The United States Patent and Trademark Office (USPTO) has made great strides over the last several years, there is no doubt about it, but there is still work to be done. The patent system was collapsing under the crushing weight of an ever increasing demand for U.S. patents, antiquated computer systems and policies that lead to second guessing every allowance. This crippled the Patent Office. The Patent Office is better today than it was at the end of the Bush era, but the USPTO has a problem; a very big problem.
At the end of a patent application proceeding (a process known as “prosecution”) there are a number of possible outcomes. A patent can be granted on all of the claims sought, which is rare but not unprecedented. See Patent Bigfoot: The Mythical First Action Allowances. The applicant can give up and not respond to a final rejection for one reason or another, perhaps because the patent examiner has found strong prior art that will be difficult to overcome. Still further, allowed claims can be accepted, rejected claims canceled and a patent issue. In this last scenario the patent application can pay the issue fee, accept the patent and file a continuation or continuation-in-part pursuant to 37 CFR 1.53(b) in order to seek other claims on the disclosure.
But what if the patent prosecution results in no claims allowed? In this scenario, which is unfortunately far more common than either the patent bar or Patent Office would like, the procedural vehicle of choice is a Request for Continued Examination (RCE) under 37 CFR 1.114. An RCE can be filed in situations where claims are allowed, but they are far more common in the scenario where all claims are rejected because with an RCE, which is not considered a new patent application and will have the same serial number as the previous application, all claims go back into prosecution. That means both allowed claims and rejected claims are back on the table during prosecution. That can be dangerous when claims are allowed because patent examiners are known to reject previously allowed claims in an RCE.
What follows are the decisions from April and May 2012. In this time period in 2012 at the OED the Office found themselves dealing with a patent attorney that accepted referrals from an invention promotion company, a patent attorney that didn’t notify a client of an abandoned application, a trademark attorney that submitted false statements in three petitions to revive abandoned applications and a reciprocal discipline involving negligence associated with maintaining a Trust Account.
Kappos at the USPTO hosting a public meeting on Patents End2End (12/14/2012).
On January 15, 2013, I had the privilege to interview David Kappos one last time in his role as Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. What follows is my exit interview with Director Kappos, where we reflect on his time at the USPTO, all that he has accomplished and the legacy that he will leave behind.
When conducting interviews I sometimes get a sense for whether the interview will be a good one once transcribed. Those who have helped me transcribe the interview and review it prior to publication (as we do with all interviews) tell me that this is a good interview. You will have to be the judge of that. I confess to being incapable of being objective.
Although I do write what I believe to be objective news articles from time to time, I am an opinion columnist. I am also an ardent believer in the patent system. The Kappos era at the USPTO also largely coincides with the time frame where I started to write daily (sometimes more). I attend public events at the USPTO and have interviewed Director Kappos several times and most of his top lieutenants. I have gotten to know Director Kappos and have seen first hand what his leadership has meant to not only the USPTO, but to the larger patent system in general. He has been a friend to the patent system and in my opinion is leaving the Patent Office far better than he found it. He will be sorely missed when he leaves at the end of the month, although he will leave with an excellent management team in place to carry forward the work for which he has laid the foundation.
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.