In an era where bitter partisan divide can often inhibit action in Washington, one need look no further than the United States patent system to observe how government can work to provide real and meaningful results for Americans. Since the enactment of the Leahy-Smith America Invents Act—bipartisan legislation signed into law by President Obama last September—USPTO in cooperation with our stakeholder community has been launching transformative initiatives to improve the way Americans innovate, and the way the USPTO handles those innovations. And before the ink of the President's signature had even dried, we hit the ground running in rebuilding our intellectual property system from the ground up.
 
We have already implemented eight provisions of this huge federal legislation—all on time—and we are in the process of getting draft rules out for ten more right now. We're building out a dynamic IT infrastructure and we've been hiring more examiners to aggressively tackle our patent backlog. We've submitted two studies to Congress, analyzing rights available to manufacturers (prior user rights) and international protections for small businesses. And just yesterday, I joined Chief Judge Randall Rader of the Court of Appeals for the Federal Circuit and Chief Judge James Smith of the Board of Patent Appeals and Interferences to welcome 14 new administrative jurists to the Board. These new judges will help the Office aggressively tackle the backlog of appeals waiting at our Board.

More generally, our Board will be instrumental in shaping a new in-house review process for challenging granted patents—a process that is much faster and less expensive than litigation. For both our post-grant review process and our inter partes review process, we’re building state of the art procedures that will balance the interests of third party challengers and patent owners—all within a 12-month time frame.

We have also launched an examination acceleration program (Track I) that is allowing patent applications to be reviewed in 12 months, and offers small businesses a discount on this service. We have already started putting out office actions and even issuing patents under Track I, which is enabling new technologies, new industries and new markets to blossom quicker than ever before. And we’ve pushed our unexamined patent application backlog down to about 660,000.

Our Trademarks team continues to perform at world-best level, handling record numbers of new applications last year, launching a 21^st century total quality program that would keep pace with any private sector equivalent, and serving as voice and conduit for US brand-owners small and large, west and east, south and north.

This is action. These are results. The growing, dedicated, professional staff of the USPTO is unquestionably productive and is meeting the challenges before us. Yes, there is much left to do and many challenges ahead. But I simply can’t stress enough that the USPTO is on the move. Even in an era of partisan rifts, government can and is working to advance American industry and American ingenuity.

On January 25, 2012, the USPTO published proposed rules to implement the supplemental examination provisions of the America Invents Act (“AIA”). This procedure is intended to be utilized by patent owners to “clean up” patents of iffy validity before, say, asserting them in litigation or selling them. 77 Fed. Reg. 3666. This provision has been widely characterized as a way to purge inequitable conduct – or even an innocent failure to bring forth relevant information – that may have occurred during prosecution, by setting the record straight ex parte. If the petition for supplemental examination is accepted by the PTO as raising a substantial new question of patentability, the PTO will go on to order ex parte reexamination, which may, or may not result in the cancellation of claims. Alternatively, the PTO can refuse to order reexamination on the basis of the submitted information, and a certificate to that effect is attached to the patent. This sounds pretty straightforward but, or course, it is anything but.

To begin with, the fee for simply processing and treating a request for supplemental examination (“SA”) will be $5180. At the same time, the owner must pay a fee of $16,120 for an ex parte reexamination proceeding that may not occur. If reexamination is not ordered, the owner gets this fee refunded. There is no comment regarding any reduction for small or micro entities that I could find in my first read-through.

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The Chartered Institute of Patent Attorneys recently published the 7^th edition of the CIPA “Guide to the Patent Acts”. This treatise is essential for practitioners seeking to track the correspondence between central themes of US and UK/EP patent law, such as patentable subject matter, utility (as we would call it),  enablement and the written description requirement, as well as to obtain a review of more specialized topics such as supplemental protection certificates and jurisdictional issues.

For more information, click here.

Guest blog by Commissioner for Trademarks Debbie Cohn
 
There’s no question that electronic filing has changed the nature of trademarks, and a look at our performance dashboard for the first quarter of fiscal year 2012 really shows some remarkable results. Trademark pendency is at historically low levels and much of the reason for this is because some 75% of all trademark applications are filed and processed electronically. We’re particularly proud to report that disposal pendency – the time from when an application is filed until a trademark is registered or abandoned – is the lowest it’s ever been at 10.2 months. In fact, it’s been under 11 months for the past seven quarters in a row.

Likewise, pendency for applications involved in inter partes proceedings or appeals have also been reduced to an all-time low of 12.1 months. All of this while the number of application filings have increased 7.8% over the same period last year. First action pendency, which measures the time it takes for a new application to receive an initial response from our office was at 3.2 months at the end of the first quarter.

Aside from speed, trademark quality is another critical measure we consistently seek to improve. When you study the dashboard, you’ll see our quality results are mixed. Our first and final action quality are slightly less than target, although a more rigorous measure that defines the “excellence” of a first office action is above target. This new measure was introduced last year to set a higher standard in evaluating an examiner’s writing, evidence, and search strategy and the results exceed our target by 11 percent.

Our evaluation of quality is an ongoing process, with final results measured at the end of the fiscal year. Results are used for improving and developing policy and training guides and manuals to reinforce and ensure the quality of the trademark register. We welcome any feedback you have on how we can improve the presentation or information presented. We have a dedicated mailbox for your comments and we look forward to hearing from you.

