Posts Tagged: "patent prosecution"

An Exclusive Interview with Francis Gurry, WIPO Director General

Yesterday I had the honor of spending 30 minutes interviewing Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). The Director General spoke substantively about issues facing the Patent Offices of the world, as well as some possible solutions. Gurry also discusses harmonization attempts, work-sharing agreements and the crushing worldwide backlog of patent applications that could lead to irrelevance of the system. As you read the interview you will also see that he thinks it is possible that the rest of the world will adopt a US-like grace period.

Patent Strategy: Laying the Foundation for Business Success

Patents provide a competitive advantage, and those sophisticated in business know enough to look for and exploit whatever competitive advantage exists. Patents are the 800 pound gorilla of competitive advantage, but realize if you are going to want and need significant sums of money from investors rarely does a single invention or patent command attention. No one wants to invest significant funds into a company that has a one-and-done approach to innovation. You need to understand the road is long. Take a lesson from Apple, Inc. Innovate and then churn your innovation for all its worth, re-purposing the technology, expanding into products and services, constantly push the envelope and milk the golden goose for all its worth!

The Strange Case of the Vanishing Patent Boutiques

Litigation is where the big firms and larger IP firms make their money, that much is certain. Those firms with litigation practices that also engage in patent prosecution do so typically for the purpose of keeping clients in the firm for all their patent needs. With large fees available for litigators and extreme downward pressure on patent prosecution it is no wonder many boutiques can’t keep up. Litigation attorneys move on to greener pastures leaving patent prosecution specialists scrambling to pay overhead for an office at 100 Extremely Rich Sounding Street in Crazyexpensiveville.

A Conversation with Gary Michelson About Patent Reform

In my conversation with Dr. Michelson he explained to me that while he benefited greatly from the patent system he would have benefited even more if the system worked better. At this point Dr. Michelson “does not have a dog in the fight,” as he explained, because with the exception of a few lingering applications his patent portfolio has been fully acquired and he stands to gain no additional revenues. Nevertheless, Dr. Michelson, the quintessential successful American inventor, would like to see the US patent system improve for the benefit of all independent inventors, the American economy and to promote real job growth. He has some excellent ideas, I agree with his positions on almost every front, and it is with his approval that I put my conversation with him on the record.

How to Effectively But Safely Tell the Story of the Invention

I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made. But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable. Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention.

Facebook Gets US Patent on Social Network News Feeds

Earlier this week, on February 23, 2010, Facebook was granted US Patent No. 7,669,123, which covers a patent on a method for dynamically providing a news feed about a user of a social network. While this may have been new to social networking sites in December 2005 through August 2006, automatically updating news feeds were hardly new even then.

USPTO’s New Examiner Count System Go Into Effect

The new count system seems to place emphasis on complete and thorough initial examination, and even provides incentive for examiners to issue patent applications early in the process. Examiners are also given up to 1 hour of non-examination time to initiate an interview with the applicant or the applicant’s representative, and to write up an interview summary. Given that patent examiners will receive more credit under the new count system for disposals without need for a Final Rejection, it seems reasonable to anticipate that when there is allowable subject matter present in an application at least some examiners will find it in their own best interest to work with an applicant to get a patent issued quickly.

Obviousness Ruling Based on Mischaracterizations of Reference Overturned by CAFC

But what is refreshing and important in the Federal Circuit’s opinion is that mischaracterizations of references relied upon by the patent examiner (or the BPAI) for obviousness rulings are not to be simply glossed over as “harmless error.” Put differently, the Chapman decision gives patent applicant’s a viable legal basis to hold a patent examiner’s (as well as the BPAI’s) “feet to the fire” to challenge an obviousness (or anticipation) rejection based on one or more mischaracterizations of a reference.

Submarine Patents Alive and Well: Tivo Patents DVR Scheduling

Submarine patents are not ever likely going to be the problem that they once were prior to the publication of patent applications at 18 months and prior to the change in patent term. On June 8, 1995 the term for a US patent changed from 17 years from issuance to 20 years from filing. There is still an opportunity to obtain additional patent term, for example where the Patent Office interjects unnecessary delay into the process, but it is unrealistic to think that patents will remain pending unknown for decades, which was frequently possible and how Lemelson masterfully manipulated the system, within the rules of course. But the TiVo patent was pending for a decade, unknown and secret. That should not be able to happen and should justifiably cause an alarm.

Kappos Asks for Patent Bar Input on Reengineering the MPEP

The process that would make the most sense to me would be to have the USPTO create a first draft of MPEP chapters. To the extent there is interest the USPTO could solicit volunteers from the patent community to collaborate with members of the Patent Office responsible for drafting the MPEP. When a suitable draft has been achieved it could be posted for comments and editing.

USPTO Wants YOU for the Patent Examing Corp

The United States Patent and Trademark Office wants YOU, at least if you are  an intellectual property professional willing to apply for a rewarding and challenging position as a US patent examiner.  Yes, the USPTO is once again hiring patent examiners, at least in a targeted way (whatever that means) as part of an initiative to help reduce the application…

Divisional of Divisional Reaches Safe Harbor of 35 U.S.C § 121

Some may recall my “dissertation” on the case of Amgen Inc. v. F. Hoffman-La Roche Ltd. See CAFC: A Divisional By Any Other Name Is Not a Divisional .  In Amgen, the Federal Circuit made it clear that you had better characterize an application as a “divisional” if you wanted the benefit of the “safe harbor” provided by 35 U.S.C…

Offering Help: A Solution for Addressing the Patent Backlog

The patent backlog and all of the associated problems that go along with it, such as the increasing length of time it takes to obtain a patent, is the largest single problem facing the United States Patent and Trademark Office.  In fact, this problem is not unique to the US Patent Office.  Other Patent Offices around the world are also…

USPTO to Rehire Former Patent Examiners to Attack Backlog

Christmas is coming early for inventors, innovative companies, patent attorneys and anyone in the technology/innovation industry that relies upon patent protection. Faced with a growing backlog and long patent pendency periods in a difficult fiscal environment, the United States Patent and Trademark Office (USPTO) is reaching out to former patent examiners, inviting them to return to the agency.  According to…

Patent Office Delay and Inventors Representing Themselves

Earlier today I stumbled across US Patent No. 7,631,368, which is titled Combined concealed carry holster undergarment and outergarment with quick release and quick access mechanisms.  This patent is one that offers a number of lessons, both for inventors and for those who are seeking to reform the US patent process.  The lesson for inventors is a cautionary one; namely…