I’m in New York City today at PLI headquarters on Seventh Avenue for the USPTO Post-Grant Patent Trials 2013 program. I will moderate a panel this afternoon, but as the day starts the first speaker is David Kappos, former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Since leaving the USPTO at the end of January 2013, Kappos has landed at the New York offices of Cravath, Swaine & Moore, an extremely well regarded Am Law 100 firm and great place to land. It was good to see him, he says he is doing well, and he seems to have as much energy and enthusiasm as ever.
Kappos started by explaining that this is his first public speaking engagement since leaving the USPTO. From the outset he also explained that the slides he would be using for the presentation were prepared by the USPTO. This presentation was originally scheduled to be given by James Smith, Chief Judge of the PTAB, who had to beg off as the result of sequestration cuts.
This article is by no means a substitute for the presentation by Kappos. In 60 minutes he managed to bring everyone up to date on what is going on at the USPTO relative to Appeals and other post patent proceedings. Of course, there were a handful of things that particularly caught my attention, which are mentioned below, along with “my two cents.” To distinguish the Kappos presentation from my own thoughts I have put my own thoughts in italics.
David Kappos will speak about Post-Grant Trials at PLI in NY on March 27, 2013.
Next week on Wednesday, March 27, 2013, I will be once again in New York City at Practising Law Institute headquarters on Seventh Avenue, roughly between Central Park and Times Square. The program for the day is titled USPTO Post-Grant Patent Trials 2013, which will provide 6 CLE credits for attendees.
I am a moderator for the segment titled Practice Before the PTAB Roundtable, which will discuss the first trial petitions filed, motions practice, scheduling, the possible need for rule refinements and practice tips for practitioners. Robert Sterne of Sterne Kessler and Professor Lisa Dolak of Syracuse University College of Law will be the panelists.
A new addition to the program just announced today is David Kappos, who is the immediate former Director of the United States Patent and Trademark Office. Kappos, a life-long employee of IBM prior to taking charge of the USPTO, is now with Cravath, Swaine & Moore LLP in New York City. Kappos will discuss the Patent Trial and Appeal Board, specifically discussing ex parte reexamination, the remaining legacy inter partes reexamination cases, inter partes review and the transitional program relating to covered business method patents. His segment will run from 9:15 am to 10:15 am. In addition to being presented live in New York City the program will also be webcast.
I am in San Francisco today at the Practicing Law Institute California Center, which is located on Market Street. Today is the west coast version of the 7th Annual Patent Law Institute, which is also being simultaneously webcast. The room here at PLI is packed, and several hundred attorneys are viewing via the Internet.
The first presentation today is by Brian Hanlon, who is the Director of the Office of Patent Legal Administration at the United States Patent and Trademark Office. The topic of his presentation is simple — PTO Update.
Hanlon started with statistics relating to the variety of new procedures that were ushered in as part of either phase one or phase two implementation of the America Invents Act (AIA). He started with prioritized examination, which went into effect on September 26, 2011. Between inception and February 19, 2013, there have been 8,554 requests for prioritized examination, with 94% of requests granted. In those cases where the petition was granted there were only 55 days from petition grant to the First Office Action, and the average days to final disposition has been just 168 days. So far there have been 3,667 final dispositions mailed with 1,828 allowances mailed, which corresponds to an allowance rate of 49.9%, which isn’t bad, but didn’t initially strike me as great either.
The Office of Enrollment and Discipline (OED) of the United States Patent and Trademark Office (USPTO), has announced that the patent bar examination, which is sometimes called the patent registration exam or patent agent’s exam, will be updated again effective early April 2013. No date certain has yet been announced by the OED, but based on the previous updating of the exam when new rules became effective on September 16, 2012, it can be expected that the patent bar exam will be updated sometime during the first week of April.
This next patent bar exam update will be extremely significant for those who will be taking the exam after it has been updated. OED explains that the next update of the patent bar will usher in the testing of the final phase of implementation of the America Invents Act (AIA), which will become effective March 16, 2013. “All aspects of the AIA have now made their way onto the USPTO Exam,” says John White, creator of the PLI patent bar review course and an attorney with Berenato & White.
Indeed, the so-called first-to-file rules are the final element of the AIA to be implemented and could lead to an examination that is up to one-third new material. How is this possible? First-to-file rules and law changes the 35 U.S.C. 102 in a fundamental way. This means that the very definition of what is prior art will change. That has implications for novelty directly and non-obviousness indirectly.
