EDITOR’S NOTE: I will host a free webinar discussion of the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.
On September 16, 2011, President Barack Obama signed into law the most sweeping changes to U.S. patent law since at least the 1952 Patent Act, perhaps ever. One of the dramatic changes to the U.S. patent system was the creation of post grant administrative proceedings where a challenger could in a contested forum akin to a trial challenge one or more claims of a patent already issued. These new proceedings — post grant review, inter partes review and covered business method review — went into effect on the one year anniversary of the signing of the America Invents Act (AIA) on September 16, 2012.
The patent litigation landscape has forever changed thanks to the AIA. On that date the Patent Trial & Appeal Board (PTAB) was born. The precursor to the PTAB was the Board of Patent Appeals and Interferences (BPAI), which would hear appeals from applicants who had their patent applications rejected and also conducted interference proceedings. With the signing of the America Invents Act (AIA) the PTAB was born and the jurisdiction of the appellate body within the United States Patent & Trademark Office (USPTO) was greatly expanded.
This Board, the adjudicative body of the USPTO, consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the AIA. Between September 16, 2012, and August 7, 2014, there were 1793 post grant challenges instituted. See USPTO PTAB Update, slide 5. Of those challenges 1,585 (or just over 88%) were inter partes reviews. There have been 201 covered business method challenges, 6 derivation proceedings and only a single post grant review. The fact that there has been only a single post grant review is not surprising giving that a PGR can only be instituted to challenge patents that were examined under the first to file rules of the AIA, which did not go into effect until March 16, 2013. The relatively low number of covered business method challenges suggests that this form of review is not nearly as popular as it was thought to have been prior to the enactment of the AIA.
Many within the independent inventor community are well acquainted with John Calvert. Calvert originally started out working for the United States Patent and Trademark Office as a patent examiner, but by the time he retired twenty-four years later he was in charge of the independent inventor outreach efforts of the USPTO. I have known him for a long time, he is a friend, and he has been a champion for the independent inventor community.
When Calvert retired in June 2014 I was saddened to see a him leave, but also saddened because I know how tirelessly he works to inform, educate and assist independent inventors. While he has no doubt earned a quite retirement I am extremely pleased to say that in retirement Calvert will continue to work with independent inventors; he was recently hired as the new Executive Director of the United Inventors Association (UIA). His energy, passion, knowledge and contacts should dramatically impact the UIA in a positive way. Good things are no doubt on the horizon.
Just as in the land of Westeros, there is turmoil and intrigue in our government as to who is to lead the United States Patent & Trademark Office (USPTO). Indeed, the top position of Under Secretary of Commerce for Intellectual Property and Director of the USPTO has been vacant since the resignation of David Kappos on February 1, 2013. His deputy, Teresa Stanek Rea, became Acting Director, but she was not elevated to his post. She resigned on November 21, 2013, which left both positions unfilled.
On January 13, 2014, Michelle Lee, former head of Patent and Patent Strategy at Google, was appointed Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, and in the ongoing absence of a Director, she holds the fort as Deputy Director, but with her position in administrative law limbo. Despite the clear need for leadership at the USPTO, the search for the next Iron Throne holder is mired in ideology and lobbying.
WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property (IP) creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math (STEM) education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources.
“The USPTO looks to our children—the doers, makers, and tinkerers of the future—to reimagine the world and, as the Constitution calls for, ‘to promote the progress of Science and the useful Arts’ like never before,” said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. “As schools across the country ramp up their STEM programming, we look forward to putting even more tools in teachers’ hands that will ensure our next generation is well-versed in concepts of making, inventing, and creating the high-value intellectual property that drives our economy.”
The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about this proposal to allow amendments to identifications of goods and services due to technology evolution. Please send comments regarding the proposal to TMPolicy@uspto.gov, with the subject line “Technology Evolution.” Comments may be posted on the USPTO website. In order to ensure that your feedback may be considered, please submit it no later than November 3, 2014.
Based on user input, including at a recent roundtable, the USPTO proposes to amend its current practice to permit amendments in limited circumstances to identifications of goods/services based on changes in the manner or medium by which products and services are offered for sale and provided to consumers due to evolving technology if the underlying content or subject matter has not changed. This change in practice takes into account the goal of preserving trademark registrations and applications in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem.
WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that it will host seven roadshows across the country between September 16 and October 9, 2014, to increase understanding of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). The public meetings will serve as an opportunity for USPTO subject matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.
The USPTO specifically wants to broaden public knowledge of the FITF provisions and assist understanding of the provision’s administrative processes to aid inventors and their representatives in the filing and prosecuting of patent applications under the FITF system. At each roadshow, panelists will discuss FITF statistics to date, the applicability of the FITF provisions on patent applications filed today, the FITF statutory framework and its exceptions, and AIA evidentiary declaration practice useful to invoke these exceptions. The experts will present a variety of sample scenarios to illustrate both the applicability of the FITF provisions as well as tips for prosecuting applications filed under the FITF provisions.
Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.
The administrative trial proceedings created by the AIA are: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.
Back on June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. A further 11 weeks has passed and we are still without a presidential nominee to run the USPTO. The letter from Senator Hatch to President Obama is reproduced below.
In the letter, Senator Hatch also questions whether USPTO Director Michelle Lee was appointed consistent with 35 U.S.C. § 3(b)(1). Dennis Crouch and Hal Wegner have covered that issue with some detail, so there is no need to rehash that here, but suffice it to say that the Director is supposed to nominate the Deputy Director for the position, but there has not been a Director of the Office since David Kappos left in January 2013. At the time Lee was nominated Peggy Focarino, the Commissioner for Patents, had been vested with the powers and duties of the Director by the Obama Administration, although not given the title.
In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.
Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of 35 U.S.C. § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.