Posts Tagged: "interference proceedings"

As flattering as it was to be inserted into the patent reform debate in some peripheral way, the real news from yesterday was the Manager’s Amendment was passed by a vote of 97-2. The Manager’s Amendment included language that would allow the United States Patent and Trademark Office to keep the fees it collects. The Manager’s Amendment reportedly also included insertions favored by Congressman Lamar Smith (R-TX), who is chair of the House Judiciary Committee. Thus, it seems quite likely that patent reform will soon become a reality.

As I have repeatedly explained over and over again for the past several years, there is nothing to fear about a first to file system (see above) AND there is no reason that a first to file system must be linked with changes to the grace period enjoyed by innovators. It seems those that would prefer to marginalize my factually correct statement about a de facto first to file statement conveniently ignore my complete views. Those who mischaracterize the truth seem to have an unhealthy and unnatural emotional attachment to a first to invent system that simply doesn’t exist, at least 99.99613% of the time.

The Senate will take up patent reform on Monday, February 28, 2011, the first day back. Some are even anticipating that the Senate will vote on patent reform bill S. 23 late in the day on Monday, February 28, 2011. As we get closer to a vote in the Senate the rhetoric of those for and against is heating up to a fever pitch. The fight, once again, is over first to file, with battle lines drawn that run extremely deep. Senator Diane Feinstein (D-CA) is expected to file an Amendment stripping the first to file provisions, which could be supported by Senate Majority Leader Harry Reid (D-NV).

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Allvoice sought a remand of the Holt application to the examiner for further prosecution or to issue an order requiring AVRS to show cause why judgment should not be entered against the Holt application. Without requiring AVRS to even file a response, the Federal Circuit, per Chief Judge Rader, explained that there was simply no justification for the issuance of a writ of mandamus because there was no showing that an ordinary appeal wouldn’t suffice after the PTO finally disposed of the interference proceeding. Of course, that doesn’t take into consideration the need for Allvoice to quite title to proceed with its infringement action against Microsoft. The plot thickens!

There were probably about 40 people in the room, and the event was broadcast live over the Internet. Kappos took a number of questions and seemed very engaged. It is a breath of fresh air for the USPTO to be listening to the inventor community in a substantive way like this. But it goes beyond just listening. The USPTO proposal with respect to essentially extending the life of a provisional patent application to 24 months, which was announced officially last week, was the result of a suggestion Kappos received at a round-table event in California. So not only is the USPTO listening, they are taking what the hear into consideration. What a novel, yet profound concept.

One of the proposals in the pending patent reform legislation is a change from first to invent to a first to file system. The trouble is that an interference proceeding, the proceeding that would take place to determine who is entitled to receive the patent between the alleged first to invent and the first to file, costs about $600,000. Not many independent inventors or small businesses are going to be able to foot that bill for sure. Nevertheless, I thought it might be good to take a look at this thing called an interference proceeding, which if patent reform is successful would become a relic of US patent law.

There is absolutely no reason why we cannot change from a first to invent system to a first inventor to file system that would still retain a real and substantial grace period and still retain the right for patent applicants to swear behind references to demonstrate an earlier date of invention, at least with respect to pieces of prior art that are not the progeny of earlier filed patent applications. So the currently proposed revisions to 102 need to be amended prior to passage of S. 515. It should define the term “disclosure,” do away with “otherwise available” under proposed 102(a) and retain the grace period relative to third party actions.

The UIA sent a letter to Senator Leahy and Congressman John Conyers. The UIA hopes what is most newsworthy about the letter is their appreciation of Kappos’ outreach to the independent inventor community. First to file may dominate the news though. Did you know that the mean cost of an interference through the completion of the preliminary motions phase is a whopping $417,130. The mean total cost of the entire interference is $656,306. What independent inventors can afford that?