Posts in USPTO

What these numbers tell you is if your application is in Art Unit 3622 or 3689 you are in for a long wait to obtain a patent. The numbers also show that if you carry the case all the way through appeal there is quite a high success rate for applicants; 66.7% when in Art Unit 3622 and 71.4% when in Art Unit 3689. It is hard to know for sure what is going on in Art Units 3622 and 3689, but one number jumps out at me as particularly alarming. In Art Unit 3689 nearly 4 out of 5 of the applications they allow require the applicant to hop on the appeal track.

I spoke to five patent practitioners (attorneys and agents) who filed successful 12 month accelerated examination cases in 2011 to get their input on how the process went for them and what subjects should be considered by applicants and their patent counsel before embarking on it.

The United States Patent and Trademark Office (USPTO) has submitted reports for two intellectual property law studies required by the America Invents Act (AIA) to Congress. The first report was prepared under Section 3 of the AIA and addresses the scope of prior user rights defense in industrialized countries. The second report was prepared under Section 31 of the AIA and concerns international patent protection for small businesses.

In this installment we learn from Director Kappos that the USPTO budget is not a problem whatsoever. While the Office did not achieve a permanent end to fee diversion, Congress has appropriated $2.7 billion for the USPTO for this fiscal year. The USPTO is NOT operating under a Continuing Resolution (CR) as is the case with most of the rest of the federal government. Furthermore, current projections have the USPTO collecting $2.5 billion in fees this fiscal year, so there will be a $200 million subsidizing of the USPTO by the General Treasury.

The Obama government restructuring plan is of particular importance within the patent community because it will affect the Commerce Department as well as five smaller agencies. As soon as I heard that my Spidey-senses started tingling. Wasn’t there something in the America Invents Act that applied only so long as the United States Patent and Trademark Office remained an agency within the Department of Commerce? Sure enough, there is. The new fee setting authority vested in the USPTO is contingent upon the Patent and Trademark Office remaining within the Department of Commerce.

The beginning of Part 2 of my interview picks up where we left off, but more generally broadens out to generically ask how Kappos approaches the daunting task of getting over 6000 patent examiners on the same page to provide uniformity when by the very nature of the decisions they make they are dealing with one-of-a-kind innovations. There is always going to be subjectivity in prosecution, but the Kappos Administration seems to have gone back the philosophy of old, which is that patents should be granted on patentable inventions and it is the job of patent examiners, with the help of applicants and attorneys, to work together to find patent allowable matter in applications. But getting the message from the 10th floor of the Madison Building to trickle down to 6000+ patent examiners is something that cannot be taken for granted.

The United States Patent and Trademark Office (USPTO) announced on January 10, 2012 that it has concluded a five-year lease agreement through the U.S. General Services Administration’s (GSA) Great Lakes Region for a 31,000 square foot space to be located at 300 River Place Dr. in Detroit, Michigan 48207. The building, listed on the National Historic Registry, was the former home to Parke-Davis Laboratories as well as the Stroh’s Brewery Headquarters. Anticipated opening is July 2012.

Early in my career, I encountered a series of approximately 20 patent applications that were assigned to a small number of different art units. During the time it took to bring the cases to resolution, I kept detailed notes of my experiences prosecuting each case. It eventually occurred to me that the information I’d collected might be useful to other prosecutors working with the same examiners and/or art units. I wondered whether my colleagues, by reviewing my notes and gaining insight from my experiences, might be able to accomplish resolution more effectively and efficiently. However, the subjective and anecdotal nature of my notes limited their practicality. Recognizing that fact, I began to consider strategies for facilitating ways in which practitioners could more effectively share their prosecution experiences with one another.

Director Kappos was extremely gracious with his time, speaking to me on the record for nearly 90 minutes. He answered every one of my questions without dodging, and even spent time to discuss several things I did not raise. Truthfully, I could have spoken with Director Kappos for many additional hours, but I believe you will find that neither I or he shied away from any topics. We chatted about the problems with lengthy application delays, the increasing discontent within the patent bar regarding RCE filings, the America Invents Act and the challenges he faces getting 6000+ patent examiners on the same page with policy initiatives, among many other things.

What if you could have a crystal ball looking inside the United States Patent and Trademark Office to easily determine an array of statistical information related to a particular Art Unit or even a specific Patent Examiner? Can you imagine the types of strategic consultations you could engage in with clients? Clients hate being surprised with additional fees and unexplained and/or unexpected delays. What if you could with a few clicks of your mouse find out all kinds of information about a Patent Examiner and/or Art Unit? The amount of cases requiring an RCE, the average number of office actions, how often appeals are successful, how long it takes on average to get a patent, among much more information? Thanks to a new system created by patent attorneys Chris Holt and Joseph Kelly — the PatentCore™ system — you can obtain actionable and immediate intelligence on any patent examiner and on any Art Unit.

At this time of the year many attorneys and agents are not paying all that much attention to the rules and requests for comments coming out of the Patent Office. Truthfully, with the number of changes that have taken place under the Kappos run Patent Office and the enormity of the America Invents Act many patent attorneys, including myself, are worn out! Add to that the typical end of the year matters for clients and our own businesses and it is easy to miss announcements in November and December.

My list is heavily dominated by California locations, and there are probably a couple surprises, but Albuquerque, New Mexico and Syracuse, New York? I make the case for the leading candidates and a few that definitely deserve short list consideration. In addition to the 9 criteria set out by the USPTO I have added a 10th of my own. If you look at the criteria it is hard to understand why Detroit was selected. Detroit doesn’t have a reputation as a particularly livable city, so will it really help retain and recruit examiners? It seems that there were some other considerations at play, and I can’t help but notice that traditionally blue Michigan is a swing state in 2012. With this in mind, I have a hunch that politics will play a big part of the awarding of satellite patent offices. Therefore, I am going to add a tenth criteria – From a purely political standpoint does the location serve a purpose?

The USPTO always also points out that PPH agreements increase patent quality. That is likely true, but probably not as directly as you might expect. As far as I can tell the benefit to quality comes as the result of primarily three things. First, it takes less time to examine a patent application that has arrived to the Office of Second Filing (OSF) because allowable matter has already been identified somewhere else, which substantially focuses the prosecution of these applications. Second, by requiring less time on some applications there will be more time for other applications, at least in theory. Finally, there is no doubt a self-selection that goes on from the applicants side, which means better patent applications, and the overwhelming number of those using the PPH accept the claims they get and do not circle back for more claims, or broader claims, with supplemental filings.

The USPTO sees the establishment of satellite offices as an important component of their continued efforts to recruit and retain a highly skilled workforce, reduce patent application pendency and improve quality, and enhance communication between the USPTO and the patent applicant community. It is easy to understand why satellite offices would enhance efforts to recruit and retain patent examiners, after all there is a limited pool of technically sophisticated applicants and employees willing to locate in Northern Virginia and endure the ridiculous traffic, among other things. Thus, satellite offices should make a position as a patent examiner more attractive, at least if locations such as Denver or California are considered, as they should be.