Todd Dickinson, AIPLA Executive Director, October 26, 2012, starts the panel discussion.
The annual meeting of the American Intellectual Property Law Association (AIPLA) was held last week in Washington, DC at the Marriott Wardman Park Hotel. The event was attended by well in excess of 2,000 attorneys predominantly from the United States, but with a strong contingency of attorneys from foreign firms. I personally had the opportunity to meet with attorneys from Canada, Japan, Korea and the United Kingdom.
One of the presentations I attended was the panel moderated by Todd Dickinson, who is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office. Also on this panel were Judge Sharon Prost of the United States Court of Appeals for the Federal Circuit, USPTO Director David Kappos, Eli Lilly General Counsel Bob Armitage, Senior Counsel to the Senate Judiciary Committee Aaron Cooper and Oblon Spivak attorney W. Todd Baker.
Dickinson led an informative question and answer session centering on the expectations and early results from the various changes to the patent system implemented by the America Invents Act. The title of the panel discussion was simply – AIA – Will the New System Work? Not surprisingly, everyone was in agreement that the system will work, even if only because it has to work since now it is the law.
Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the start of two new regional pro bono patent programs in California and the District of Columbia—the result of the USPTO’s cooperative efforts with the California Lawyers for the Arts and the Federal Circuit Bar Association (FCBA).
The California program, run by California Lawyers for the Arts, will provide legal assistance to individuals and businesses throughout the region that might otherwise be unable to afford solid patent protection. The FCBA’s program will provide services to individuals and businesses in the Commonwealth of Virginia, the State of Maryland, and the District of Columbia.
“With these programs, qualifying independent inventors will have greater access to intellectual property counsel,” said Under Secretary for Intellectual Property and USPTO Director David J. Kappos. “The inventors stand to benefit from the improved access, and our examiners benefit by receiving better quality applications that they can examine more efficiently and effectively.”
WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today its proposal to update the USPTO Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association (ABA), versions of which have been adopted by 49 states and the District of Columbia. The USPTO is seeking public comments on the proposal for a period of 60 days, ending December 17, 2012.
This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law. Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.
WASHINGTON — As part of a wider effort aimed at stakeholders fully benefitting from the sweeping reforms of the America Invents Act (AIA), the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it has updated a critical examination for applicants seeking to practice in patent cases before the Office.
The updates ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures, and final rule packages that took effect September 16, 2012—one year after President Obama signed the historic bipartisan AIA into law.
“By requiring practitioners to have a keen grasp on all of the latest changes to patent laws and processes, we are helping ensure that deserving new innovations get to the marketplace faster and more efficiently,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The updated exam announced today means more entrepreneurs can more quickly patent ideas, which will help boost the economy.”
WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the October 1, 2012 launch of a new Patent Prosecution Highway (PPH) with the patent office of the Czech Republic, and the planned launch of two additional PPHs with the patent offices of the Philippines and Portugal in January 2013. The expedited examination in each office will allow applicants to obtain corresponding patents faster and more efficiently in each country.
Under the Patent Prosecution Highway, an applicant receiving a ruling from one participating office that at least one claim in the application is patentable may request that the other participating office fast track the examination of corresponding claims in their application filed in the other office. The PPH will allow applicants to obtain corresponding patents faster and more efficiently.
WASHINGTON — The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) today announced early publication of a classification system meant to speed the patent granting process for applicants to both Offices. The Cooperative Patent Classification (CPC) system and finalized CPC definitions are now available in advance of the January 1, 2013, official launch. The CPC is a joint USPTO-EPO project aimed at developing a common classification system for technical documents in particular patent publications, which will be used by both offices in the patent granting process.
“This is an important milestone for the USPTO and EPO as we continue to eliminate duplication of work between the two Offices,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.
USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)
On August 1, 2012, I interviewed Bernard Knight and Raymond Chen at the United States Patent and Trademark Office. Knight is the General Counsel of the USPTO and Chen is Solicitor. I spent approximately one hour on the record with them in Knights Office.
In part 1 of the interview we discussed a wide range of issues, including where they got their start in the legal profession and how they rose to where they are, who they view as the client, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.
In this segment, which is the interview finale, we discuss the heightened expectation of fairness placed on government attorneys, what it is like to work for USPTO Director David Kappos, how the USPTO determines when to give guidance to examiners to reconcile case law, specifically using the KSR Guidelines as an example. Before Knight and Chen had to go I also managed to ask a few of those familiar “get to know you” questions at the end. Wait until you hear Knight’s answer for favorite pastime or hobby. Talk about a Renaissance man! The interview does end rather abruptly, but that was because we literally kept talking through the last minute they were available and on to their next set of meetings.
USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)
On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both Bernie Knight and Ray Chen, the top two attorneys who represent the United States government at the U.S. Patent and Trademark Office. This starts the next phase of USPTO 2.0 interviews, which started earlier in the year.
Knight is the General Counsel at the USPTO, and Chen is the Solicitor. I have known each for a few years now, and I can’t tell you how many times I have asked them to go on the record for an interview. Obviously, they were cautious; uncertain what I would want to talk about. It would have been great to get into a substantive discussion about rules, law and legislation. That, however, would simply not be appropriate.
So my philosophy going into this interview was this: It wouldn’t be right for me to place Knight and Chen in a position where they had to say, “sorry, I can’t answer that question.” There is no point asking a question to which an answer could not realistically be expected, and which could violate attorney-client privilege if given. I don’t play those types of games, period. Furthermore, that isn’t why I have wanted to interview Knight and Chen. Knight and Chen represent the United States government and work for the people of the United States, but are stationed at the USPTO. I suspected at times that might put them at odds with the Administration. It also means their job as attorneys is different than what most of us will ever experience. So even if I hadn’t agreed to steer clear of substantive legal questions there were just too many process, procedure and ethics questions I wanted to ask.
Washington – The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.
Some of the new rules are as follows:
Three new administrative trial provisions — inter partes review, post-grant review, and the transitional program for covered business method patents—will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent. Additional information on third party submissions can be found here.
The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.