With a tidal wave of proposed regulations implementing the AIA poised to hit IP practitioners – ready or not – it seemed worthwhile to point out a new “Blawg” recently launched to help keep our heads above the murky legal waters to come. My firm, Schwegman Lundberg & Woessner, in cooperation with the IP group of the general practice firm Leonard Street and Deinhard, has opened a website, Patent RE-forum – Perspectives on the America Invents Act at http://www.americainventsact.com/. This blog blends the patent prosecution expertise of SLW with the experience of the IP litigation team at Leonard Street, and has already posted a series of short essays on most of the sections of the AIA: “Breaking Down the AIA.” Members of the William Mitchell College of Law IP Institute have also been invited to contribute posts.

Since Patents4Life does not intend to follow the new regulations closely, except as they will affect life sciences/biotech practice, the site should be a good supplement to my musings. For example, on January 6, 2012, the USPTO published 21 pages of proposed regulations  in 77 Fed. Reg. at 982  “simply” to implement the changed requirements for an inventor’s oath and declaration in various applications. There is an entire column on the changes in the oath and declaration requirements in a continuing reissue application (!)  I tried to skim the changes but quickly got bogged down. The most useful nugget I unearthed is that the assignee can execute the oath and declaration on behalf of a deceased inventor. Emotional issues aside, this can be a big help to facilitate continued prosecution in situations in which the inventor’s estate has been closed and the personal representative does not want to reopen it in order to sign for the inventor. Oh, and after September 16, 2012, the assignee(s) can sign the reissue oath and declaration for a broadening reissue application IF the assignee(s) applied for the original patent. Don’t get me started!

Finally, I am  pleased to note that both Patents4Life and Patent RE-forum were recently picked as members of the top 25 Minnesota Blawgs in a survey sponsored by the Minnesota State Bar Association. Not a bad 3^rd birthday present for Patents4Life!

There seems to be some confusion on this issue, so let me make it clear. The Stop Online Piracy Act (SOPA) and the Protect Intellectual Property Act (PIPA) are bad. They are bad for you, bad for me, bad for anyone with a blog, a Facebook profile, or any other type of website. SOPA and PIPA are bad for anyone who uses the Internet.

Isn’t Stopping Infringers a Good Thing?
Yes, and ever since the Copyright Act of 1790, United States law has provided copyright owners with the tools they need to stop infringers. Not only that, but the entertainment industry has gotten many additional laws passed. These new laws not only increased the length of copyright protection from 28 years to 150 years or more, but addressed everything from downloading, to file sharing, to circumventing digital rights management (DRM) software. Needless to say, even without SOPA and PIPA, the entertainment industry has more than enough recent laws at its disposal to stop copyright infringers.

So What Are SOPA and PIPA All About?
What Congress and the entertainment industry want you to believe is that SOPA and PIPA are about stopping online piracy. They argue that it is still too difficult to target infringers who have moved their operations overseas. If passed, SOPA would allow the U.S. Attorney General to target the companies providing Internet service to alleged infringers. It would also force search engines and websites to remove links to allegedly infringing websites and allow seizure of advertising and other revenue coming from the United States. The reality is that SOPA would not work. It would do nothing to actually prevent people from accessing the alleged infringing overseas websites. Even if the domain name was filtered, people could just type in the Internet Protocol (IP) Address directly and access the website. Although SOPA will not stop people from accessing overseas websites, SOPA will stifle innovation and generate thousands of new lawsuits. SOPA will take money taxpayers and small companies are currently spending on innovation and redirect that money into the pockets of attorneys, hired by our government and the entertainment industries to stifle that innovation.

Why Have I Not Heard of This?
You might think that a bill that threatens to affect what you do every day (assuming you use the Internet every day) and has nearly 1,000 registered lobbyists working on it, would make the news. Unfortunately, most major news providers, including Fox News and NBC-Universal, are strong supporters of SOPA, and have chosen to keep both SOPA and PIPA out of the limelight while Congress attempts to pass the bills into federal law.

Why Is Congress Supporting SOPA/PIPA?
Individual members of Congress will give you different reasons why they are supporting this innovation-killing legislation. There is no denying, however, that the entertainment industry has spent millions of dollars pushing SOPA/PIPA. Looking at just two of the bills’ sponsors, Lamar Smith (R-TX) and Patrick Leahy (D-VT), they have collectively received nearly two million dollars in campaign contributions from the TV/Movies/Music industry.

What Are the Dangers of SOPA/PIPA?
The danger is that big companies will use SOPA/PIPA to put small companies and websites out of business. Less competition would be great news to large media concerns that have been steadily losing market share to the Internet. While a bigger, broader and more diversified Internet is good for you and me, it is bad for large entertainment companies that refuse to innovate as fast as their smaller competitors.

SOPA/PIPA would also make it easier for large entertainment companies to use automated programs to search the Internet and send erroneous copyright take-down notices. According to Erik Martin, the general manger of the popular Reddit website, “human beings aren’t even looking at this – the potential for abuse is huge.” SOPA/PIPA threatens to place law-abiding small companies in the position of having to redirect innovation resources to pay an attorney to respond to a baseless infringement take-down notice.

Another danger of SOPA/PIPA goes to the heart of Internet security. The Internet is based upon a system of numerical addresses, called Internet Protocol (IP) addresses. The Internet’s Domain Name System (DNS) takes a domain name, like Google, and translates it into the associated website’s unique IP address, such as 209.85.145.105. While typing either Google.com or 209.85.145.105 into your address bar will get you to the same place, domain names, such as Google are much easier to remember. By allowing the government and the entertainment industry to filter the Internet, SOPA/PIPA risks opening up the secure DNS system, as well as even more secure systems, such as DNSSEC, to exploitation by cybercriminals. Not only that, but the SOPA/PIPA domain name blocking provisions will do little to cripple offshore infringing websites. Simply typing in the IP address, instead of the domain name, into your address bar makes the SOPA/PIPA domain name blocking provisions worthless.

