Posts Tagged: "patent office"

The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country. This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.

Breakthroughs in science and engineering create foundations for new industries, new companies, and new jobs. This is undeniably true. The question is how do we unleash this engine of growth? I am in favor of streamlining the technology transfer process, but I believe that it needs to begin from within. Universities have to revise the view of their appropriate role. Universities are not supposed to be in the business of technology transfer to make money, but rather to facilitate the development of exciting new innovations while training the next generation of engineers and scientists. By developing exciting new innovations and then placing them into the private sector the University plays a vital role in the innovation economy. Under-funding and over-working technology transfer departments is counter-productive.

Exactly who is to blame if a pharmaceutical company, say Eli Lilly, decides to invest billions of dollars and build a facility when they haven’t adequately protected their own intellectual property? Moreover, who is to blame if that company consciously chooses to resort to trade secret protection, which we all know is exceptionally fragile, as the foundation to build a multi-billion dollar investment? For crying out loud, the very premise that a patentee could force the closure of a manufacturing facility employing hundreds or thousands of people and interrupt the production and distribution of anything, let alone something as consequential as a pharmaceutical, is nothing more than fantasy. Talk about chicken little! Only someone unfamiliar with the evolution of the law relative to preliminary and permanent injunctions in patent litigation could with a straight face much such an argument. Indeed, the mother of all straw arguments!

Don’t forget that as of the end of the 2011 fiscal year on September 30, 2011, the PTO has a “backfile” of nearly 679,000 patent applications that have not yet been given even a first Office Action. It will take at least 3 to 4 years, likely longer, to resolve all the patent applications currently pending. If you factor in appeals from those cases, continuation applications and requests for continued examination and we are realistically talking about 7 to 8 years for this chunk of applications to work their way through the system, with the inevitable outlier patent application that will take 10+ years thanks to multiple delaying episodes (i.e., chaining RCEs and an appeal together, for example). On top of this, we will still be filing patent applications subject to the old, first to invent system through March 15, 2013. This, as well as reexamination timeline realities (i.e., statute of limitations survives 6 years past a patent falling into the public domain), means that the “old law” will remain relevant to life at the Patent Office for quite some time.

The fiscal year 2011 results are now in and the backlog of untouched patent applications as of the end of FY 2011 was 669,625, so there is plenty of work to be done and hiring more patent examiners has to be a part of the solution. But did you know that Albert Einstein was a patent examiner? How about Thomas Jefferson? Jefferson is largely regarded as the first U.S. patent examiner. Thomas Jefferson (then Secretary of State), along with Secretary of War Henry Knox, and Attorney General Edmund Randolph, made up the first patent examination panel for the United States of America. Einstein, on the other hand, worked for the Swedish Patent Office. It was while working for the Patent Office that Einstein came up with his theory of relativity.

Since 1993, the United States Patent & Trademark Office (USPTO) has pursued an “aggressive campaign” to free itself from oversight by and accountability to the courts. [1] At the same time, the USPTO has been just as aggressive in ignoring the provisions of the Administrative Procedure Act (APA) and related administrative laws that place responsibilities on the USPTO vis-à-vis the public. Fortunately, most administrative laws provide the public a remedy exercisable against agency overreaching: when an agency skirts its obligations, the agency loses its powers of enforcement vis-à-vis the public. Unfortunately, in July 2011 the Federal Circuit in In re Lovin [2] (opinion authored by Judge Dyk) allowed the USPTO to avoid obligations that the USPTO owes the public under the APA, while giving the USPTO judicial deference on issues where the APA grants none. A petition for rehearing of the Lovin case would give the en banc Federal Circuit the opportunity to ”right this wrong,” and to give the public the remedy that Congress intended, and to reinforce that the Administrative Procedure Act gives agencies both rights and obligations.

The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing two public hearings for two studies the agency is required to conduct under the America Invents Act. Specifically, Congress is requiring the USPTO to study and report on the availability of prior user rights in foreign countries as well as options to aid small businesses and independent inventors in securing patent protection for their inventions. The USPTO reports for both studies are due in mid-January 2012.

