Posts in USPTO

2013 turned out to be a very big year for IP, and especially patents, and the year took a course that few would have predicted this time last year. At that time, the senior team at the PTO was primarily focused on the imminent departure of our then-boss, David Kappos, and the end of what had clearly been an extraordinarily active and successful tenure. The AIA had been almost entirely implemented, the new Patent Trial and Appeal Board was up and running, and most of us expected 2013 to be focused on implementation and execution of the AIA and the other initiatives that had been set in motion under Director Kappos.

These three proceedings, like every other reciprocal disciplinary proceeding, demonstrate the overwhelming importance of obtaining the best resolution possible when the State ethics authorities come knocking. Because there is a presumption that reciprocal discipline is appropriate, to prevail at the USPTO you would need to demonstrate that there was a lack of due process, complete lack of evidence or that there is some manifest injustice that would occur if discipline were to be handed out by the USPTO. Whether we like it or not, you are going to be disciplined by the USPTO to the same extent you were disciplined by the State ethics panel, or a Federal Court. However, this sometimes seems to lead to unequal treatment of practitioners who are similarly situated but for the State in which they are admitted. Eventually someone will raise an equal protection argument, but you don’t want that to be you. It would have a significant uphill battle no doubt like all such arguments, but it would be very nice for OED to take a step back and consider whether it is fair to simply defer its own disciplinary authority to the States.

The Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market(Trademarks and Designs) (OHIM), the State Administration for Industry and Commerce (SAIC) and the United States Patent and Trademark Office (USPTO), (hereinafter referred to as the “Partners”) held the 2013 TM5 Annual Meeting in Seoul, Republic of Korea on 5-6 December 2013.

Time and time again in reciprocal discipline proceedings we see the USPTO handing down identical discipline to what was handed out at the State level. This is no doubt because State discipline creates a presumption that the imposition of reciprocal discipline is proper. See Selling v. Radford, 243 U.S. 46 (1917). Thus, seeking the identical penalty as already handed out at the State level is relatively easy and straight forward, and puts the responding practitioner at a significant disadvantage, requiring the Respondent to demonstrate lack of due process, severe lack of proof in the State proceeding or that a grave injustice would occur as the result of imposition of reciprocal discipline.

U.S. Secretary of Commerce Penny Pritzker today announced the appointment of Michelle K. Lee as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO). Lee currently serves as the Director of the USPTO’s Silicon Valley satellite office and will begin her new role at USPTO headquarters in Alexandria, VA, on January 13, 2014.

One of the things specifically alleged as demonstrating lack of control over his practice was his antiquated docketing system. Until 2005 Tachner used a “white board” system that was updated monthly and only included three months of data. It only had 3 columns, which were the client docket number, the type of action and the due date. If action were taken a handwritten line entry was placed after the due date. If action was not taken by the due date it would remain not the white board for a few months, but then ultimately removed without any action ever being taken. In 2005, this system was updated to a Word document that did not use tables, but instead included single line strings of data. There was no back-up docketing system, nor was any inventory of files ever done to ensure the integrity of the Word document docket. As you might imagine, this type of “docketing system” created problems.

Crowell & Moring LLP announces Teresa (Terry) Stanek Rea, former acting and deputy director of the USPTO and acting and deputy under secretary of commerce for intellectual property returns as a partner in the firm’s Intellectual Property Group.

As evidenced by the numbers above, the Board takes as many cases as they reasonably can within the statute. If there’s a good case to be made that a case could be litigated in PTAB, it’s usually accepted. As of last month, the office has instituted 192 trials and denied 32 trials for an overall institution rate of 85.7 percent, according to a statistics report compiled by the PTO. One example of this is Intellectual Venture Management, LLC v. XILINX, Inc., IPR2012-00018, Paper 12 (P.T.A.B. Jan. 24, 2013). Here, XILINX argued that IVM’s petition should be denied, because IVM failed to identify all the real parties in interest as required by 37 C.F.R. § 42.8(b)(1). XILINX pointed to another case in California where IVM was listed with 5 other defendants in a suit that had 63 entities as evidence of IVM’s failure. The Board ruled in IVM’s favor, saying that XINLINX had not given any argument for why the civil local rules of the Northern District of California are analogous to the Board’s rule on real parties in interest or for specifically why any of the 63 entities were real parties of interest.

There is a battle cry against abusive litigants in the patent industry. Among the tactics suggested is a “loser pays” system to try to mirror Europe, where this type of abuse is minimal. The Congressional Research Service presents that 92% of companies who assert but do not make products (over broadly and derisively called “trolls”) lose litigation that reaches judgment on the merits… Defendants can call upon the PTO to trigger up front fee shifting for the patent owner and an accelerated PTO determination on the validity, even potentially before the court analyzes it. But there’s more. IPRs and CBMs can be used to drive settlement, either before or after filing. Pre-filing, a drafted petition can be shown to the patent owner as a basis to settle.

Selling v. Radford, 243 U.S. 46 (1917), sets the standards for imposing reciprocal discipline on the basis of a State’s disciplinary adjudication. Under Selling, State disciplinary action creates a federal-level presumption that imposition of reciprocal discipline is proper unless an independent review of the record reveals: (1) lack of due process, (2) an infirmity of proof of the misconduct, or (3) that grave injustice would result from the imposition of reciprocal discipline. The standard the responding attorney must meet is one of clear of convincing evidence that the Selling factors preclude reciprocal discipline.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that the San Jose City Hall building, located at 200 East Santa Clara Street, has been selected as the permanent location for the USPTO’s Silicon Valley satellite office. The search for permanent office space was put on hold in July due to sequestration. Generous support and assistance from the City of San Jose, the California State Assembly’s Speaker’s Office, along with the collective support for the satellite office championed by members of the California congressional delegation, will enable the USPTO to move forward with occupying permanent space in Silicon Valley by the end of 2014.

Jaeger did not file a response to the complaint, despite being granted two extensions of time to do so. He did, however, send two brief fax messages to OED, in one pointing out that he was an honorably discharged veteran who served during the Vietnam era, and in another pointing out that the underlying complaint that initiated disciplinary involvement stemmed from a disagreement with a client who did not want to pay his bill. Unfortunately for Jaeger, however, he never filed an answer, which meant that the allegations within the complaint were all deemed to be admitted. See 37 CFR 11.36(d).

It is not common to see a petition for reinstatement, much less an actual reinstatement. That is, however, what happened with respect to Mr. B., who was suspended nunc pro tunc from October 26, 2009, for a period of 60 months, but with the last 24 months stayed. B’s petition for reinstatement was successful, and he is once again a patent agent registered to practice at the USPTO. In the original disciplinary proceeding that lead to the suspension, the OED Director filed a disciplinary complaint against B on October 26, 2009, and then Director Kappos entered an interim suspension order because B was convicted of a felony. Authority for such an interim suspension comes from 37 CFC 11.25.

The meeting will now be held on December 12, 2013 from 8:30 a.m. to 5:30 p.m. ET at the USPTO headquarters in Alexandria, VA and the period for post-meeting comments has been extended. The deadline for filing pre-meeting comments is November 13, 2013.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the USPTO’s draft Strategic Plan for fiscal years (FY) 2014-2018 is posted for public review and comment on the USPTO website. The draft plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide.