Next year I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute. The event, like in previous years, will be bi-coastal. We will be 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 will be ethics, which will provide the all important and highly sought after ethics CLE credit.
In addition to discussing ethical issues raised by the America Invents Act, such as the new statute of limitations and avoiding catastrophic malpractice issues with the shift to first to file, I also always like to do a rundown of recent OED disciplinary proceedings. The last time I did this was several years ago. See Patent Office Disciplinary Actions and Lack Thereof.
With this in mind, over the coming weeks and months leading up to the 7th Annual Patent Law Institute, I will be publishing a summary of the disciplinary proceedings before the Office of Enrollment and Discipline at the United States Patent and Trademark Office. What follows starts with the first Order of 2012.
Senator Leahy (L) and Congressman Smith (R), shown at the signing of the AIA, sponsored this Patent Treaty implementation legislation.
On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature. The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs. The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.
S.3486 is the implementing legislation that modifies U.S. consistent with treaty obligations. The Senate ratified both the PLT and Hague Agreement in 2007.
With respect to the Hague Agreement, it will now be possible to file a single application in English at the USPTO and have that application be the basis for design protection in each country that has similarly adopted the treaty.
EDITORIAL NOTE: What follows are the prepared remarks of David Kappos, Under Secretary of of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, delivered at the Center for American Progress in Washington, DC, on November 20, 2012. This is reprinted here with permission.
Thank you, Winnie, for that kind introduction. Good morning, everyone. It’s great to be here at the Center for American Progress. I’m pleased to be able to talk about intellectual property and the role that intellectual property rights play in enabling innovative goods and services to come to market. And specifically, I’m going to focus my remarks on software patents and the so-called smartphone “patent wars,” which have become front page news in the last year or so.
It is increasingly clear that intellectual property, or IP, is a key driver of economic growth, exports, and job creation. IP rights are the global currency for creating value for products and services, for all innovators, in all markets. And the protection provided by patents is critical to the innovation ecosystem. In fact, last spring, the U.S. Commerce Department released a report that found IP-intensive industries support at least 40 million jobs and contributes more than $5 trillion to our economy, accounting for 35 percent of America’s gross domestic product. So it is in this context that we are seeing multi-billion dollar acquisitions of patent portfolios and a number of high profile patent lawsuits, involving some of the most innovative companies on the planet, who are producing some of the most popular technologies ever created.
Terminal Annex Federal Building, 207 S. Houston Street, Dallas, Texas. Photo from GSA.
Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that it has chosen the Terminal Annex Federal Building as the site for its Dallas-Fort Worth regional satellite office. The Terminal Annex Federal Building is located along the southern edge of Dealey Plaza in Dallas and is close to public transportation. The office will operate as a place for small businesses and entrepreneurs to navigate the patent process, meet with examiners, and access USPTO’s comprehensive search databases. The office will also support job creation and stimulate the local economy.
In July, the USPTO announced plans to open a regional office in the Dallas area, along with satellite offices in Denver, and the Silicon Valley region of California. The satellite offices are part of an ongoing effort to create new economic opportunities and to serve regional entrepreneurs more efficiently by getting them the patents they need to attract capital, activate their business plans, and help create more good-paying jobs.
David Kappos, Director of the USPTO for a little while longer.
UPDATE #4: 4:19pm ET on Nov. 26, 2012
David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, will be stepping down and leaving the agency effective the end of January 2013. This news originally came to me from a high-ranking, well placed source within the USPTO who spoke on the condition of anonymity, and has subsequently been confirmed by the USPTO.
“I am honored to have served this administration by leading the USPTO,” said Kappos. “I believe we have made great progress in reducing the patent backlog, increasing operational efficiency, and exerting leadership in IP policy domestically and internationally. Thanks to the entire USPTO staff for their dedication and hard work. I wish them the very best as they continue their efforts to support the U.S. economy by promoting and protecting innovation.”
