Reminder - A new fee schedule begins October 5, 2012 that raises patent fees by 0–3% depending upon the fee.  Thus, the issue fee for a utility patent is moving upward from $1,740 to $1,770, for example. This fee increase is designed to to account for inflation.

• Current Fees: http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm
• New Fees: http://www.uspto.gov/web/offices/ac/qs/ope/fee100512.htm

This is a relatively minor change in fees and the fee structure. A much more substantial change will be implemented in the coming months (likely early 2013) once the USPTO finalizes its rules on AIA fee implementation. At that time, the micro entity fee discount will also become effective.

The USPTO is struggling somewhat with how to implement preissuance submissions. 

Required Concise Description: The new provision created by the America Invents Act (AIA) opens the door for any third party to submit “any … printed publication potential relevance to the examination of the application” if submitted within the proper window following application publication.  35 U.S.C. 122(e)(1).  The preissuance submission must also include a “concise description of the asserted relevance of each submitted document.” 35 U.S.C. 122(e)(2)(A).

The senior managers at USPTO learned patent law in the days when patent prosecution was extremely ex parte. Before 2001, pending applications were not published and were instead kept in complete confidence within the USPTO.  File wrappers were only reviewed in paper copy form and patent law was not generally thought of as much of a public concern.  Those days are gone, but fragments of that history remain.

In 1999 the omnibus appropriations bill included American Inventors Protection Act of 1999.  The AIPA implemented a new program of publishing pending patent applications 18–months after filing.  Applicants still have the option of keeping their applications secret while pending. However, that option requires that the applicant forego non-US patent rights. As the chart shows below, the vast majority of applications are published prior to issuance.  Further, about half of the non-published applications are ones that issued within 18 months of filing.

The new publication system raised a concern that third parties would begin challenging patents before issuance. As part of the legislative compromise, the 1999 AIPA legislation also included a special provision that blocks preissuance protests and oppositions. The provision authorizes the USPTO Director to establish procedures to ensure that no pre-issuance opposition is initiated following publication.

Protest and Pre-Issuance Opposition.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

35 U.S.C. 122(c). The USPTO recognizes that the new preissuance submission system is in tension with the rule against allowing pre-issuance oppositions. In its implementation regulations the USPTO attempts to provide some limitation on the submissions in order to avoid the conflict. In the explanation of the final rules, the USPTO writes:

The third party should present the concise description in a format that would best explain to the examiner the relevance of the accompanying document, such as in a narrative description or a claim chart. The statutory requirement for a concise description of relevance should not be interpreted as permitting a third party to participate in the prosecution of an application, as 35 U.S.C. 122(c) prohibits the initiation of a protest or other form of pre-issuance opposition for published applications without the consent of the applicant. Therefore, while a concise description of relevance may include claim charts (i.e., mapping various portions of a submitted document to different claim elements), the concise description of relevance is not an invitation to a third party to propose rejections of the claims or set forth arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application.

PreIssuance Final Rules (July 2012). In its discussion of the new rules, the USPTO also suggested that the concise description is “limited to a description of a document’s relevance” cannot include “arguments against patentability.”

Unlike the concise description of relevance required by 35 U.S.C. 122(e) for a preissuance submission, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.

Clearly there is a limit here to the scope of the description that can be filed. However, the USPTO’s distinction between a description and explanation is not entirely clear. 

The USPTO’s approach here makes some sense but is somewhat misguided.  In my mind, the statutory mandated description of relevance seems to requires at least some indication the statutory hook.  This is especially true because the preissuance submissions are not limited to 102/103 related prior art submissions. Rather, the submissions merely need to be potentially relevant to examination.  The best interpretation of the statute is that the discription of relevance is a description of how the submitted document is relevant to the examination.  In my mind, this sets up a three way network and the required description should discuss how (1) the submitted document changes how we think about (2) the patent application based upon some (3) law or other element of patent examination.  In the context of a claim construction chart, the link to 102/103 will likely be implicitly understandable without discussing the statutory elements.  Explanations regarding claim construction, subject matter eligibility, indefiniteness, or other examination issues likely will not make sense unless at least those particular labels are provided in the explnation of how the document is relevant to the examination.

48–hours after opening its doors, the Patent Trial & Appeal Board has new business.  According to the USPTO, ten new requests for inter partes reviews have been filed in the first two days as well as three post-grant review requests of financial business method patents (“covered business methods”).  Interestingly, four of the requests were filed by the non-practising entity Intellectual Ventures against patents owned by Xilinix. U.S. Patent Nos. 7,566,960, 7994609, 8,058,897, and 8,062,968.  Patrick Anderson has more history regarding the IV versus Xilinix fight at his GametimeIP blog.