Dudas started off discussing USPTO funding by explaining that while he was at the agency, while he was preparing to testify before Congress at one particular moment, he discussed with his senior staff the problem. “Why can’t I just tell them that the PTO funding is like a ponzi-scheme,” Dudas recounted. He would go on to say that everyone to a person told him “you can’t say that!” So Dudas settled on saying it this way: “the funding of the USPTO is similar to the way Congress funds Social Security.” That seemed to please his advisors and apparently didn’t ruffle any feathers on Capitol Hill. Of course, those on the Hill probably had no idea what Dudas was saying, after all many leaders (including Senate Majority Leader Harry Reid) are in denial with respect to Social Security and actually claim that there isn’t a crisis and those claiming Social Security is going broke are perpetuating a myth because they don’t like government.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1. Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple. On this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3.

The reality is that science fact and science fiction are dictated based on currently accepted understandings, whether they be true or not. As impossible as something sounds, what we understand as science fact is always bounded by our understanding of our surroundings. As our knowledge expands what was formerly science fact frequently becomes science wrong, sometimes badly wrong. Does that mean that someday perpetual motion will be a reality? Who knows. I am not holding my breath or taking any bets, but there are a lot of highly intelligent people constantly trying to unlock the mysteries of the universe and with so many new discoveries it seems science continues to encroach upon the impossible. Just think about cloaking devices and a transporter a la Star Trek, which are already to some extent realities.

Upon hearing Rader make such a bold statement the first thought that ran through my mind was — Really? Did he just say that? I have heard from others for some time that Rader has been heard to say these or similar things relating to obviousness, but I just discounted them as one would discount the output of a game of telephone. After something gets stated, shared and restated there is typically little of the same message remaining. That had to be why Rader was reported to have said such curious things about obviousness and the impact of KSR. But then I was sitting right there listening to Chief Judge Rader say something that is provably incorrect. I’ll bite. I’ll take that challenge.

If (B) gives a blanket exclusion to subject matter, which cannot be used as prior art after a disclosure by an inventor, that would lead to nearly ridiculous results. Imagine for example that an inventor discloses a specific embodiment of a coffee cup and then subsequently another who did not derive independently comes up with and discloses a coffee cup with a lid. If (B) does more than relate to a personal grace-period the subsequent disclosure could not be used against the first to publish inventor as prior art because it relates to the same “subject matter.” That would mean that the inventor could incorporate the cup and the lid into his/her patent application and obtain claims. You might be tempted to say that is impossible, but if the cup with the lid is not prior art then under what rationale could an examiner issue a good rejection? This would lead to results that turn the patent system upside down, and was clear evidence to me that those arguing that 102(b)(1)(B) excluded out subsequent independently disclosed inventions was fanciful at best.

It is fair to say that enactment of the AIA is not what most stakeholders championed early on. Many small inventors and innovation companies feel that some of the provisions are not in their best interest. IT would have preferred a bill that did more to change how patents are valued and enforced. Nevertheless, to most stakeholder, the final version of the bill is an improvement over previous versions of patent legislation. When patent reform legislation was first introduced in 2005, its primary objective was to reduce the infringement liability of large technology aggregators by significantly limiting equitable and monetary remedies, restrict venue, and make issued patents far easier to invalidate through post-grant review. In addition, earlier versions of the bill would have given the USPTO unprecedented substantive rulemaking authority and increased the cost and burden of filing a patent application. In combination, these measures would have significantly undermined the enforceability and value of patent rights, while increasing the cost, complexity, and uncertainty of obtaining patents. All of these reforms were advanced by a IT interests set on weakening the ability of small innovators to obtain and enforce patents.

There have been a number of inquiries from the public regarding the fees due when payments are made by postal mail just prior to the effective date of the 15 percent surcharge (September 26, 2011). The fee due is the fee in effect on the date the document is timely filed. At this time the USPTO may not offer the micro entity discount (75%) on any fees. As provided for in the Leahy-Smith America Invents Act (Public Law 112-29) these fees will be adjusted under the fee setting authority provided for in Section 10 of the AIA.

It isn’t exactly a newflash to announce that Washington, D.C. is dsyfunctional, anyone paying attention over the past few years has long since come to that conclusion. Thus, it is hardly breaking news to report that Congress is on the verge of passing a Continuing Resolution rather than actually doing their job and passing a budget for fiscal year 2012. Why do today what is required of you to fulfill the responsibilities of your job when you can just kick the can down the road? Of course, by so doing Congress will embark upon a path that will divert some $600 million from the USPTO during FY 2012.