, and inter partes review shall be heard by at least 3 members of the Board, who shall be designated by the Director.

Earlier today David Kappos, the Director of the United States Patent and Trademark Office, testified before the Senate Judiciary Committee at the Senate’s first oversight hearing of the America Invents Act.  Among other things, Director Kappos noted that the USPTO continues to move forward on AIA implementation, saying that the much anticipated new rules packages to implement the next round of AIA changes will be released on or before August 16, 2012, giving the Office time to train personnel prior to implementation on September 16, 2012.  Kappos also outlined how the USPTO, in the wake of the AIA’s passage, is now taking the lead internationally in creating a truly 21st Century global patent system.

The testimony of Director Kappos did not reveal much, if anything, new to those who have been following the USPTO, rather the testimony seemed more to keep the Senate Judiciary Committee in the loop.  Notwithstanding, some of Kappos’ prepared remarks did contain facts and figures that may be of interest.  Additionally, Kappos revealed that the USPTO received over 600 comments relative to the location of the additional Satellite Patent Offices called for in the AIA.  Kappos told the Senators that he expects to complete that review process and announce the next Satellite location something this summer.