On September 16, 2012, the USPTO's new inter partes reviews system became effective.  These reviews involve a complete redesign of inter partes reexaminations that can no longer be filed.  The new post-grant review system allows for an expanded scope of challenges.  Generally, PGR will only be available to challenge patents issued under the new first-to-file rules of the AIA. However, under the AIA, the PGR system can currently be used to challenge financial business method patents that fit the description provided by the statute.

The three business method reviews each focus on subject matter eligibility of the business method claims. Liberty Mutual challenged two such patents, including the following claim from U.S. Patent No. 6,553,350.

17. A method for determining a price of a product offered to a purchasing organization comprising:

arranging a hierarchy of organizational groups comprising a plurality of branches such that an organizational group below a higher organizational group in each of the branches is a subset of the higher organizational group;

arranging a hierarchy of product groups comprising a plurality of branches such that a product group below a higher product group in each of the branches in a subset of the higher product group;

storing pricing information in a data source, wherein the pricing information is associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the product groups;

retrieving applicable pricing information corresponding to the product, the purchasing organization, each product group above the product group in each branch of the hierarchy of product groups in which the product is a member, and each organizational group above the purchasing organization in each branch of the hierarchy of organizational groups in which the purchasing organization is a member;

sorting the pricing information according to the pricing types, the product, the purchasing organization, the hierarchy of product groups, and the hierarchy of organizational groups;

eliminating any of the pricing information that is less restrictive; and determining the product price using the sorted pricing information.

Most of the challenged patents are in the electronic, software, and business method market areas.  However, three patents stem from USPTO Technology Center 1600 (biochemistry and organic chemistry).

• Patent No. 6,258,540 (non-invasive prenatal diagnosis using maternal plasma owned by Oxford University (UK) Isis Innovation) challenged by Ariosa Diagnostic.
• Patent Nos. 7,713,698 and 7,790,869 (Columbia University patents on “massive parallel methods for decoding DNA and RNA”) challenged by Ilumina.

Other filers include Garmin Int'l (6,258,540); Nichia Corp. (6,653,215); and Macauto USA (6,422,291).

You can search the PTO post grant submissions here: https://ptabtrials.uspto.gov

Guest Post by Dr. Jeffrey Lefstin

On July 26, 2012, the USPTO published proposed Rules and Examination Guidelines for implementing the first-inventor-to-file provisions of the America Invents Act.   While the content of the proposed Rules is largely technical, the Office stakes out some substantive positions on the prior art provisions of the AIA in the proposed Examination Guidelines that are sure to raise controversy.

Secret Commercialization a Bar?  At least since Judge Learned Hand’s famous  Metallizing Engineering opinion in 1946, secret commercialization of an invention by the inventor -- but not third parties -- has triggered the statutory bar.  The rationale of this doctrine has been to discourage inventors from enjoying a pre-patent period of commercial exclusivity in addition to the exclusivity of the patent term.  While the AIA did not directly address the Metallizing rule, the AIA’s new 102(a) added a category of events triggering the statutory bar.  In addition to the traditional triggers of the statutory bar – patented, described in a printed publication, in public use, or on sale – new 102(a) adds a catch-all “or otherwise available to the public before the effective filing date of the invention.”  According to the USPTO, by adding “or otherwise available to the public,” Congress intended that only “public” sales of the invention – not secret or private commercial activity – should trigger the statutory bar. Nonetheless, the Office is seeking comment from the public on the role of “public availability” before issuing its own interpretation of “on sale” under new 102(a).

Leading commentator Hal Wegner points out that earlier versions of the AIA – such as the Patent Reform Act of 2005 – would have explicitly overruled Metallizing, by restricting prior art to sales from which one of ordinary skill in the art could readily “gain access to”  and “comprehend” the invention. That such provisions were removed from the final legislation suggests that Congress did not intend to negate the Metallizing rule, but in the end the Federal Circuit will almost certainly have to resolve this question.

