Posts Tagged: "patent office"

The American Intellectual Property Law Association (AIPLA) is pleased to announce that Albert Tramposch, Administrator for Policy and External Affairs at the United States Patent and Trademark Office (USPTO), willresume his former post as AIPLA Deputy Executive Director for International and Regulatory Affairs, beginning January 16, 2012.

The question, however, is whether this increased inventive activity is sustainable in light of the overwhelming backlogs faced by Patent Offices around the world. It is great to have a lot of inventive activity and interest in obtaining patents. That shows that there is increased interest in business activities because few, if any, pursue a patent for the sole purpose of obtaining a patent. There is almost universally some business goal with associated hopes, dreams and potential positive impact for the economy. Whether this increased innovative activity can and will be something that produces an associated economic boon remains to be seen and is largely, if not completely, dependent on the political machinations of those in Washington, DC and other capitals around the world. Talk about a depressing though!

The CAFC’s split panel decision this past week – In re Construction Equipment Company – extends the PTO’s authority to reexamine a patent even where its validity has already been adjudicated and confirmed by the courts. Yet the CAFC once again fails to explain how a PTO reexamination finding that a patent is invalid effects an earlier judicial determination that the same patent is valid and infringed.

Beginning January 31, 2012, the United States Patent and Trademark Office will update the content of the patent registration examination to cover two new rules issued September 26, 2011 that relate to the Leahy-Smith America Invents Act. These new rules permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests. Additionally, the patent registration examination will also include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.

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.

By eliminating certain briefing requirements the PTO hopes to reduce the number of non-compliant appeal briefs and the number of non-compliant examiner’s answers. Non-compliant briefs and non-compliant examiner’s answers needlessly delay consideration of an appeal by the Board, which contributes to the long delays applicants on the appeals track face. Delays due to non-compliant briefs and answers are particularly unconscionable given the average pendency for an application that must proceed to appeal, which as of October 2011 stands at 81.8 months! That is nearly 7 years from the filing of an application to resolution if action by the Board is required. When the non-compliance is minor or relates to information the Board could well obtain for itself right in the Office files it is downright nonsensical to interject delay by kicking non-compliant briefs and examiner answers. Hopefully these new rules will help at least a little bit for some applicants.

Many people situated variously within and outside of the patent system of the United States urged the adoption of first-to-file. There are, however, many questions about the scope and possible impact of the AIA. Exactly how it will all play out remains to be seen. A significant question is what will be the likely impact of the AIA upon the operations of the USPTO, an organization that has been so greatly over-burdened in recent times. Anyone interested in reading this is likely old enough to have heard the old saying “Be careful what you wish for – you may get it.” Now we have it.

Lovin has received exceptional attention in the patent law blogosphere. In short, Lovin permits an examiner to wait until an examiner’s answer to explain how and why dependent claims are rejected. What’s worse, Lovin permits the examiner to require the applicant to provide a substantive reason for patentability before the examiner explains the rejection. The Federal Circuit is considering whether to hear In re Lovin en banc, and indeed they should rehear Lovin en banc. The Federal Circuit should defend the applicant’s right to receive a meaningful explanation of claim rejections before the applicant is required to rebut the rejections.

Consider the title of this article a very mild way of stating my frustration with the Patent Office. Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on. I could not figure it out. I know that my digital certificate is up to date and I know that I had the right password. What in the world could possibly be wrong?

There has to be some patent attorneys living in the portions of Montgomery and Prince George Counties represented by Congressman Van Hollen. There has to be some patent law firms in Dallas with ties to Congressman Hensarling and/or the 5th District of Texas. I know for sure there are patent attorneys in Ohio, Arizona, Massachusetts and Washington. These are the folks who are tasked with the burden of finding $1.2 trillion to submit to Congress for a vote, and stakeholders in the patent system should reach out to them and express their views on funding for the Patent Office. Businesses, firms and individuals within the relevant Districts and States will likely have the most influence, but anyone and everyone should stand up and be heard. Who knows when, or if, there will ever be an opportunity as good as this to end fee diversion.

Effectively immediately Pappas is the new Chief of Staff and the immediate past Chief of Staff, Drew Hirschfeld, will assume the role of Associate Commissioner for Patent Examination Policy, which for a long time has been a key role within senior management at the USPTO.

As the Super Committee struggles to find nearly $1.2 trillion in revenue or savings, they should take a serious look at the proposal to give the US Patent and Trademark Office greater control over its budget and fees by creating a revolving fund. At the request of many in the patent community, Senator Jon Kyl – a member of the Super Committee – is proposing that the Super Committee include the revolving fund The Congressional Budget Office (CBO) has informally indicated that it will score the Kyl provision as saving $700 million over 10 years. By taking the USPTO out of the regular appropriations process, the creation of a revolving fund will take approximately $700 million off budget and help the Super Committee reach their goal. And –besides being a budget saver – the revolving fund is good policy.

Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.