What Can I Do?
Contact your congressional representatives today. There are already many federal laws in place to prevent online infringement. While SOPA and PIPA will do little to curb future online infringement, they will, if passed into law, stifle innovation, censor the Internet, and make the Internet less secure. On January 18, 2012, websites like Google, Reddit and Wikipedia gave you a small taste of what SOPA and PIPA are all about. If you prefer that SOPA and PIPA not censor thousands and thousands more websites, contact your Representatives and tell them to vote “No” on SOPA, and contact your Senators and tell them to vote “No” on final passage of PIPA. Tell them you will remember their votes on Election Day.

Brett Trout

In recent years, the Patent Prosecution Highway (PPH) has proven to be one of the most significant worksharing initiatives for the USPTO, and a successful vehicle enabling faster and less expensive multi-country patent prosecution for the IP community. It began as a very small pilot project in 2006 between the USPTO and the Japan Patent Office and grew modestly over the next three years, as international filers became more comfortable with this new process for quickly obtaining patent rights across the globe. As the project has grown, getting the word out about the substantial benefits of PPH has been one of our highest priorities.

As of the end of 2011, more than 9,000 applications at the USPTO have been processed within the PPH program. This represents a 100%+ increase in usage, two years running. Users benefit not only by fast portfolio-building but also by enjoying the collective savings of millions of dollars in the process. A recent study by our user community demonstrated that—in a single application—anywhere from $2,000 to $13,000 in reduced prosecution costs can be realized through PPH, depending on the complexity of the invention. For international filers of all sizes, that level of savings adds up quickly.

And even while the PPH has grown tremendously in usage, we’ve continued the mission, working with our partner offices—which now total 21—to further improve the program. One of the first major steps taken was expansion of the PPH into the PCT system. This has opened up the advantages of PPH to an entire sector of international filers, and also paved the way for making the PCT system the worksharing model it was originally intended to be.

Recently, we reached agreement with several other large offices to streamline the PPH entry process and open the system to yet many more filers, mainly in Europe. In July we began testing the elimination of the office-of-first-filing to office-of-second-filing directional requirement of the PPH model. Under this more flexible on-ramp approach, PPH may be entered on the basis of positive outcomes from an office which first indicates allowable subject matter, whether or not that office happened to be the office of first filing. This improvement is known as the “Mottainai” PPH model. Mottainai is a Japanese term meaning that something useful should not be left unused. For our European constituents, this means that work done by the EPO (as an office of second filing) will be available as a basis for PPH entry both here and in Japan.

At the end of January, we will begin what we call PPH 2.0, which reduces the paperwork requirements by cutting documentation, allowing for use of machine translations for some purposes, and allowing for self-certification of claims correspondence. PPH2.0 will save participants even more money, while further reducing the processing time here at USPTO. Details on the Mottainai and PPH 2.0 pilots can be found on our website.

Finally, we are working with all PPH offices to realize a common set of fundamental requirements—“one PPH”—intended to vastly simplify the process for all users by creating a single, universal set of rules for the program globally.

The Patent Prosecution Highway is a growing success story—but only for those who are using it. Your competitors are taking advantage of the major cost savings and many other plusses of the program. So much so, that we are expecting another doubling of the program for 2012. If you aren’t yet using PPH, we invite you to take a fresh look at how it can be a positive contributor in both speed and cost to your international patent protection strategy.

Attached you will find the newsletter from DHS Patentanwalts GmbH, provided to us by Dr. Stefan Danner.

In the last few months, the European Court of Justice (ECJ) has handed down several decisions relating to the grant and validity of supplementary protection certificates (SPCs; i.e. patent term extensions). Thereof, the following rulings are generally considered to have significant impact on IP strategies in the pharmaceutical industry.

12 11 EJC rulings on SPCs

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Following passage of the Leahy-Smith America Invents Act in September 2011, the United States Patent and Trademark Office (USPTO) began accepting requests for prioritized examination of patent applications through the Track I Prioritized Patent Examination Program. Simply put, Track I allows inventors and businesses, for a fee, to have their patents processed to completion in 12 months. No examination support documents or other admissions are required.

The required petition is very simple, and to date, 98.9% of the 1,694 Track I petitions submitted to the USPTO were approved. On average it is taking 40.8 days to move Track I cases from receipt of petition to completion of pre-examination processing (which includes deciding on the petition). The longest it has taken is 95 days. While on average only 10 of those 40.8 days are consumed in handling the Track I petitions, and while 40.8 days in pre-exam for Track I compares favorably with our normal pre-exam processing time of 69.6 days, we are not satisfied and are working to cut this time further.

Initial substantive results for Track I have been quite positive. Of the 1,218 Track I petitions approved by the USPTO so far, 648 have already received a first office action, and another 34 will be mailed within days. On average we are getting the first action out in Track I cases just 30.7 days after approval of the petition – for a total elapsed period to first action of 66.4 days after filing of the request-petition. (The reason 66.4 does not correspond precisely to 40.8 plus 30.7 is because 40.8 is the average time from filing to granting the request for all applications, including those which have not yet received a first action.) And the longest it has taken us to get a first action out is 70 days from grant of the petition. So we are easily beating our target to get a first action out within an average of three months from petition approval. In fact, we have beaten it in every case so far.