Use and Sale Protected By Grace Period.   Section 102(b) of the AIA provides a limited grace period and preclusive effect for pre-filing disclosure by the inventor.  Specifically, under 102(b)(1)(A) a “disclosure” made one year or less before the effective filing date of an application is not prior art if the disclosure was made by the inventor (or a joint inventor, or one who obtained the subject matter disclosed directly or indirectly from the inventor). Under 102(b)(1)(B), a third-party disclosure of the same subject matter less than one year before filing is not prior art if the inventor has previously disclosed the same subject matter.  The AIA did not define “disclosure,” leading to questions about whether public use or sale would be excluded from prior art if by the inventor, whether use or sale by the inventor would preclude later disclosure by third parties, or whether third party use or sale would be precluded by prior inventor disclosure.  Under the USPTO’s interpretation, “disclosure” under 102(b) encompasses all the prior art  categories of 102(a):  patented, described in a printed publication, in public use, on sale, otherwise available to the public, or described in a U.S. patent, published U.S. patent application, or WIPO published application.  Accordingly, public use or sale by the inventor can trigger the preclusive effect of 102(b), and third-party use or sale can be precluded by prior inventor disclosure.

Preclusive Effect Nearly Eviscerated?  Perhaps the most radical stance taken by the Office in the Guidelines is its treatment of the preclusive scope of a prior inventor disclosure under 102(b)(1)(B) and 102(b)(2)(B).  Under these provisions, third party disclosures and patent applications are not prior art if the “subject matter disclosed” had previously been disclosed by the inventor.  Prior inventor disclosure therefore precludes later disclosures of the same subject matter from being prior art.  But this provision leads to a critical question:  when do an earlier and later disclosure disclose the same subject matter?  What if the later disclosure is not identical, but an obvious variation of the inventor’s earlier disclosure?  What if the earlier disclosure is broader than the later, or vice versa?  Is the use or sale of a physical thing (or intangible process) the same subject matter as a verbal description – which by necessity covers a multitude of physical entities?  The AIA leaves these questions unanswered.  In a Patently-O post last year, I outlined two possible approaches the courts and the Office could take for determining the scope of preclusive effect, and the identity of earlier and later disclosures.

In the proposed Guidelines, the Office takes a third route:  only exactly identical third-party disclosures are precluded by prior inventor disclosure. According to the proposed Guidelines:

Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

The exception under 102(b)(2)(B) is similarly limited. Thus, according to the Office’s interpretation, if the inventor discloses her invention on January 1, and a third party independently discloses a trivial and obvious variation on January 2, the third party’s disclosure is not excluded from prior art (and, of course, renders the invention unpatentable as obvious under § 103. Although the Guidelines do not address the case of specific versus generic disclosure, or physical use versus verbal description, the Office’s denial of preclusive effect for a trivial variation suggests that it would deny preclusive effect in these cases as well.

If the position in the Guidelines is sustained, the AIA’s grace period with respect to later independent third-party disclosures would seem to be nearly eviscerated.  Moreover, even where the later third-party disclosure was actually derived from the inventor, the inventor will face the difficult and complex task of proving derivation, rather than simply relying on the preclusive effect of his own earlier disclosure.

Of course, the Office’s proposed Guidelines are at the moment just that – proposals.  And even if adopted, they would ultimately be subject to the decision of the Federal Circuit – which, though it grants considerable persuasive weight to Office positions, does not accord them Chevron deference on substantive questions of patent law.

The proposed Rules and Guidelines are open for public comment until October 5, 2012, and are available here.  The Office will also be discussing its proposals at “roadshows” to be held in Alexandria, Atlanta, Denver, Detroit; Houston, Los Angeles, Minneapolis, and New York in September.

The USPTO's release last week of its Proposed Patent Fee Schedule will likely spawn a wide range of reaction. Almost certainly some will raise a "hue and cry" and claim that the USPTO is needlessly enriching its coffers in a way that unfairly disadvantages the community of USPTO users. Others, like Horacio Gutierrez, Corp. VP and Deputy GC for Microsoft, will tend toward a more balanced view. In comments posted Feb. 9, 2012, Mr. Gutierrez observed that "Arguably there is no good time for a fee increase, and some will question whether increasing fees in challenging economic times is the right thing to do. But to us, there should be no question that now is the right time to have a discussion about the benefits of investing in further improvements in patent quality and the potential costs of delaying that investment." Mr. Gutierrez is right – this is the right time to have a discussion, and that discussion, at least in the initial stages, should focus on the big picture questions:

• How important is reaching 10 months to first action and reducing total pendency to 22.9 months by 2015? This is a major assumption that cuts across virtually all the proposed fees.
• How important is it to build a reserve fund equivalent to 3 months of the USPTO's annual operating expense, and how quickly does that need to be done? By some estimates, the reserve may be being funded at levels ranging from 150 million to 300 million dollars per year. Does this rank in importance with reducing pendency? In other words, should the user community be willing to simultaneously fund both of these objectives through higher fee increases, or would the user community prefer to see a more gradual, staged approach to building the reserve fund so that fee increases need not be quite so steep, at least for the next few years?
• Will the currently proposed fee schedule permit adequate investment in critical USPTO resources such as improving its IT systems, and continued hiring, training and retention of qualified examiners? What are the projected costs and time frames for accomplishing such investments in human and physical resources? And do these costs rank in importance with reducing pendency and creating a meaningful reserve fund? One could argue that investment in critical resources such as its IT systems and the hiring, training and retaining of qualified examiners is one of the best things the USPTO could do to improve and insure patent quality.

