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Posts Tagged ‘ patent office ’

AIPLA 2012 Annual Meeting Begins

Posted: Thursday, Oct 25, 2012 @ 4:59 pm | Written by Gene Quinn | 12 comments
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Posted in: AIPLA, Gene Quinn, IP News, IPWatchdog.com Articles, Patents

Current AIPLA President William Barber (Pirkey Barber, PLLC) welcomes attendees to the luncheon earlier today.

 

The 2012 Annual Meeting of the American Intellectual Property Law Association is underway at the Marriott Wardman Park hotel in Washington, DC.



USPTO Proposes Updated Professional Conduct Rules

Posted: Thursday, Oct 18, 2012 @ 9:42 am | Written by U.S.P.T.O. | 1 Comment »
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Posted in: IP News, IPWatchdog.com Articles, Office of Enrollment and Discipline, Patents, USPTO

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.



USPTO Updates Registration Examination for New Patent Practitioners

Posted: Thursday, Oct 4, 2012 @ 1:35 pm | Written by U.S.P.T.O. | Comments Off
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Posted in: IP News, IPWatchdog.com Articles, Office of Enrollment and Discipline, Patent Bar Exam, Patents, USPTO

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.”



USPTO Announces Three New Patent Prosecution Highway Partnerships

Posted: Wednesday, Oct 3, 2012 @ 3:54 pm | Written by U.S.P.T.O. | Comments Off
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Posted in: International, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

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.



USPTO and EPO Publish Advance Version of Cooperative Patent Classification System

Posted: Monday, Oct 1, 2012 @ 8:33 am | Written by U.S.P.T.O. | 7 comments
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Posted in: IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

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.



Interview Finale: USPTO Attorneys Knight and Ray

Posted: Saturday, Sep 29, 2012 @ 7:25 am | Written by Gene Quinn | Comments Off
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Posted in: Attorneys, Gene Quinn, Interviews & Conversations, IP News, IPWatchdog.com Articles, USPTO

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.



Exclusive Interview: USPTO Attorneys Bernie Knight & Ray Chen

Posted: Thursday, Sep 27, 2012 @ 8:45 am | Written by Gene Quinn | 3 comments
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Posted in: Attorneys, Interviews & Conversations, IP News, IPWatchdog.com Articles, USPTO

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.



Historic Patent Reform Implemented by USPTO

Posted: Monday, Sep 17, 2012 @ 5:19 pm | Written by U.S.P.T.O. | 7 comments
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Posted in: America Invents Act, IP News, IPWatchdog.com Articles, Patent Reform, Patents, USPTO

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.


USPTO Changes Format and Links to MPEP

Posted: Saturday, Sep 15, 2012 @ 2:32 pm | Written by Gene Quinn | 7 comments
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Posted in: Companies We Follow, Gene Quinn, Google, IP News, IPWatchdog.com Articles, Patent Bar Exam, Patent Bar Review, Patents, USPTO

Earlier today, while working on revamping the PLI Patent Bar Review Course, I needed a citation to the MPEP and an associated Code of Federal Regulations cite. It was as this time I noticed there has been a change to how the MPEP is presented on the USPTO website.  Perhaps others have noticed and this is not news, but it is the first time I’ve encountered an issue finding information in the MPEP from the USPTO for a very long time.

One of my responsibilities is to write exam level difficult questions for the newly testable material, which will be tested starting October 2, 2012.  This means questions relative to the changes in the rules of practice effective September 16, 2012.  This requires me to not only write the questions, but also create model answers.  We strive not only to explain generally what the right answer is, but to also provide a greater opportunity for learning, which requires detailed explanations.

It was at this time that I realized that the USPTO has reclassified the Manual of Patent Examining Procedure, changing the URLs where sections were located previously, making them unfindable if you use a search engine. In some instances my search even leads to “Page Not Found” errors when searching on the USPTO website itself.



AIA Rules: Citation of Prior Art and Estoppel in Reexamination

Posted: Friday, Sep 14, 2012 @ 1:49 pm | Written by Gene Quinn | 1 Comment »
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

President Obama speaking at the AIA signing ceremony, September 16, 2011.

In two days we will celebrate the first anniversary of the signing of the America Invents Act (AIA). Over the next week to two weeks I will be focusing on the AIA, both in retrospect and insofar as practice and procedure is concerned at the USPTO.  Yesterday I wrote about Supplemental Examination.  Today we take a look a the Final Rules packaged titled Changes To Implement Miscellaneous Post Patent Provisions of the Leahy- Smith America Invents Act, which were published in the Federal Register on August 6, 2012.

The “miscellaneous” final rules primarily implement two things.  First, section 6 of the AIA to provides for an estoppel that may attach to the filing of an ex parte reexamination request subsequent to a final written decision in a post grant review or inter partes review proceeding. See 37 CFR 1.510(b)(6).  Second, the final rules expand the scope of information that a person may cite in the file of a patent to include written statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent.

With respect to the first, relating to ex parte reexamination, USPTO rules will now require that a third party request for ex parte reexamination contain a certification by the third party requester that the statutory estoppel provisions apply to completed inter partes reviews and post grant reviews do not bar the third party from requesting ex parte reexamination. Cosmetically, the final rules also implement Section 3(i) of the AIA, which replaces interference proceedings with derivation proceedings, and replaces the title ‘‘Board of Patent Appeals and Interferences’’ with ‘‘Patent Trial and Appeal Board.”