More importantly, 23 allowances have already been mailed on Track I applications, the fastest of which was mailed just 37 days after the application was filed. And seven more allowances are currently in our pipeline, scheduled to be mailed within days. Of the Track I cases allowed so far, the average time to allowance is 39.2 days from petition approval. As for rejections, so far there have been three final rejections issued on Track I applications. The average time to final rejection has been 34.3 days, and the longest time to final was 50 days, both measured from approval of the Track I petition. It is worth noting that the first Track I application is due to issue on Jan. 10, 2012. This application was filed Sept. 30, 2011.

For those applicants or practitioners concerned about whether Track I applications will be treated differently from others in terms of grant/denial rate, 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. And as for the data, given the statistics provided above, so far there is no basis to believe there is any difference in result for Track I versus non-Track I processing, other than the significantly faster responsiveness.

So we feel it is fair to say that while we are still in the early days of examining Track I applications, and are continuously working to address bottlenecks where they exist, we are proceeding apace with super-fast processing through the first three months of the program.

For more information about Track I, or if there is any other information you would like the USPTO to report on Track I, please contact Eugenia A. Jones in the USPTO Office of Patent Legal Administration at (571) 272-7727.

As December draws to a close and we reflect on all that we’ve accomplished, it’s difficult to imagine a more historic year for the United States Patent and Trademark Office than 2011. The dedication and hard work of our talented public servants has enabled the Agency to make significant strides in the quality, efficiency, and certainty of patents and trademarks granted to technological enterprises. And our collaboration with the small business community has allowed us to level the competitive playing field by offering new tools and resources for independent inventors to acquire intellectual property rights with more ease. So with the holiday season upon us, I want to take a moment to recount what our extended USPTO family has helped accomplish for American inventors and American innovation.

For the first time in several years, the Patent and Trademark Office was able to reduce the backlog of unexamined patent applications to below 665,000, a remarkable achievement considering the 5 percent increase in patent applications filings in FY2011. Through improved practices and processes, we are on track to push the backlog down even further, helping deliver new technologies to the marketplace faster, which in turn spurs job creation and drives economic growth for our country.

Moreover, under our Green Technology Pilot Program, the USPTO recently issued the program’s 500th patent for a wind turbine rotor blade—yet another important step forward in advancing the Administration’s goal of doubling our nation’s renewable energy capacity. Through our commitment to green technologies, environmental quality and renewable energy, we are able to spur innovation and help create new jobs that provide our world with sustainable alternatives to harmful energy practices.

We’ve even harnessed the power of the Internet and the global technology community to strengthen the patent examination process by expanding our Peer-to-Patent (P2P) pilot program. This initiative improves the quality of the American IP process by allowing outside subject matter experts to contribute prior art—expanding the scope of our examination process. In an era of Wikipedia and crowd-sourcing, not only does this model allow the USPTO to stand ahead of the patenting curve by including inventive ways to improve patent quality, but it also increases our overall transparency—a goal vital to the Administration’s Open Government initiative.

It’s also why we’re proud of tools like our Dashboard and our newly revamped website. Such features give visitors real access to tools for navigating the IP system, and real insight into our performance, whether it’s the state of our backlog, inventory positions, or pendency. Ultimately, this doesn’t just show the public where we stand, it also motivates us to take an honest look at how differing processes are faring in terms of efficacy and efficiency—and improve upon them. Measures like the Dashboard and P2P help make our government more transparent and accountable to the American people.

And in Trademarks, for the fifth consecutive year, our outstanding Trademark Organization exceeded its pendency targets for first action and final disposition. Notably, the new “Excellent Office Action” quality measure—which indicates comprehensive quality of the First Office Action search strategy, evidence, writing and decision making—came in at 23.6 percent, handily exceeding the goal of 15 percent. In addition, Trademarks continued to meet and exceed its pendency goals and achieved an increase in the use of electronic filing and processing.

I am also very proud of the teamwork behind the highly successful 2011 National Trademark Expo, which attracted more than 15,000 people—our largest attendance to date—and featured more than 27 exhibitors, a 50 percent increase from previous years. Events like this help educate the public about the importance of IP and its ubiquitous role in our society.

In addition to these accomplishments, this year also marked the historic passage of the America Invents Act. This sweeping legislation, signed into law by President Obama in September, equips the USPTO with the resources necessary to operate an efficient IP system that processes patent applications and issues high-quality patents quickly. By transitioning to a simpler, more objective, and more inventor-friendly system of issuing patents, the new law helps ensure that independent inventors and small entities have greater clarity and certainty over their property rights and will be able to navigate the patent system on a more equitable footing with large enterprises.

The AIA also allows the USPTO to implement a fast-track examination option under which the patent examination process will be completed within 12 months. Getting a key patent can be critical to an entrepreneur hoping to raise capital and grow their business, with 76 percent of startups in the US reporting that venture capital investors consider patents when they make funding decisions. So with over 2,000 applications already submitted under the new acceleration program, many hundreds of office actions mailed and over 20 notices of allowance, businesses of all sizes are already leveraging the new tool to develop, grow and market their products and services with unprecedented swiftness, under the AIA.

For the first time, the USPTO has the ability to recover the actual costs of the services it provides, and a reserve fund, solely for the Agency’s use, to access all of those fees. These provisions have allowed us to hire and train new personnel, educate examiners and the public about changes to the USPTO review process, aggressively modernize our IT infrastructure, expedite application processing and issue higher-quality patents—all without adding a dime to the national deficit.

The bi-partisan passage of the Leahy-Smith American Invents Act and its tangible impact on the way we do business shows that government can work, fostering innovation, investment and job creation for the benefit of all. It has also led to strengthened work-sharing programs with other patent agencies overseas through the Patent Prosecution Highway (PPH), which allows each office to benefit from work previously done by others, reducing examination workload and improving patent quality. The expedited examination in each office also allows applicants to obtain corresponding patents faster and more efficiently in each country. 