With any proposal as sweeping as this one, and particularly where the impact goes right to the bottom line, there will be a tendency to want to dig in and debate whether the fee changes proposed for each part of the USPTO examination process are justifiable. This will have a tendency to compartmentalize the debate in a way that may not be helpful. That is not to say that it is inappropriate at some stage to have a candid and probing dialogue between the Office and the user community that is designed to help the user community understand the methodology, models and assumptions behind the USPTO's proposed fees. This can only ultimately help the user community provide more meaningful response and guidance to the USPTO. But before that happens, we should first attempt to provide some sense of priority to the Office on the big picture questions, since those will impact fee setting across the board, and in a very substantial way. In other words, as users, we need to help the Office understand what is most important to us, and then be willing to help fund those priorities.

Once that happens, we can then invite the Office to share the assumptions and modeling (such as cost recovery assumptions, front-end fee vs. back end fees as mechanisms for cost recovery, etc.) that will invite productive dialogue and input on the specific fee proposals on a more individualized basis.

In any discussion of this type, the process has to begin someplace. The USPTO's Proposed Patent Fee Schedule released last week is just that – a starting point for discussion. As users of USPTO services, we will have the opportunity on Feb. 15th and Feb. 29th to engage the process and begin providing response to the Office. PPAC should be applauded for providing a set of thoughtful questions to guide those hearings, with focus on the big picture issues. Hopefully, those of us who participate in the process will understand the need to start with the big ticket issues, and will not let the discussion become embroiled in minutiae.

The USPTO's Board of Patent Appeals (BPAI) has an incredibly large backlog of ex parte appeals pending – more than 25,000. In 2006, that figure was less than 1,000 pending appeals. Since then, the backlog has grown month-after-month-after-month. Cases being decided by the BPAI now were fully briefed more than two years ago, and began the appeal briefing process more than three years ago. Most of those are on applications filed at least five years ago with priority claims reaching back even further. The current USPTO solution is to hire more Administrative Patent Judges – 100 new judges this fiscal year with at least that many arriving next year. I agree that this is an important part of the solution. However, in my view simply hiring more judges is insufficient.

The following chart looks at the number of BPAI decisions each month. The pattern reveals the results of a performance rating system (i.e., quota system) used to judge the Judges. Ordinarily, BPAI judicial performance is reviewed two times per year, and that process is reflected in a systematic incentive for the judges to do more work at the end of the fiscal year (September) and at the midpoint (March). The chart shows those months as the high-points for BPAI output and the subsequent months as low-points.

It seems to me that the current cadre of Administrative Patent Judges have proven that they have the capability of increasing their throughput by 60% or more in any given month. But, the Judges only act on that capability when properly motivated. I hate to play the "if I were manager" game, but once these phenomena are recognized, a likely general solution is fairly obvious – provide motivation for the Judges to more often work to their potential. Economists have shown that people almost always act in their own self-interest – that's why personal incentives work. However, in a team environment, personal incentives are rarely sufficient. Most highly successful teams also rely on team and other goal oriented incentives that suggest a culture of success. In my mind, the chart showing high-effort-as-deadline-approaches suggests a commitment to personal achievement but also a lack of commitment to the broader timeliness goal of ex parte patent appeal administration. Of course, timeliness is only one variable in the time-quality-cost equation, and the other important elements cannot be ignored.

As the PTO moves to more than double the size of the Board, now is the time to make structural changes to ensure a better future for this important segment of the Office.

Note - A key feature of the chart above is that the figures for FY2012 are significantly higher than for prior years. Unfortunately, the increase in productivity is still only slowing the growth of the backlog. With the increase in judges, I expect for the backlog to begin declining by the end of this fiscal year. Further, once implemented, the proposed increased appeal fees will also tend to reduce appeals filed.