Indeed, Director Kappos has presided over the USPTO at a time of great change, thanks in no small part to the passage of the America Invents Act (AIA) on September 16, 2011. This has lead the USPTO to put the pedal to the metal cranking out proposed rule package after proposed rule package. The final wave of the initial AIA implementation rules packages will come out in February 2013 ahead of Phase 3 of the AIA implementation on March 16, 2013, which is when the U.S. will convert from first to invent to a first inventor to file system.
On November 1, 2012, a federal district court (EDVA) issued an order that may have profound consequences for calculations of patent term adjustment (“PTA”). The district court held that the Patent Office’s interpretation and application of the “RCE carve-out” provision of 35 U.S.C. 154(b)(1)(B)(i) is incorrect. In general, the district court held that the “carve-out” provision only applies if applicants file an RCE within three years of the application’s filing date. Courtenay Brinckerhoff discusses the details of the court’s decision further on her blog. See District Court Invalidates USPTO Interpretation Of Patent Term Adjustment RCE Carve-Out. In this article I will comment on the court’s order and its potential consequences.
Before discussing the court’s order, let me review the law and regulations about PTA—which can be complex. In 1994, Congress altered the calculation of U.S. patent terms. Previously, Congress set the patent term as 17 years from patent issuance. After the change, Congress set the patent term as generally 20 years from the filing of the patent application.
The famous inventor Jerome Lemelson provides a colorful example of patent terms before the 1994 change. Lemelson filed serial continuations of patent applications. In some cases, the original applications did not result in patents until decades had passed since their filing dates. Eventually, a panel of the Federal Circuit held that some of Lemelson’s patents were unenforceable under the doctrine of laches. See Symbol Technologies v. Lemelson Medical, 422 F.3d 1378 (Fed. Cir. 2005).
Heads of the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) – collectively known as the Trilateral Offices – met in Kyoto, Japan earlier this week to hold their annual Trilateral Conference, which marks their 30th anniversary this year. Since 1983, the Trilateral Offices have worked together to produce new databases and IT systems, evolving their cooperation by conducting various projects designed to solve common challenges. Indeed, the Trilateral Offices have led the way on international patent cooperation and laid the groundwork for work sharing efforts globally.
Meanwhile, a coalition of the world’s five largest patent offices – the IP5 – earlier today announced the release of the IP5 Statistics Report 2011 Edition. The IP5 is comprised of the USPTO, the EPO, the JPO, the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). These IP5 Offices together handle approximately 80% of the world’s patent applications. The IP5 began meeting in 2007 and have since worked together to explore ways to further optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.
All of the accomplishments of the IP5 and Trilateral Offices “lead to improving global patent systems today,” said Hiroyuki Fukano, Commissioner of JPO. “It is our current task to build an appropriate framework in which applicants are able to be granted patents smoothly in every corner of the world. In order to achieve building truly global patent systems in a global era, we would like to take the lead in developing such global patent systems.”
The scene at a AIPLA staff meeting on September 6, 2012.
On September 6, 2012, I spent the day at the offices of the American Intellectual Property Law Association. The premise of my visit was to get a behind the scenes look at the inner workings of the AIPLA. In order to obtain this insider’s perspective I suggested that I follow Todd Dickinson around for a day. Dickinson is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office.
Dickinson and the staff at the AIPLA agreed with my request and a day where Dickinson would have both internal and public meetings was scheduled, or actually re-scheduled. This profile on the AIPLA was pitched much earlier in the year and I had hoped it could coincide with Dickinson being inducted into the IP Hall of Fame. Unfortunately, personal matters got in the way, followed by my busy travel season for the PLI patent bar review course.
Eventually, we settled on September 6, 2012. This would be the day of the USPTO roundtable in Alexandria, Virginia, held for the purpose of discussing the proposed rules relative to implementation of the first to file changes to patent law that will go effective on March 16, 2013.
I really didn’t have any preconceived notions about what I would experience at the AIPLA. I know what the organization is, I know what they do, and over the years I have come to know Todd Dickinson, bumping into him at virtually every major industry event I attend. While I don’t want to ruin the story by jumping to the conclusion, I can say I was thoroughly impressed by what I saw. The shear magnitude of the work that is done by the AIPLA staff and the many dedicated attorney volunteers is staggering.