IP Spotlight

On February 7, 2012, the USPTO released details about a proposed fee increase that would significantly increase the cost of obtaining a patent.  Significant changes include:

• a 47% increase in the basic filing fee (proposed:  $1840, current:  $1250)
• an 84% increase in the excess claims fee (proposed:  $460, current:  $250)
• a 142% increase in the fee for a Notice of Appeal (proposed:  $1500, current:  $620), PLUS a new $2500 Appeal Fee that would apply to all appeals in lieu of the Appeal Brief fee
• maintenance fee increases that range between 26% and 61%
• an 83% increase in the fee for a request for continued examination (proposed: $1700, current:  $930)

The USPTO’s goal is that the new fees will help it reduce patent pendency to an average of 10 months between filing and first action by 2015, and 20 months overall by 2016.

The USPTO plans to hold public hearings on the new fees over the next few months, and then formally propose the new fees in June 2012.

Yes, according to a recent blog post by USPTO Commissioner for Patents Peggy Focarino.  Track I examination is a new program in which the USPTO will move a patent application up in the queue, with allowance or final rejection within 12 months of filing, in exchange for an additional fee of $4,800.

According to the post, between September 23, 2011 and January 3, 2012 the USPTO received nearly 1,700 track 1 petitions.  Of those, nearly 700 have already received a first Office Action, and 37 have been allowed.  The average time between the filing date and first Office Action for a Track I filing is 66.4 days.  According to Patently-O, the first patent granted on a Track I petition was issued to U.S. Patent No. 8,094,942, issued to Google, Inc. based on an application filed September 30, 2011.

The USPTO’s post indicates that the agency does not expect any difference in allowance/denial rates between Track I applications and normal applications.  According to Commissioner Focarino, “our examiners are being given exactly the same training, credits and incentives to accurately examine Track I cases as for all other cases, and no training, credits or incentives are being given to bias examiner decisions in any way.”

On January 6, 2012, the U.S. Patent and Trademark Office published a proposed rule that will change its rules of practice in patent cases to implement the inventor oath and declaration provisions of the America Invents Act.  The proposed rule, which is scheduled to be made final by September 16, 2012, will implement the following changes:

• The assignee will be permitted to sign the inventor oath if the inventor dies or becomes incapacitated.
• If an inventor refuses to sign an oath or cannot be found after diligent effort, the assignee may sign the oath.  (A petition and proof of relevant facts will still be required.)
• When carrying over a power of attorney (more…)

On January 5, 2012, the USPTO proposed two rules that will establish new procedures by which third parties may challenge pending patent applications and issued patents.  The rules implement certain requirements of the America Invents Act and are expected to be made final by September 16, 2012.

Pre-issuance submissions

The first proposal relates to third party submissions in pending patent applications.  Under this proposal, a third party can submit patents, patent applications, and other publications of potential relevance to examination of a patent application for consideration by the USPTO Examiner.  If the request meets certain content requirements and is submitted before the earlier of (i) the date that the USPTO issues a notice of allowance, (ii) six months from USPTO publication of the application, or (iii) the date that the USPTO issues a first action rejecting any claim, then the USPTO will enter it into the application’s file, and the Examiner will consider the submission when reviewing the application. In addition, the request must include a concise description of the asserted relevance of each document that is submitted.

The submitted documents need not be prior art.  However,  if the submitter believes the document to be prior art it is the submitter’s burden to establish the publication date.  Only printed publications may be submitted — the USPTO will not accept internal or non-published documents.

Only third parties who are not associated with filing or prosecution of the application may use this procedure to submit relevant documents to the USPTO.  A fee (currently $180 for each 10 documents submitted) must accompany the filing, although a submitter  may have one “free” filing of three documents or less.  The patent applicant is not required to respond to third party submissions.

Post-grant review

The second proposal  relates to post-grant submissions against patents.  Under this proposal, any person (including the patent owner) can submit prior art patents, patent applications, and other publications that may bear on patentability of any claim of the patent.  In addition to prior art, the submission may include written statements that the patent holder made before a court regarding the scope of any claim of the patent.  The submission must include an explanation of “the pertinency and manner of applying the prior art or written statements” to at least one claim of the patent.  If the submitter is the patent owner, the patent owner also may submit a statement of how the prior art or written statement differs from the claims of the patent.