In the last few weeks alone we’ve announced a number of PPH programs with our international partners, including a landmark work-sharing agreement with China’s State Intellectual Property Office (SIPO) under the Paris Convention (“Paris Route”) and the Patent Cooperation Treaty (PCT). The agreement comes at a very opportune time as China and the United States together make up a significant global market share for patent stakeholders.

For a more exhaustive look at these and other accomplishments, I encourage you to take the time to read our Performance and Accountability Report for 2011.

While all of these efforts point to our country’s commitment to innovation, perhaps no one event of the year tells that story better than the USPTO’s issuance of Patent No. 8,000,000—a sight restoration tool that gives the blind greater independence in their daily lives. It took 75 years to get from patent No. 1 to patent 1 million, yet just over five years to go from patent 7 million to 8 million. So beyond aiding the blind, this remarkable milestone is a testament to the enduring American spirit of innovation—a spirit that continues to unleash new breakthroughs, new markets and new economic opportunities.

That’s why we remain committed to building the world’s strongest Patent and Trademark Office, and that’s why we’re excited about some of the new challenges we face in the year ahead. For the first time in the history of the Agency, the USPTO will be opening a satellite office outside of the nation’s capital. The Elijah J. McCoy U.S. Patent and Trademark Office in Detroit will provide a significant boost to that city’s innovation economy with more than 100 technologically-focused, secure jobs. And more satellite offices will soon follow, in other cities throughout the nation. The goals of this ambitious expansion are to improve the hiring, recruitment and retention of top-quality Patent Examiners, to recruit directly in other geographic areas in the U.S. where engineering talent exists, and to increase our interaction with the IP community. 

While continuing to improve the diversity and talent of our workforce, we are also drafting a “Green Paper” on copyright policy in the digital era, in order to ensure that the 21st century best balances strong IP protections with the free flow of information over the Internet. Additionally, in 2012 we’ll draft a broader-based “National IP Strategy” to outline this Administration’s key IP priorities, our plan to improve patent protection for small businesses at home, and our efforts to increase our engagement with China on issues of IP enforcement.

Finally, after soliciting public comment on the America Invents Act and seeking input from a variety of stakeholders, we will complete the rulemaking to establish a new post-grant review process that is faster and significantly cheaper than costly and prolonged litigation—resolving questions about patent rights more efficiently. Unlike the re-examination process available today, the new post-grant review will allow issues of “subject matter” to be looked at and revamp the existing inter partes review system to adjudicate claims within 12 months; earlier resolution of disputes will weed out poor-quality patents sooner and add greater certainty to the US patent system.   

For all that we’ve accomplished and the great things yet to come, the credit is due to the talent, dedication, and innovative spirit of USPTO employees who are working hard every day to produce positive results for the American people and our economy. I couldn’t be more proud to be part of such an outstanding team of professionals, and I truly look forward to another historic year with the world’s first and only 21st Century Patent and Trademark Office.

Happy Holidays!

Guest blog by USPTO Commissioner for Patents Bob Stoll 

Earlier this month, with a mixture of excitement and sadness, I submitted my letter of resignation as Commissioner for Patents, effective Dec. 31. I can say without reservation that it was an honor to serve as Commissioner for the past two years and at the USPTO for the bulk of my career. During my tenure leading the Patents organization we achieved some lofty goals, including the reduction of our patent backlog to less than 670,000, in spite of a five percent increase in filings, and we are on a trajectory to eliminate unacceptable backlogs in the future.

But the achievement that cheers me the most is the major culture shift we nurtured in the USPTO toward a more collaborative environment—supervisors mentoring examiners, examiners helping applicants, and the technical support folks helping move applications through the system. Through training, educating, establishing joint work efforts, and undertaking listening campaigns we have created a truly 21st-century agency that is lauded for its service and highly praised by applicants, bloggers, unions and the public at large. The USPTO is now regarded as a top employer, listed 19th in the annual ranking of Best Places to Work in the Federal Government.

The bi-partisan passage of the America Invents Act was a seminal event in patent history, the culmination of many years of discussion within the diverse patent community. Together we created a patent system that provides inventors with more certainty that they will reap the benefits of their labors while at the same time providing more information and products to the citizens of the world. This new patent framework will aid in the creation of new jobs and the recovery of our economy, and I am very proud to have been a part of its enactment and implementation.

I want to acknowledge the contributions of my mentor, boss and friend, Director Kappos, to my success as Commissioner for Patents. His leadership and vision are unparalleled in government service. He encourages thoughtful risk-taking and creative solutions to cure the ills of the agency. I will truly miss the almost hourly discussions, including weekends and holidays, about ways to improve the USPTO.

As I move on to other opportunities, I will also miss the rest of my friends at the USPTO and Department of Commerce, but I will still be a strong proponent of the great work being done here and a vocal participant in the patent dialogue as we continue to improve this system for the benefit of all.

Good luck to you all, and thank you for your great work and friendship.

The Association for Molecular Pathology (AMP) has petitioned the Supreme Court to review the Fed. Cir.’s opinion of July 29th, that isolated BRCA DNA sequences are patentable subject matter. Its brief (a copy available at the end of this post) contains little that is new in the way of argumentation, and relies heavily on the “rule” it found in Chakrabarty that a composition of matter must possess markedly new characteristics upon isolation, as compared to its naturally-occurring state, in order to be patent eligible.

