Posts Tagged: "David Kappos"

On Friday March 11, 2011, I attended the Women’s Entrepreneurship Symposium in honor of Women’s History Month at the United States Patent and Trademark Office. The program was co-sponsored by the US Women’s Chamber of Commerce and focused on women entrepreneurs, the importance of intellectual property protection for their innovations, how to leverage economic opportunities for women-owned businesses and what resources are available exclusively for women-owned small businesses. The topics discussed focused solely on American business.

Through a collaboration with the United States Patent and Trademark Office, the museum will present a robust series of public programs and educational outreach about today’s inventors and inventions as a contemporary complement to the exhibition. These programs will include webcast public lectures, an inventors’ symposium and clinic, and hands-on activities for children and families, as well as outreach to schools and professional development workshops for educators.

Deputy Director Designate Rea is a patent attorney herself, having been admitted to the patent bar on December 15, 1981. According to her profile page on her firm’s website – Crowell & Moring LLP – Rea’s practice has focused on complex patent litigation and inter partes matters, as well as patent procurement and portfolio management, including patent preparation and prosecution. Rea also has experience in drafting infringement and validity opinions, as well as interference, and licensing matters. Therefore, it seems that the push to have high achievers with industry specific patent experience continues at the Patent Office, which is refreshing.

Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.

On Friday, February 4, 2011, the USPTO will publish in the Federal Register a notice of proposed rulemaking on “Track One” of the program, which will give applicants the opportunity for prioritized examination of a patent within 12 months of its filing date for a proposed fee of $4,000. Sadly, because the Patent Office does not have fee setting authority there will be no reduction in fees available to small entities who otherwise normally pay 50% of most Patent Office fees. Because the Congress controls which fees qualify for small entity preference everyone will need to pay $4,000 to accelerate under Track One.

The log jam in patents issuances is not the only impediment to start-up job creation. Although it is certainly a big one. Tax and regulatory burdens on start ups have reached a critical mass in the last 10 years. A fact recognized by President Obama when he signed an Executive order last Tuesday ordering the removal of burdensome regulatory rules on business. Also a problem are the post 9-11 immigration policies that are driving many of the world’s best and brightest scientists and engineers to other countries. But the biggest job killer beside the patent backlog is the systemic destruction of our high tech manufacturing capacity.

Specifically, we learned that the USPTO projects an average first action pendency of 23 months by the end of fiscal 2011, that participating in the First Action Interview Pilot Program more than doubles the likelihood of getting a first action allowance, that Track 1 rules are imminent with rules for Tracks 2 and 3 to follow and during FY 2010 nearly 6,000 USPTO employees worked from home at least a portion of their work week. We also heard an ominous and declarative statement from Kappos, who told the House Subcommittee on Intellectual Property that the diversion of fees will cause the patent backlog to rise.

I am pleased to announce that IPWatchdog.com was selected by the readers of the ABA Journal as their favorite IP Law blog for 2010 ABA. I am also pleased to announce that for 2010 we had over 2,000,000 visits, delivered nearly 11.8 million pages, our homepage was viewed 3.06 million times and we averaged over 67,000 unique monthly visitors! Thanks to all our readers for coming back day after day, and thanks to all of our Guest Contributors!

Commerce Secretary Gary Locke announced that the first Regional Patent Office would be located in Detroit, Michigan and will open at some point during 2011, employing some 100 patent examiners with some additional support staff. Locke explained that as a part of the nationwide workforce initiative of the Obama Administration high paying jobs would be coming to the USPTO Detroit Satellite Office. Locke said that while 100 patent examiners is an appropriate level of staffing initially that number could expand over time if the Regional Patent Office model proves successful. Secretary Locke also explained that the Detroit Satellite Patent Office will be “the first of several Patent Offices we hope to establish around the country.” When pressed during the question and answer phase of the call, Secretary Locke said that perhaps two additional Satellite Patent Offices might open “within the year after Detroit.”

Yesterday Director Kappos deviated a bit from his routine and utilized a powerpoint presentation, which was titled: “The USPTO by the Numbers: Progress and Reform at Our Nation’s Innovation Agency.” While some of the slides tell what appears to be a remarkable turn around story, the real news to come out of Director Kappos’ presentation is that he is challenging the Patent Office to get down to a patent application backlog of 650,000 by the end of fiscal year 2011. To paraphrase Sam Cooke: what a wonderful world it would be!

At lunch Director Kappos explained that the goal for fiscal year 2010, which ended on September 30, 2010, was to get the backlog down to 699,000 — dubbed “project 699.” The Office was not successful, but Kappos says they will get well below 700,000 for fiscal year 2011, perhaps as low as a backlog of 650,000. Kappos’ immediate follow-up: “I say that as Commissioner Stoll starts to choke at me saying that.” Indeed, there are ambitious goals at the USPTO for FY 2011, including a move to unity of invention.

In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months. That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

I am pleased to announce that the Editors of the ABA Journal yesterday announced they have selected IPWatchdog.com as one of the top 100 best law blogs by lawyers, for lawyers. Now readers are being asked to vote on their favorites in each of the 4th Annual Blawg 100’s 12 categories. IPWatchdog.com is in the “IP Law” category. To vote, please visit The 2010 ABA Journal Blawg 100.

The program will continue on a temporary basis. The USPTO may further extend this plan (on either a temporary or permanent basis), or may discontinue the plan altogether after December 31, 2011, even if 10,000 petitions have not been granted. Program participants are limited to 15 applications, but given the number of petitions received so far that does not seem to be a meaningful limitation. As of November 15, 2010, a total of 139 petitions have been filed, with 98 having been granted.

Building on more than a quarter century of cooperation, the Trilateral Offices continued to focus on addressing global patent workload challenges, in particular, decreasing pendency and examination backlogs, improving patent quality, and leveraging IT solutions to simplify and speed up processing of patent applications.