If the request meets certain content requirements and is submitted before the earlier of (i) the date the USPTO issues a notice of allowance, (ii) six months from USPTO publication of the application, or (iii) the date that the USPTO issues a first action rejecting any claim, then the USPTO will enter it into the application’s file, and the Examiner will consider the submission when reviewing the application. In addition, the request must include a concise description of the asserted relevance of each document that is submitted.

Submissions may be made anonymously. and may be made at any time while the patent is in effect.  If a reexamination proceeding has been initiated, then to avoid overlapping post-grant proceedings the submission will be governed by the rules relating to reexamination.

The USPTO will accept comments on both the pre-issuance submission and post-grant review proposals through March 5, 2012.

This week I received a copy of Kevin Prince’s beautiful new book, The Art of the Patent:  Celebrating over 200 years of patent drafting artistry.  From the complexity of a glass bottle manufacturing machine, to the simplicity of the iPod classic or the Google search page, to the majesty of the Statue of Liberty, patent drawings help describe an invention in a way that words alone cannot accomplish.  Kevin collects the best of these drawings in what may be the first “coffee table” book that will appeal to patent attorneys and artists alike.

As Kevin notes in the book’s introduction:

“Patent drawings” must conform to the legalistic guidelines of the Patent and Trademark Office. . . .  Yet, in many case, the patent illustrator’s sense of artistry jumps out between the rigid requirements of the patent law.  Drawings that go well above and beyond the call of duty have been enshrined in long-expired patents. . . .  This book is a tribute to the draftsmen who . . have spent countless hours drawing (and no doubt re-drawing) figure after figure with what at times can only be described as elegant mastery of the pen (or mouse), and an uncanny ability to bring beauty to a dry field.

The book is unique and fun gift for any patent attorney, agent, draftsperson or inventor.  (Or a gift to yourself, if you fit this description.)
Happy holidays!

In a December 15, 2011 Federal Register notice, the U.S. Patent and Trademark Office announced plans to phase out two programs that allowed for faster examination of certain patent applications. The first program that is ending, the Green Technology Pilot Program, allowed for accelerated review of patent applications covering technology that enhanced environmental quality.  The second program, the Patent Application Backlog Reduction Stimulus Plan (commonly known as “bump and dump”) allowed applicants with multiple pending patent applications to have one of the applications accorded special status in exchange for abandonment of another.

Instead of these programs, to speed up examination the USPTO suggests that applicants use the new Track I Prioritized Examination Program, whose goal is to provide final disposition of an application within 12 months.  Unlike the programs that are ending (which required no fee), Track I requires a special handling fee of $4,800 (which recently increased from the original $4,000).

The USPTO plans to end the Patent Application Backlog Reduction Stimulus Plan on December 31, 2011 or when 10,000 applications receive special status under the plan, whichever is earlier.  The USPTO plans to end the Green Technology Pilot Program on March 31, 2012 or when 500 additional applications receive special status under the program, whichever is earlier.

When business managers, engineers, or non-patent attorneys are called upon to guide a corporate patent strategy, they often face a steep learning curve.  The differences that separate a great patent from a mediocre (or worse) one can be very subtle, but the financial implications can be huge.

The new book Great Patents:  Advanced Strategies for Innovative Growth Companies by David B. Orange tackles this problem head on.  With sections focusing on “Strategies” and “Valuation,” Great Patents uses clear and concise explanations to introduce the reader to important patent terminology, explain why patent claims  are so important, and help companies decide how to most efficiently dedicate resources to obtaining new patents.

The book includes several chapters that address industry-specific topics, such as

• academic authorship vs. patent protection;
• patent strategies for health technology companies;
• participation in standards setting organizations; and
• intellectual property ownership in government-funded projects.

The authors sent me a complimentary copy, and I am happy to recommend it to new companies and existing businesses alike.  The book is a useful tool for business managers who need to understand the patent process and oversee a patent strategy that fits into the company’s overall business strategy.

On November 23, 2011, the U.S. Patent and Trademark Office published a proposed rule with new requirements and incentives for the prompt recording of patent assignments. Under current laws and regulations, owners who fail to record patent assignments within three months of filing risk losing their rights to a subsequent purchaser.  (35 U.S.C. 261).  In addition, only the owner of record (or, in some situations, its exclusive licensee) can file suit to enforce the patent.  However, there is no absolute requirement that assignments be recorded.

The USPTO’s new rule is intended to address deficiencies in this system.  According to the new rule: (more…)