But as the year closes, let’s take a minute to mourn what was lost in July. As I noted in my July 31st post on the decision, “The one hundred plus pages of opinion spent only about five pages on the ‘diagnostic’ method claims….Judge Lourie took care to distinguish the transformative elements of the claims at issue in the Prometheus decision from the minimalist Myriad method claims.” In fact, Judge Lourie found that the method claims which only involve “comparing” and “analyzing” DNA sequences fail the M&T test and are no more than abstract ideas. However, in re-reading the opinion, I was surprised to note that at least one “diagnostic method” claim was also found patent-ineligible. Claim 2 of the ‘857 patent reads:

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On December 7th at 10:05 a.m., the Supreme Court heard oral arguments (transcript at end of this post) in the “Prometheus case,” presented by Stephen M. Shapiro of Meyer Brown (Mayo) and Richard P. Bess of Latham & Watkins. Solicitor General Verrilli also argued.  In earlier posts on this appeal, e.g., on November 7th, I noted that Mayo’s brief de facto asks the Court to follow the “LabCorp dissent” (548 U.S. 132, 136). In this dissent from a dismissal of cert. as improvidently granted, Justice Breyer, joined by Souter and Stevens, urged the Court to consider that all simple diagnostic tests that correlate a level of a chemical marker (like homocysteine) to a pathology (like a vitamin deficiency) are no more than impermissible attempts to patent natural phenomena: “[T]he process is no more than an instruction to read some numbers in light of medical knowledge.”

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I have some good news to share about our efforts to improve the retention of patent examiners past their probationary period. New employees seem to be most vulnerable to attrition during their first three years with the USPTO. So a little over a year ago, we established the New Examiner Mentoring Program pilot, designed to help new employees transition into the PTO and even the Washington, D.C. area if they were moving to the community as new residents. Fifty of the examiners who joined us on either August 30 or September 27 last year requested a mentor. Most mentors were selected from the agency’s network of 11 affinity groups.

Throughout the probationary period for these new employees, affinity groups held structured enrichment sessions on soft topics – things of interest in D.C., transitioning to the technology center, etc. In the end, attrition of examiners with mentors was 4% (2 out of 50), compared to 8.4% (7 out of 83) for examiners without mentors. The program sustained itself without use of nonproduction time.

These results are leading us to expand the New Examiner Mentoring Program pilot to 200 new examiners in FY 2012, partnering with Patent and Trademark Office Society, and acquiring mentor-matching software. When we look at the benefits associated with retaining examiners who are costly to recruit and on-board, we are quite optimistic about expanding this pilot project.

BIO recently sent Director Kappos 13 pages of comments on the PTO’s proposed revisions to 37 C.F.R. §1.56(b). (A copy of the comments is available at the end of this post.) BIO clearly is struggling to reconcile the differing views  of its members, and mostly succeeds. The comments give a good background on the development of the PTO’s duty of disclosure and the role of the judiciary in developing the inequitable conduct defense:

“Paradoxically, the development of the [IC] doctrine was driven, at least initially, by the well-intentioned belief that the judicial enforcement of applicant disclosure obligations in private actions to which the USPTO is not a party would nevertheless help the USPTO in getting its job done.”

This has obviously not occurred, and the comments note that in Therasense, the Fed. Cir. “declined to adopt the USPTO’s  definition of materiality as the judicial standard, recognizing that its prior efforts to enforce the USPTO’s materiality standards had actually contributed to the problems that led the court to take up this case in the first place.”

Despite this inherent tension, the comments go on to conclude:

“The USPTO proposes a literal importation of the judicial materiality standard into its Rule 56…There is good reason to believe, however, that the Therasense standard, in the course of judicial interpretation, will be subject to drift in the courts over time….thereby inviting creep and uncertainty in the operation of Rule 56….In short, most BIO members do not agree that administration of a judicial standard that is sure to evolve – and likely to erode – over time is the approach that will most benefit the USPTO and the applicant community.”

Responding to member input that there are few types of prior art that are not readily available to Examiners, and that the AIA pre- and post-issuance procedures will provide even more relevant information to Examiners, the comments get to the heart of the question and put a stake through it:

“The USPTO has not provided a clear explanation of why it continues to need Rule 56. If the  PTO wants only the Therasense standard ["hard" but-for materiality and specific intent to deceive], then there would seem to be no need for the rule – it is already the law. If the intention is to prevent fraud, lying, falsification, perjury and the like, federal statutes such as Section 1001  of Title 18 of the U.S. Code provide the applicable standard and the appropriate reach. The USPTO should affirm that it seeks nothing more.” 

Not just pretty words!

BIO Comments

Find below biotech IP newsletters recently provided by Dr. Stefan Danner.

• SPCs For Combination Products – Opinion Of The Advocate General

• EPO Ruling On The Patentability Of Medical Treatments By Therapy

Guest blog by Chief Administrative Patent Judge James Donald Smith

As the Chief Judge of the Board of Patent Appeals and Interferences, I am excited to be working with Director Kappos and Deputy Director Rea to advance their goals of being more responsive to the Office’s stakeholders and to improve the appeal process. In the few months that I have been at the Board, I have gained much more insight on the challenges that face the Board. I look forward to working with our stakeholders and the dedicated, hard-working professionals at the Board in addressing these challenges.

I am pleased to announce that, in an effort to further simplify and streamline the appeals process, the USPTO has published a notice of final rulemaking that makes changes to the rules currently governing ex parte appeals. These changes were prompted by comments that we received at the public roundtable of January 2010 and in response to the advance notice of December 2009 and the notice of proposed rulemaking of November 2010.