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.
We just wrapped up our last live Patent Bar Review Course for 2012. We were in San Francisco for the past few days, once again teaching a room of would-be patent attorneys and patent agents. This group now has the task of studying the Phase 2 implementation of the America Inventors Act, which went into effect on September 16, 2012 and started to be tested on October 2, 2012.
In the little more than a month since AIA Phase 2 became testable we have already heard from a number of our Patent Bar students who have taken the Patent Exam since the USPTO added AIA Phase 2 to it. The good news — in addition to our usual exemplary pass rate — is that the sample questions we prepared for all the supplementary materials, from KSR and Bilski all the way through AIA Phases 1 and 2, are very, very predictive of the questions you’ll see on the actual Exam. Student after student has told us that if you can handle the questions we have added to Patware (the “AIA Phase 2 Mini-Exam” was just recently added), you can handle all the questions the USPTO will ask you on the Exam.
Yes, this may be appropriately characterized as coming from the shameless commerce division, but at least some will probably want to know that the PLI Patent Litigation treatise has been recently refreshed to include some important updates. Even if you do not own the treatise, or who don’t plan on buying it, would probably still be interested in this readers digest length version of the updates to various important patent law matters published below. This snapshot-update is provided courtesy of PLI.
As you may have already heard, effective — October 2, 2012 — the United States Patent and Trademark Office will be adding a significant volume of newly testable material to the Office’s Registration Exam (i.e., the “Patent Bar Exam”). Specifically, the USPTO has added six new testable documents to the Patent Bar Exam, with these newly testable documents coming in the form of six Federal Register Notices. All of this is thanks to the America Invents Act (AIA). See AIA Phase 2 Implemented.
Does this mean that the Patent Bar will become more difficult? The answer to that question isn’t a simply YES or NO. So let’s break this down into two different questions. (1) Will the questions be more difficult on the Patent Bar Exam? (2) Will it be more difficult to pass the Patent Bar Exam? While exam questions likely won’t get more difficult, it would be naive to believe the Patent Bar will not become much more difficult with the addition of complicated new rules that only add to the legal and regulatory rules administered by the USPTO.
Let’s go back to the first question about the questions on the Patent Bar. Once upon a time the Patent Office administered the Patent Bar Exam once or twice a year to thousands of would-be patent attorneys and patent agents across the country. The October 2003 exam was the last exam administered in this way. The USPTO changed the examination to an on-demand examination that is prepared by the Patent Office, but administered by Prometric. Because questions are randomly served from the database and no two people take the same exam the Patent Office had to normalize exam difficult someway, so they scored questions on a scale of 1 to 10 in terms of difficulty. This ensures that each person gets an exam that the Patent Office deems to be of the same level of difficulty. Thus, the new material will be fit into the database and appropriately evaluated. There will not suddenly be questions of 11 or 12 level of difficulty. So in this respect each question will not be more difficult, at least from the Patent Office perspective.
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.
Over the last week the news has been all over the Internet in blog after blog after blog. According to NALP, the Association for Legal Career Professionals, the employment rate for 2011 law school graduates is the lowest in 18 years. See Law School Grads Face Worst Job Market Yet. As if that news wasn’t bad enough, the NALP announcement went on to explain that less than 66% of law school graduates from the Class of 2011 are employed in jobs that require bar membership. That means that over 0ne-third of law school graduates from the Class of 2011 are either back in school, working jobs that did not require them to go to law school in the first place, or they are simply unemployed.
“For members of the Class of 2011, caught as they were in the worst of the recession… the entry-level job market can only be described as brutal,” said James Leipold, NALP Executive Director. “When this class took their LSATs and applied for law school there were no signs that the legal economic boom was showing any signs of slowing, and yet by the time they graduated they faced what was arguably the worst entry-level legal employment market in more than 30 years.”
For those who want to represent inventors or companies in their pursuit to obtain a U.S. patent it is necessary to take and pass the Patent Bar Examination and become either a Patent Attorney or a Patent Agent. Not just anyone can take the Patent Bar Exam. In order to qualify to even take the Exam it is necessary for the individual seeking to take the test to demonstrate to the USPTO’s Office of Enrollment & Discipline (OED) that they: (1) Possesses good moral character and reputation; (2) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and (3) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office. Generally speaking, the main hurdle for most who are unable to sit for the Exam is the scientific/technical qualification requirement.
