Posts Tagged: "Practising Law Institute"

Don’t forget that as of the end of the 2011 fiscal year on September 30, 2011, the PTO has a “backfile” of nearly 679,000 patent applications that have not yet been given even a first Office Action. It will take at least 3 to 4 years, likely longer, to resolve all the patent applications currently pending. If you factor in appeals from those cases, continuation applications and requests for continued examination and we are realistically talking about 7 to 8 years for this chunk of applications to work their way through the system, with the inevitable outlier patent application that will take 10+ years thanks to multiple delaying episodes (i.e., chaining RCEs and an appeal together, for example). On top of this, we will still be filing patent applications subject to the old, first to invent system through March 15, 2013. This, as well as reexamination timeline realities (i.e., statute of limitations survives 6 years past a patent falling into the public domain), means that the “old law” will remain relevant to life at the Patent Office for quite some time.

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? 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.

I’m not suggesting that those who write the patent bar examination questions are testing irrelevant stuff, but what types of questions would you ask if you were writing an exam question that tried to determine whether someone who wanted to be admitted to the club understood the rules well enough to become a member? You would likely ask questions about organization rules and procedures that fell into one of several categories: (1) those that are commonly misunderstood or unknown by current members; (2) those that are of extraordinary importance due to the magnitude of harm that could accompany a misunderstanding or mistake; or (3) those things that are particularly weird. So it isn’t at all surprising that counter-intuitive rules that are commonly misunderstood or misapplied make up a statistically relevant portion of the exam.

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,…

The United States Patent Office is now offering the patent bar examination in electronic format, and that means that the way you study for the exam needs to change. In the past test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables. Gone are these days, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures, so at least a part of your study needs to be centered around familiarizing yourself with search techniques and strategies that have a chance of success come exam day.

The Patent Bar Examination is a daunting exam, and one that has gotten a bit more difficult recently as a result of newly testable material coming online. The exam has never been easy, and likely never will be easy, but promises to get even harder in the likely event that patent reform (i.e., the America Invents Act) passes. The America Invents Act will dramatically change the fundamental underpinnings of patentability, as well as add a variety of new processes and procedures. The amount you will need to know once the America Invents Act gets tested will go up dramatically, so if you have been thinking about taking the exam it is probably a good idea to take it sooner rather than later.

It has always been my belief that the PLI course is the best, and now I think there is absolutely no doubt. Yes, there are some competitors out there but how many other courses have two faculty members that are practicing patent attorneys and law professors? John and I both have a private practice and we have made legal education an important part of our careers. We are even patent attorneys, which might sound like an odd thing to tout but there are actually courses out there that don’t have patent attorneys developing the course and creating materials. The patent bar exam is hard enough as it is, the rules of patent practice are almost ridiculously archaic and you think you can take a patent bar course taught by someone who hasn’t ever even passed the exam let alone represented anyone in real life? Yeah, right. Think again.

Effective April 12, 2011, the USPTO has dramatically updated the patent bar examination. As a result, the PLI Patent Bar Review Course has been completely updated – overhauled really. We had already been working on updates to our materials based on the inevitable change in the exam moving from MPEP Rev. 4 to MPEP Rev. 8. We knew it was only a matter of time before a new revision of the MPEP was tested, so we have had MPEP Rev. 8 materials at the ready. The text and questions have been completely revised and our lectures re-done. We feel confident the PLI patent bar review course is simply the best!

The demographics on users of social media can be surprising – a large percentage are over 35, and have six-figure incomes. These users have a lot of buying power and are often making the purchasing decisions for their households. Once they know this, clients can grasp the importance of both using social media proactively. But what is the risk? In the trade secret arena you could lose everything through inappropriate use by you or your employees, and the same is true in the trademark context as well.

I am really looking forward to these PLI programs in particular. I will be signed up to attend via webcast the programs I cannot make live, and I will be in in Chicago, IL in March for the Patent Bar Review Course and in New York City for the 5th Annual Patent Law Institute from February 17-18, 2011. If your firm is a privileged member you can attend these and all other PLI programs for free, with the exception of the Patent Bar Review Course.

In this edition of News, Notes & Announcements, the USPTO announces it has signed an agreement with the Russian Patent Office to act as an International Searching Authority; the USPTO announces expansion of the Patent Prosecution Highway; PLI’s Patent Litigation 2010 starts next week and will travel across the US with stops in Virigina, Atlanta, Chicago and New York; BIO is hosting a Technology Transfer Symposium next week in San Francisco; Howard University will hold an IP Empowerment Summit on November 5, 2010, aimed at trying to help indigent inventors — USPTO Director David Kappos will participate; and BlackWeb Technologies sues two computer giants — IBM and HP — on patents covering methods for transmitting information between a remote network and a local computer.

In this edition of News, Notes & Announcements, patent attorneys asked to participate in an inequitable conduct study, BIO seeks session proposals for 2011 Convention, Huffington Post and other popular press starting to report that patent backlog is costing jobs, the Second Circuit refuses en banc rehearing in reverse patent payments case and PLI sponsoring yours truly on a speaking tour.

Summer is almost over, but the Practising Law Institute still has some great Intellectual Property courses that all come with CLE credits. So whether you are looking for an excuse to take a trip to beautiful San Francisco, California, or the City that never sleeps, or you are looking for some great information and CLE credits via webcast, PLI has you covered. The remaining IP courses for Summer 2010 are all new and completely revised, with the exception of the extremely popular Claim Drafting & Amendment Writing workshop, which will still integrate recent changes and provide tons of practical learning.

Over the last month or so it has been made known to PLI that some law firms might be interested in me coming to the firm to give a talk or presentation on some hot patent related issue of the moment. It has also come to my attention that a number of firms have weekly or bi-weekly sessions already scheduled where one member of the firm is tasked with creating a presentation worthy of CLE credit for a “lunch and learn” presentation. I am happy to come to your firm to give such a presentation, and at no cost to your firm. All you have to do is let me speak for 5 minutes about PLI offerings, such as their CLE Seminars, Patent Bar Review Course and Treatises. I promise these 5 minutes won’t eat into any CLE worthy presentation I give, and will meet any requirements as agree upon so as to make sure attorneys attending get appropriate CLE credit.

What makes this “no Bilski day” at the Supreme Court particularly interesting and noteworthy is the fact that the Supreme Court did issue a terrorism and First Amendment decision in Holder v. Humanitarian Law Project today, a decision that many if not most would have thought to be harder and more important than the Bilski case. Given that the Supreme Court has issued a decision in what society as a whole will undoubtedly view as a far more important decision than Bilski, and since Bilski has been on the Supreme Court docket since oral arguments back on November 9, 2009, it seems virtually assured that the decision will slip to the final day of the Court’s 2009 term, or it will be held over.