In short, the notice of final rulemaking:

• Withdraws the indefinitely-delayed 2008 Final Rule. The current rulemaking effort takes into consideration the public’s comments and concerns regarding the 2008 Final Rule.
• Eliminates a number of briefing requirements that ask for information that is readily available in the file history (e.g., statements of the status of claims, status of amendments, and the grounds of rejection to be reviewed on appeal; the evidence appendix; and the related proceedings appendix).
• No longer requires examiners to “acknowledge” receipt of reply briefs before jurisdiction passes to the Board, thus giving the Board jurisdiction immediately upon filing of the reply brief or upon the expiration of the time to do so.
• Provides that the Board will presume that all claims under rejection are on appeal unless the applicant cancels the claims by amendment, thereby eliminating the unintended cancellation of claims by the examiner.
• Creates a specified procedure for seeking review of an undesignated new ground of rejection in an examiner’s answer, which will toll the time for filing a reply brief and thereby eliminate the need to seek an extension for the reply brief.
• Clarifies that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection (the notice also includes a useful survey of case law to help in the determination as to what constitutes a new ground of rejection).

These are just some of the changes in the notice which we think will improve appellate practice. Thank you for the constructive comments and for your continuing desire to improve the Board’s processes.

Course Announcement:

Intensive Patent Law Training Seminar
February 22-24, 2012
New York City

The Chisum Patent Academy is pleased to accept registrations for our next seminar, to be held on February 22-24, 2012 in New York City.  Our venue is the American Elm conference room (Suite 503) of the Helmsley Park Lane Hotel, 36 Central Park South, New York, NY.

 The three-day seminar will focus on recent and important legislative and case law developments in U.S. patent law, including the American Invents Act of 2011, post-KSR nonobviousness decisions, Therasense and the future of inequitable conduct, and the Federal Circuit’s ongoing schism over patent claim construction.  Eighteen hours of CLE credit (including one hour of ethics credit) have been applied for.  The registration fee is $2,750 per person.

 A maximum of ten registrations will be accepted for this uniquely interactive round-table seminar.  All sessions are co-taught by patent law authors and educators Donald Chisum and Janice Mueller.  To register, please visit our website at www.chisumpatentacademy.com or email us at info@chisum.com.

I spent a day or two looking back over the breaking IP news that resulted in posts on Patents4Life. I wrote most of them, but want to take a pause to thank regular contributors Paul Cole, Ron Schutz and Stefan Danner for their help. Patents4Life was originally intended to be a “blawg” focused on IP developments affecting the Life Sciences and, as 2011 comes to a close, I have put together a “top ten” list of stories to which attention had to be paid – by all of us in most cases – litigators, prosecutors and tech transfer professionals in the U.S. and abroad. The single most-apparent trend in IP last year was the increasing globalization of IP law – consider inter-office work-sharing and the prosecution highway. But I don’t want this column to go on into 2012, so here, in reverse order, are the “legal events” that dominated the netwaves in 2011. (I apologize for what I hope will be minor errors of fact and spelling – I am writing this from notes I made while back-tracking through the year.)

10. The Stem Cell Suits. In Sherley v. Sebelius, the district court finally dismissed the suit which had resulted in a ban on Federal funding for stem cell research, after the Court of appeals reversed its initial decision. (See Post, July 28th). However, in October, the Court of Justice of the EU ruled that claims to embryonic stem cells or even to cells that could become sources for embryonic stem cells were not patentable. (See post, Oct. 18th). Some types of gene therapy were indicated to be allowable. The future of embryonic stem cells is cloudy with a chance of further retreats like Geron’s.

9. On October 18th, Saint-Gobain petitioned for cert., urging the Supreme Court to answer a burden of proof question that comes down to: “Does holding a patent on an improvement on a patented invention that does not literally infringe insulate the accused infringer from infringement under the doctrine of equivalents?” This question has been simmering under the surface of infringement law for decades, the Fed. Cir. is clearly divided and the Supreme Court might bite. See Post of March 8, 2011 as well as October 14th post.

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By Paul Cole, European Patent Attorney, Lucas & Co – Warlingham, UK

Judgement – Human Genome Sciences Inc (Appellant) v Eli Lilly
and Company (Respondent)

The above proceedings relate to European Patent (UK) 0,939,804 concerning a new  human  protein called Neutrokine-α. The specification explained (i) the existence and amino acid sequence of Neutrokine-α, (ii) the nucleotide sequence of the gene encoding for Neutrokine-α, (iii) the tissue distribution of Neutrokine-α, (iv) the expression of Neutrokine-α by its mRNA (the encoding gene) in T-cell and B-cell lymphomas, and (v) that Neutrokine-α is a member of the TNF ligand superfamily.  The specification described the invention as potentially useful for the diagnosis, prevention, or treatment of a large number of disorders of the immune system, either through Neutrokine-α itself or through its antagonists. However, nowhere in the Patent was there any data or any suggestion of in vitro or in vivo studies, so there was no experimental evidence to support any of those suggestions.

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Guest blog by Deputy Director Teresa Stanek Rea

I find it hard to believe that I have been at the USPTO for almost ten months. When I started here at the USPTO, I knew I would be a part of a great organization – one that I worked with as a practitioner for many years. But I had no idea I would be a part of history as we implement the most significant patent reform legislation in history. What amazes me more, however, is that the America Invents Act is just one of many efforts we work on for our stakeholders.

Tomorrow (December 1, 2011), the USPTO and SIPO (State Intellectual Property Office - China) will begin a landmark worksharing initiative. The two new Patent Prosecution Highway (PPH) pilot programs will apply to qualifying applications filed under the Paris Convention and the Patent Cooperation Treaty (PCT).

