Posts Tagged: "patent office"

Inventors who attend these USPTO sponsored inventor conferences will receive practical advice from successful inventors, experienced practitioners and USPTO officials. The registration fee is $80 per person ($70 for seniors or students) and includes all sessions and presentations, morning and afternoon refreshments, lunch both days and the networking reception. Having been involved several times with the conference when it is held in Alexandria, Virginia, I can say first hand that this event is excellent, informative and educational. I highly recommend it for inventors and business people who need to become more familiar with patents and trademarks.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. These rules become effective on September 16, 2012. With this publication, all of the administrative trial rules the USPTO was tasked by the AIA to complete will have been published.

I tried to get Stoll on the record while he was at the USPTO.  I don’t think he dodged me, it just never worked out.  I travel a lot, he travels a lot and when it was convenient for one of us it was never convenient for the other.  In the time I have known Bob we have become friends.  I respect him enormously, his knowledge of all things patent is extraordinarily deep.  I always enjoy getting together with him, it is always a lively conversation.  So I am extremely happy to bring this on the record interview to you. In this conversation we talk life after the USPTO, politics, being on the famed K Street in Washington D.C., the U.S. economy, improvidently granted patents and much more. So without further ado, here is my interview with Bob Stoll.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.

Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.

For well over a year I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Disclosures of third-parties who independently arrived at the invention will be used against the inventor. Now that the USPTO has come out with examination guidelines we find out the truth. I was right all along.

GUEST CONTRIBUTION BY USPTO DIRECTOR DAVID KAPPOS… President Obama’s Global Development Policy — the first by a U.S. Administration — recognizes that raising the living standards of humanity is not just a moral imperative for the United States; it is vital for our economic and national security. Patents for Humanity advances this policy by leveraging the power of invention to improve lives. I invite all patent holders to consider how your inventions could further the aims of the President’s Global Development Policy. If you are actively addressing humanitarian needs with your patents, please apply to our Patents for Humanity prize competition by August 31st, 2012.

Although predictions on the outcome of an unusual case such as this are probably worthless, I think that it is most likely that this panel will rule in 2012 the same way that it ruled in 2011. It is probably safe to presume that the judges are fairly entrenched in their positions. In my view, no arguments were presented which show that Mayo was a game-changer with respect to the isolated DNA claims and the screening method claim. In particular, AMP’s main point about the relevance of Mayo—the preemption argument—was harshly criticized by Judge Moore. Among the three members of the panel, Judge Moore would appear to be the most likely to change sides, and I do not see this happening. Thus, I expect the same outcome as last year. However, the long-term outcome is much murkier, with an en banc hearing and/or a Supreme Court appeal almost certain.

This new final rule eliminates 37 CFR 1.99, which provided for third-party submissions of patents, published patent applications, or printed publications in published patent applications, but did not permit an accompanying concise description of the relevance of each submitted document and limited the time period for such submissions to up to two months after the date of the patent application publication or the mailing of a notice of allowance, whichever is earlier.

The Detroit USPTO will create approximately 120 highly-skilled jobs in its first year of operations alone. The IP experts in the office will work closely with entrepreneurs and help further reduce the backlog of patent applications and appeals. Reducing the backlog of patents and simultaneously speeding up the process will allow businesses to move their innovation to market more quickly, saving critical time and resources.

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program. The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program. Further inquiry will be made into whether the program should be extended further or made permanent. During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

David Kappos today announced plans to open regional USPTO offices in or around Dallas, Texas, Denver, Colorado, and Silicon Valley, California. These offices are in addition to the already-announced first USPTO satellite office to open on July 13 in Detroit, Michigan. The four offices will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating new economic opportunities in each of the local communities.

It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key. Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

The one thing that will be markedly different from federal court practice, however, is that for the most part only registered Patent Attorneys or Patent Agents will be able to appear before the Patent Trial and Appeal Board. The Patent Office considered broadly permitting practitioners not registered to practice by the Office to represent parties at the Patent Trial and Appeal Board. Notwithstanding, the Patent Office decided against allowing non-registered practitioners from representing parties at the Patent Trial and Appeal Board the proposed rules set forth in February 2012. The USPTO explained this was because they believed that making the practice open to non-registered attorneys would present burdens on the Office in administering the trials and in completing the trial within the established timeframe and Office rules.