Posts Tagged: "patent examination policy"

Berkheimer, the Administrative Procedure Act, and PTO Motions to Vacate PTAB § 101 Decisions

After several years in which the U.S. Patent and Trademark Office (PTO) did not seem to have an official position on the issue, and many Patent Trial and Appeal Board (PTAB) panels took a position that was clearly at variance with the Administrative Procedure Act (APA), the PTO recently seems to be acquiescing to principles that the patent bar has been urging for years: (a) the PTO is subject to the same Administrative Procedure Act obligations as any other agency, and therefore cannot make factual findings without substantial evidence, and (b) there’s no carve-out for factual findings underlying § 101 subject matter eligibility rejections.

Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming arguments and claim amendments to address Alice v. CLS Bank rejections…. If you happen to face an Alice v. CLS Bank rejection or are sorted into an art unit that experiences a high volume of Alice v. CLS Bank rejections, consulting the prosecution history of successful cases in Public PAIR can prove fruitful for identifying analogous claim limitations and arguments that may help stimulate your thinking in forming a successful strategy for patentability.

What is the point of examination if patents are not presumed valid?

If you get a patent that won’t make anyone any money, including yourself, the government seems perfectly willing to presume that your worthless patent is valid. However, if you get a commercially valuable patent covering an invention that becomes ubiquitous, the government will not presume your patent to be valid. What exactly was the point of the long, costly and arduous patent examination in the first place if the PTAB simply refuses to apply the presumption of validity? What good is an examination process that ends with a patent that isn’t presumed valid by the agency that granted it in the first place? If the Patent Office refuses to presume the work product of patent examiners is solid why should anyone else? What an incredible waste of time and money.

An Ex-insider’s Perspective of the USPTO Special Applications Warning System (SAWS)

This was the SAWS program; an oversight procedure for bringing information to the attention of management. It was designed, by intention, to cast a broad and sweeping net. It was designed to permit resources to be brought to bear on high profile or complex legal, ethical, or controversial subject matter… The SAWS program is not a system of stalling patents. While the Bereznak Article asserts “(a)ny application that is categorized in SAWS … is placed in a special type of patent purgatory.” This is just not true.

Bob Stoll Part 2 – Innovation, Economy, Patent Examination

In part 1 of my interview with Stoll we discussed his adjusting to life in the private sector, the fact that he doesn’t enjoy the billable hour part of private practice (just like every other attorney I know) and we discussed politics a bit, as well as the U.S. economy and innovation policy. Part 2 of my interview, which appears below, picks up where we left off discussing Presidential politics and the buzz that engulfs D.C. every 4 years. We then move on to talk about how innovation drives the U.S. economy and I get his thoughts on why we haven’t seen a great new technology that has spawned an entirely new industry as we have coming out of so many recessions in the past. We then finish part 2 discussing changes to the patent examination process and how to streamline the examination process.