I had the honor of representing the USPTO at a ceremony in Beijing on November 8, where I signed the Joint Statement of Intent with SIPO Deputy Commissioner Yang Tiejun to launch these PPH worksharing initiatives. This trip marked my second time visiting China as the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. You can read about my first trip here.

This PPH agreement is a milestone in bilateral cooperation between the USPTO and SIPO. PPH programs, such as this one, permit each office to benefit from work previously done by the other office, reducing the examination workload in each office, aiding patent examiners and improving patent quality. The one-year pilot program will end on November 30, 2012. The trial program will gauge the interest of applicants and evaluate the programs for patent quality, efficiency and the reduction of the workload at the USPTO and SIPO. Both offices may extend the one year trial period upon mutual agreement. We believe the PPH Program has been overwhelmingly successful and it’s my pleasure to contribute to the program’s success by joining my counterpart in China and signing such an important document.

During this past trip I also spoke at the US-China Joint Commission on Commerce and Trade (JCCT) Intellectual Property (IP) Working Group Vice Minister level meeting. The USPTO, along with the Office of the United States Trade Representative, is co-chair of the JCCT IP Working Group, the main bilateral mechanism by which IP experts from the US and China seek to resolve IP concerns to US businesses. This meeting was a prelude to the recent 22nd Session of JCCT plenary meeting in Chengdu, China that newly appointed US Secretary of Commerce John Bryson attended.

One thing I’ve discovered in my time at the USPTO is that when I travel to a place like China, there is never a shortage of people who want to hear about what we do. So while in China, I also spoke about the America Invents Act at two Chinese universities, Renmin University and Nanjing University of Science and Technology. I also met with IP officials from various provincial level IP agencies of Jiangsu province, one of the most prosperous provinces of China. During our meetings, we discussed how we can collaborate to improve the IP protection and enforcement environment in Jiangsu province for the benefit of US and Chinese rights holders.

Our China team, a group of attorneys with specific expertise on China IP matters in the USPTO’s Office of Policy and External Affairs, will be busy following up on the USPTO-SIPO PPH pilot. I look forward to working with members of this Office and our business community in the coming months as we continue to develop this and other initiatives.

The PTO distributed an email to the examining corps today, with details of an upcoming job fair. Sounds like the hiring of new examiners is about to begin in earnest.

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All USPTO employees are urged to spread the word to individuals interested in entry-level patent examiner positions with room to grow (GS-7 through GS-9) and who have studied or practiced in varied engineering disciplines such as mechanical, computer, chemical, electrical, biomedical, civil and industrial, as well as pharmacology, chemistry, computer science, physics and textile technology positions. All vacant positions have non-competitive promotion potential to GS-13 and are open to all U.S. citizens or nationals.

Tell them that as a patent examiner with the USPTO, they will...

Be working with the largest intellectual property rights entity in the nation
Be supporting economic growth and positioning America as one of the world's top innovators
Gain experience, training and mentorship they won't get anywhere else
Conduct research and interact with applicants who are working on inventive, modern breakthroughs
Have access to alternative, flexible schedules, telework when eligible and highly competitive salary and benefits packages

The two-day job fair will include information sessions and is scheduled for Friday, December 9, from 8 a.m. to 2 p.m. and Saturday, December 10, from 8 a.m. to 4 p.m. Both sessions will take place on the USPTO's Alexandria campus in the auditorium of the Madison Building.

To register for the fair and schedule an interview, direct your friends and family to the USPTO Careers website.

Also be on the lookout for a future notice about vacancy announcements for these positions. The announcements are scheduled for release on or around December 5.

Helping the next generation of IP professionals learn to practice before the USPTO, our Law School Clinical Certification Pilot Program may be little known, but it has shown great success in providing benefit to the public and the IP community. The program allows law students enrolled in a participating law school’s clinical program to practice intellectual property law before the USPTO under close guidance of the law school clinic’s supervisor.

Our Clinical Pilot Program began in 2008 with six schools selected to allow students to practice before the Agency in both patents and trademarks. In 2010, the Program expanded to include 16 schools. To date more than 200 students have participated. The students are granted limited recognition to practice, providing them with the opportunity to draft and file patent and trademark applications. The program also provides experience interacting with patent examiners and trademark examining attorneys by responding to office actions. By engaging in the office action response process, the students learn how to craft effective responses that actively address real world issues raised by our examiners.

Aside from the practical experience students receive from participation in the Pilot Program -- experience that will serve them well after graduating from law school -- another public benefit is to the clients of the law school clinics who receive pro bono services. All of the law schools participating in the Pilot Program provide services to clients on a pro bono basis. In the fiscal year that ended September 30, students participating across the Program filed 83 trademark applications and 29 patent applications. These law school clinics are thus providing a much-needed service to independent inventors and small-entities that may not otherwise be able to afford IP legal services.

Will Covey, Deputy General Counsel for Enrollment and Discipline and Director of Enrollment and Discipline, visited the University of Richmond School of Law (one of our Program law schools) recently, where students unanimously praised their involvement in the Program, observing that they found great value in the opportunity to gain practical training in practicing before the Office. Richmond’s clinic director, Professor John Carroll, praised how the Program gives students the responsibility of providing seamless representation for their clients, from initial advice to prosecuting the application before the USPTO.

You can learn more about the program and the latest news about it on our website. And as always, your comments and questions are most welcomed.

The Commerce Department budget was passed last week.

The $2,706,313,000 that was budgeted to the PTO is expected to cover all of the fees the Office is expected to collect in FY 2012. It should at least give the Office a fair shot of funding the necessary changes that will be needed to implement the provisions of the recently passed American Invents Act.

You'd like to think that this is an indication that the Office will be more fully funded in future years, but I for one am not holding my breath on that.