In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.
So far I have written the following articles in Ethics & OED series:
An odd order sequencing I know, but with great energy and certainty that I wouldn’t run out of time I set out to ambitiously review the 48 disciplinary actions taken by OED during 2o12. Then as the calendar started to no longer be an alley I thought that perhaps I should work my way backwards.
With this in mind, what follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the months of July and August 2012. There were no OED disciplinary decisions from September 2012.
Last year marked the fifth anniversary of the Supreme Court landmark decision in KSR v. Teleflex (April 30, 2007), when the United States Supreme Court addressed the obviousness of patents under 35 U.S.C. § 103 for the first time since Graham v. John Deere in 1966.
A few trends in the law of obviousness as pertaining to chemical innovations were readily apparent in 2012. Pharmaceutical patent holders in litigation fared well at the Federal Circuit, while patent holders appealing decisions from the Board of Patent Appeals and Interferences fared poorly, and a third more subtle trend suggests chemical patents in district court litigation may be less susceptible to invalidation for obviousness post-KSR.
In Part I of this article we explored the trends in pharmaceutical litigation during 2012. In this second and final segment we focus on PTO Board decisions and appeals from non-pharmaceutical litigation relating to chemical patents.
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, and those who attend my presentation live or via webcast will earn 1 ethics CLE credit. In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.
What follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the month of October 2012. First up is a situation where the USPTO went after an attorney in California who engaged in representation of trademark clients. Richard Gibson was not a patent practitioner, yet OED went after him for violation of various ethical rules, which is something recently new for the USPTO to do. The second case is a case where a patent practitioner was caught up in a sting operation. The sting was searching for adults soliciting sex from minors in Seattle, Washington.
UPDATED: Jan. 22, 2013 at 11:43am (see comment #2)
USPTO Director David Kappos speaking a White House event on April 11, 2012.
Today President Barack Obama publicly started his second term in Office with a celebration in Washington, DC, marked by his second inaugural address to the Nation. Unfortunately, it doesn’t seem that President Obama will mark his second inauguration quite the way that President Abraham Lincoln did with a grand ball held at the United States Patent Office in the model room, but today is a very special day in America. We transfer power without a shot fired, which can’t be said for a great many places in the world. Soon we will turn from celebration back to partisan politics, if that hasn’t happened already.
One of the things that President Obama will be faced with in his second term, which I understand he was not expecting to have to deal with, is selecting a new leader for the United States Patent and Trademark Office.
On November 26, 2012, news broke that David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, would be stepping down and leaving the agency effective the end of January 2013. In fact, Director Kappos’ last day as Director will be January 31, 2013. At that time the mantle of leadership will pass to soon-to-be Acting Director Teresa Rea.
The Smithsonian’s Arts and Industries Building located on the National Mall in Washington, D.C.
WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) and the Smithsonian Institution have signed a Memorandum of Agreement for the USPTO to support the Smithsonian’s development of an “Innovation Pavilion” that will showcase educational programs and exhibitions about American innovation. The pavilion will be housed at the Arts and Industries (A&I) Building in Washington, DC, after the historic building’s re-opening in 2014. It will serve as a forum for public discussions, symposiums, workshops, and recognition ceremonies related to American innovation, highlighting the vital role patents play in supporting that innovation. Also, the USPTO and the Smithsonian will partner in hosting an Innovation Expo on June 20-22, 2013, at the USPTO headquarters in Alexandria, Virginia.
USPTO will advance its mission of educating the public about the importance of intellectual property rights and protections with both the Innovation Expo and the Innovation Pavilion. For the latter, USPTO will collaborate with the Smithsonian on the programming, curation, exhibition design and fabrication.
“We look forward to working with the Smithsonian Institution to showcase America’s rich history of innovation, and provide a forum where inventors of all ages can interact and learn about the patent process while inspiring the next generation of American creativity,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.
Serving the economic interests of America for more than 200 years, the United States Patent and Trademark Office (USPTO) is responsible for granting US intellectual property rights for patents and trademarks and providing inventors exclusive rights over their discoveries. It’s an effort that contributes to a strong global economy, encourages investment in innovation, and cultivates an entrepreneurial spirit in the 21st century.
The USPTO is headquartered in Alexandria, Virginia, and has over 10,230 employees, including engineers, scientists, attorneys, analysts, IT specialists, etc. all dedicated to accomplishing the USPTO’s mission, vision, strategic goals and guiding principles.
The USPTO is currently seeking applicants for a non-paid summer 2013 externship — the Patent Experience Externship Program (PEEP). This externship program is intended to give students an opportunity to experience what it’s like to work at PTO, as well as interact with experts in several disciplines, explore opportunities and develop or enhance personal and professional skills. The program is an 8-10 week summer program. There will be two entry on duty dates, one on May 28th and the other on June 10th, 2013. Those selected will be notified of their entry on duty date and made a formal offer to participate.
Do patent applicants appealing a rejection of their claims from the Patent Trial and Appeals Board have a chance of success at the Court of Appeals for the Federal Circuit? What about patentees appealing to the CAFC from rejections in reexamination proceedings? The candid answer is not much of a chance. Of course, every case is different and needs to be considered on its own merits. Yet, the standards for review of Board decisions, followed by the CAFC, significantly favor affirmance of those decisions.
What about a rejection by the Board that the claims in an application or patent are anticipated by a prior art reference? The CAFC reviews an anticipation rejection as a “finding of fact” under the “substantial evidence” standard. In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir. 2009). A finding of fact is “supported by substantial evidence [and therefore affirmed] if a reasonable mind might accept the evidence to support the finding.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). For a reversal, it is not enough that the CAFC simply disagrees with the Board – the CAFC must find that no reasonable person would have rejected the claims.
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.