Those applying to take the Patent Bar must demonstrate to OED that he or she possesses the scientific and technical training necessary to provide valuable service to patent applicants. The General Requirements Bulletin sets forth the particulars for most situations, and divides qualifications into three distinct categories that define what the applicant must provide OED — Category A, Category B and Category C. With Category A having a Bachelor’s Degree in a specified field is enough to qualify. Under Category B you need a certain number of credit hours, but you must also have a Bachelor’s Degree, which means that college students are not eligible to sit for the Patent Bar Exam until they have graduated. Category C allows other relevant technical background to suffice, but those allowed to sit for the exam under Category C are few and far between, and one would have to wonder how easy it would be to obtain employment without at least some scientific coursework at a college or University level.
It is the time of the year where John White and I gear up for our summer Patent Bar Review Tour, criss-crossing the country teaching the PLI Patent Bar Review Course all over the United States. Next week we will be at PLI headquarters on Seventh Avenue in New York City, followed by courses in Houston (June 6-10), San Francisco (June 19-23), Boston (July 11-15) and Chicago (August 7-11). If you cannot make it out to a live course you can always do the home-study version of the course which is delivered via the World Wide Web.
Of course, as we are gearing up for a busy summer so are those who are peddling what really can only be characterized as fake, counterfeit versions of the PLI Patent Bar Review Course. PLI has been the top patent bar review course for years, so it is not surprising on some levels that there are those fraudulently using the PLI name to sell knock off courses that are simply not what they purport to be. So buyer beware! If the price seems extraordinarily low it is because it is not a legitimate course. Also, the only way to acquire the latest version of the PLI patent bar review course is to purchase the course directly from PLI.
Some will no doubt wonder how I am so sure that there are fake, counterfeit courses on eBay. Good question. Take a look at this eBay posting. Whoever bought this course for $499.95 just wasted $499.95. Although the ad says that it is the latest version of the PLI course that is fully updated that is simply not true. It is a lie!
Last week at the 6th Annual Patent Law Institute presented by the Practising Law Institute last week in New York City I found myself a little star struck; or maybe “surprised” is the right way to characterize it. The term “All Star Panel” is thrown around too liberally in the CLE world and relative to programming at various annual meetings. Having said that, the panel titled “Dialogue Between the Bench and Bar” was comprised of some of the biggest names in the industry, and they didn’t seem interested in pulling punches. Nothing seemed sacred, at least in terms of topics, which lead to a lively and entertaining discussion that lasted 90 minutes without a single question from either the live audience or the webcast audience.
The panel that ended the first day of the program was moderated by Don Dunner of Finnegan, Henderson, who is the unofficial “Dean of Federal Circuit Advocates.” I had the pleasure of interviewing Dunner nearly a year ago and always enjoy listening to his thoughts and soaking in his wisdom. To his left was Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit, and to Rader’s left was Seth Waxman former Solicitor General of the United States and now of Wilmer Hale. To Dunner’s right was Judge William Young of the United States Federal District Court for the District of Massachusetts, and to Young’s right was John Whealan, currently of George Washington Law School and former USPTO Solicitor.
The discussion was lively, perhaps even explosive. You could nearly see sparks fly when Chief Judge Rader continued to pepper Waxman with question after question about his opinion on the propriety of parties lobbying the White House in order to obtain a favorable amici brief from the Department of Justice. Rader zeroed in on the slippery slope and obviously is not pleased with the mixing of law and politics, saying: “this is a cause for concern… Politics and law have a divide.”
IPWatchdog.com has once again been selected by the Journal of the American Bar Association as one of the top 100 legal blogs. The voting has now begun to crown the top blog in 12 different categories. IPWatchdog.com is in the IP Law category.
On November 23, 2011, the Office of Enrollment and Discipline announced that the Patent Bar Examination, typically referred to simply as “the registration examination” by the Patent Office, will be updated on or about January 31, 2012.
The United States Patent and Trademark Office will update the content of the patent registration examination to cover two new rules issued September 26, 2011 that relate to the Leahy-Smith America Invents Act. These new rules permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests. Additionally, the patent registration examination will also include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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