Posts in USPTO

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Part 1 of the interview was published yesterday. What follows is the remainder of the interview. We discussed a range of topics in this segment, including average pendency of trademark applications, cease and desist practice and some of the misleading letters sent to trademark owners and applicants from various third-parties that provide dubious publication services.

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Cohn oversees all aspects of the USPTO’s Trademarks organization including policy, operations and budget relating to trademark examination, registration and maintenance. We spoke in her office on the 10th floor of the Madison Building for approximately 55 minutes.

Let’s first consider one of the “bread and butter” components of patent prosecution, the utility application filing fee. Actually, this basic fee comprises three components: the filing fee, the search fee, and the examination fee. In the proposed fee changes, this utility application filing fee will increase from $1250.00 to $1840.00 (or from $625.00 to $920.00 for those qualifying as “small entities,” which get a 50% reduction in this fee). The biggest portion of this increase is reflected in the examination component, which has increased from $250.00 to $780.00 (or from $125.00 to $390.00 for those qualifying as “small entities”). Excess claim fees (total claims in excess of 20 and independent claims in excess of 3) have also gone up significantly, from $60.00 to $100.00, and from $250.00 to $460.00, respectively. (I’ll let you do the math for those qualifying as “small entities.”)

In this final installment of my interview with Peggy Focarino, Commissioner for Patents, we discuss the examiner count system, production and Art Units and Patent Examiners that do not issue patents. What can the Office do about rogue Examiners and rogue Art Units? Does the Patent Office even understand this is a problem? Focarino was enormously candid, and it is clear to me that senior management at the USPTO know they have a problem and are working to create fixes.

In this installment we discuss a day in the life of the Commissioner for Patents, negotiating with the Examiner’s Union relative to the updated examiner count system and implementation of the America Invents Act. Stay tuned for part 3, the interview finale, which will publish on Friday, February 17, 2012. In part 3 we discuss the fact that certain examiners and certain Art Units seem to simply not issue patents. We also discuss the process for determining where the Patent Office will locate satellite Offices.

When I interviewed USPTO Director David Kappos in December I asked him about Focarino and the first words out of his mouth were: “What a wonderful leader.” While that is lofty praise, it is consistent with what I have heard many times over the years.  Indeed, I have only heard positive things about Focarino, and everyone expresses that she is not only a very nice person but a knowledgeable and respected leader within the Office.  She is also someone that I personally respect and like.

It does seems clear that the allowance rate for large corporations is much higher than the average allowance rate for all patent applications. But does that suggest some nefarious bias? Not so fast my friends! At the end of the day it seems to me that the way patent applications are prepared and strategic decisions made during prosecution of the patent application explain why larger corporations have a much higher allowance rate than the average.

The United States Patent and Trademark Office (USPTO) has proposed a consolidated set of rules related to trial practice before the Patent Trial and Appeal Board. The proposed rules implement the provisions of the Leahy-Smith America Invents Act relating to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.

Under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO), for the first time in its history, was given the authority to work with IP stakeholders to set fees through the regulatory process. The agency took a first step towards that end this week when it published proposed fees for all of the patent services it provides.

I had the honor of being invited to the White House today for the Innovation for Global Development Event, which was held in support of the President’s commitment to using harness the power of innovation to solve long-standing global development challenges. As a part of this event, David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, launched a pilot program dubbed Patents for Humanity, which is a voluntary prize competition for patent owners and licensees. The pilot program seeks to encourage businesses of all kinds to apply their patented technology to addressing the world’s humanitarian challenges.

We begin by discussing first action allowances and whether they are frowned upon, then discuss the examination process and weave our way to Track 1 and whether you really must use Track 1 for patents likely to be litigated because you get a much more condensed, streamlined prosecution history. Over the past 10 days I have also interviewed Peggy Focarino (Commissioner for Patents), Deborah Cohn (Commissioner for Trademarks) and Peter Pappas (Chief of Staff). These interviews are being transcribed and prepared for publication. So stay tuned.

Part 2 of my interview with Deputy Under Secretary Rea picks up with discussion of the America Invents Act. We generally discussed the rulemaking process, the fact that the post-grant proposed rules are a bit late in coming, comments and what the USPTO will do with them, as well as the upcoming Road Show the USPTO is taking across America for the purpose of discussing implementation of the America Invents Act.

Deputy Director Teresa Rea has now been at the USPTO for approximately 1 year, but seems as invigorated and full of energy as she did when I first met up with her.  She seems to love the job and relish the challenges that come with this moment in Patent Office history. We chatted for approximately 55 minutes, discussing USPTO hiring, the Board of Patent Appeals and Interferences, the America Invents Act, what a typical day looks like on her calendar and much more.

The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

The data clearly suggests that that inquiry should be made into what is going on in Art Unit 3689. If there is nothing odd after evaluation then I will be the first to report that and say that after further evaluation the patent examiners in Art Unit 3689 are doing a fantastic job. In the meantime, however, one way that we can get a more complete glimpse of what is going on in Art Unit 3689 is to take a look at the patents granted only after a decision from the Board of Patent Appeals and Interferences. Currently, according to the data available in the PatentCore system, 13 of the 24 patents granted have been granted after a decision from the BPAI, and 3 others were granted only after the applicant filed an appeal brief. That rate seems extraordinarily high to me, as does the 76.5% reversal rate at the BPAI. A look at some of the appeals themselves is elucidating.