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.
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.
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!
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.
As the second largest economy in the world, China is emerging to the center of the world’s economic stage. This emergence has been accompanied by constant changes in its legal and economic sectors. The intellectual property sector also has witnessed numerous recent changes. There have been significant new advances in China’s national innovation policies. New trends in Chinese patent filings have emerged. A growing number of Chinese companies are creating their own IP and increasingly filing infringement suits against foreign companies and their local competitors in China. China’s third patent law amendment has materially changed patent practice and procedures in that country.
These changes and trends will have profound impacts on foreign companies doing business in China, especially in intellectual property areas. What are the best ways to deal with these important changes? The following several considerations should be evaluated in determining a company’s patent strategies in China. I will also discuss these and other considerations in my upcoming Practising Law Institute presentation IP in China: Strategies for Doing Business While Maximizing and Protecting Your IP, which will take place on Wednesday, November 16, 2011 from 1pm to 2pm ET.
No doubt you have heard about the new law that is upon us in the land of patents; it’s in all the papers and on all the blogs. The America Invents Act was signed by President Obama on September 16, 2011, and marks the largest single re-write of U.S. patent law ever. Even the 1952 Patent Act pales in comparison because that was almost completely a codification of existing case law that had developed over the decades. America Invents, however, embarks upon a new path and leads us into the great unknown in many respects.
Those preparing to take the patent bar exam or contemplating sitting for the exam at some point in time in the future likely don’t want to hear that U.S. patent law is heading into the great unknown. How can you be expected to take a pass the patent bar examination under these circumstances? First: Relax. You do not have to unlearn or forget what you are currently learning, or soon will learn, for the patent exam or for your practice life after you pass the exam. That being said, the sooner you do take the patent bar exam the better off you will be!
Earlier today I spoke at the Practising Law Institute program on the America Invents Act. We had a good turnout in the room and an excellent turnout via webcast. The program was 4 hours long, and truthfully we could have gone on for at least several more hours without running out of material. For those who stayed online we ran long by about 20 minutes, and stayed talking with attendees and answering questions of live attendees for another 20 minutes. We are already talking about reprising the presentation for an audience at PLI’s New York City location on Seventh Avenue, so stay tuned.
There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section in some places change and in other places remains the same, making you suspect that different terms must mean different things but the same term in different places has to mean the same thing, right? Our moderator, Denise Kettelberger (Faegre & Benson) said that patent attorneys should really read the Act about 10 times, which is really good advice. Every time you read it you notice something a little different, and during the presentation of others today I found myself taking notes and looking up things in the Act with new understandings. This is a major re-write of patent laws and not one that is at all simple.
That being said, I thought I might take this opportunity to provide a high level overview of the America Invents Act. What follows is discussion of 5 provisions contained in the Act. Look for an overview breakdown of additional provisions (prior user rights, supplemental examination, post-grant review, etc.) coming soon.
This morning I am sitting in the back of the conference room at PLI headquarters inNew York City. Today is day 1 of the PLI patent bar review course. John White is at the podium and going through some preliminary matters, eliciting appropriate laughter at times from the audience. Everything is fine and fun at this early morning hour, but that will soon change. After this preliminary segment we will roll up our sleeves and begin to charge through the rules and procedures that govern practice before the Patent Office. Don’t get me wrong, I do honestly believe this course is a great course, and our pass rate is extremely high, but at the start of every new class I wonder how in the name of all that is holy will we be able to make sense for these patent newbies of what has become a hopeless mess of regulatory chaos. The America Invents Act will only make matter worse, but that is another story for another day.
Thinking about what lies in front of these students is mind numbing. Even more mind numbing is that every year there are many individuals who will attempt to pass the patent bar examination without even taking any review course. What are these people thinking? Obviously, they are thinking that if they could get through a science degree surely they can get through 1 multiple guess exam. Those who have taken the exam know the danger inherent in this thinking, but how could it be possible that the rules of practice at the Patent Office have become so ridiculous and counter-intuitive? In fact, as I have told the several thousands of students I have taught over the years, the more ridiculous and counter-intuitive the more likely it will be on the exam! Scary, huh?
The America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent reform legislation in decades, and it promises to change virtually all of patent practice as we know it over the next 18 months. Some pieces of the legislation will go into effect almost immediately, but other aspects of the legislation will become effective 12 months and 18 months after the bill becomes law. We are in for the largest set of changes anyone practicing has ever faced. The 1952 Patent Act codified what was in existence, the American Invents Act shakes the very foundation of patent law and patent practice.
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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