USPTO Director Dave Kappos has already announced that current Deputy Commissioner Margaret (Peggy) Focarino will be nominated as the next Commissioner. The final decision on appointments lies with the Secretary of Commerce. 35 U.S.C. § 3. The statute provides that the "Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years." The job entails serving "as the chief operating officers for the operations of the Office relating to patents … and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent … operations." The USPTO has not announced who will fill Ms. Focariono's role as Deputy Commissioner.

Secretary of Commerce: The USPTO is a division of the US Department of Commerce. John Bryson was recently sworn-in as the Secretary of Commerce, replacing Gary Locke. Bryson was CEO of the public utility Edison International – a company an estimated $40b in assets.

• There currently is a lot of lobbying going on by politicians to bring the USPTO to their state. Lawmakers from Silicon Valley, Colorado and Texas are trying to win one of the two satellite offices, since Detroit already is entitled to an office under Leahy-Smith. Colorado Sens. Michael Bennet and Mark Udall, sent a letter to David Kappos trying to sell him on the Rocky Mountain State. Also California lawmakers Anna Eshoo and nine other from sent a letter to Obama making their pitch for Silicon Valley. [Link]
  

Beacon Navigation Files Suit Against Car Makers

• On October 11^th Beacon Navigation filed patent infringement suits against all the big name automobile manufactures. Beacon claims that automobile manufactures infringed either all or some of their patents including 5,819,201, 6,163,269, & 5,878,368. Beacon claims that because the GPS navigation systems in their products are specially adapted for an infringing use of each patent, and embody a material part of the inventions claimed in each patent. As noted by PriorSmart, Beacon is the first plaintiff to file a high volume of individual cases since the new joinder restrictions were enacted. [Complaint]

Mark T. Banner Scholarship

• The Richard Linn American Inn of Court is proud to offer the Mark T. Banner Scholarship for law students. This scholarship is part of The Richard Linn American Inn of Court's commitment to fostering the development of intellectual property lawyers of high ethics, civility and professionalism, and especially those from diverse backgrounds. [Link]

Patent Jobs:

• Harman International is seeking a patent attorney with at least 8 years of experience. [Link]
• Klarquist Sparkman is searching for lateral patent associates or patent agents with at least 1-4 years of experience. [Link]
• Klarquist Sparkman is searching for a patent attorney or patent agent with 3+ years of experience. [Link]
• Lee & Hayes is looking for patent attorneys with at least 3 years of experience. [Link]
• Withrow & Terranova is seeking patent attorneys or patent agents with at least one year of experience. [Link]
• Trading Technologies is searching for a patent agent with 3-5 years of experience. [Link]
• Trading Technologies is seeking a patent attorney with 3-5 years of experience. [Link]
• Volpe and Koenig is looking for a Japanese patent paralegal with prior experience as a patent paralegal. [Link]

Upcoming Events:

• The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
• American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
• Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
• The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
• IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
• World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
• IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
• IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
• The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

• There currently is a lot of lobbying going on by politicians to bring the USPTO to their state. Lawmakers from Silicon Valley, Colorado and Texas are trying to win one of the two satellite offices, since Detroit already is entitled to an office under Leahy-Smith. Colorado Sens. Michael Bennet and Mark Udall, sent a letter to David Kappos trying to sell him on the Rocky Mountain State. Also California lawmakers Anna Eshoo and nine other from sent a letter to Obama making their pitch for Silicon Valley. [Link]
  

Beacon Navigation Files Suit Against Car Makers

• On October 11^th Beacon Navigation filed patent infringement suits against all the big name automobile manufactures. Beacon claims that automobile manufactures infringed either all or some of their patents including 5,819,201, 6,163,269, & 5,878,368. Beacon claims that because the GPS navigation systems in their products are specially adapted for an infringing use of each patent, and embody a material part of the inventions claimed in each patent. As noted by PriorSmart, Beacon is the first plaintiff to file a high volume of individual cases since the new joinder restrictions were enacted. [Complaint]

Mark T. Banner Scholarship

• The Richard Linn American Inn of Court is proud to offer the Mark T. Banner Scholarship for law students. This scholarship is part of The Richard Linn American Inn of Court's commitment to fostering the development of intellectual property lawyers of high ethics, civility and professionalism, and especially those from diverse backgrounds. [Link]

Patent Jobs:

• Harman International is seeking a patent attorney with at least 8 years of experience. [Link]
• Klarquist Sparkman is searching for lateral patent associates or patent agents with at least 1-4 years of experience. [Link]
• Klarquist Sparkman is searching for a patent attorney or patent agent with 3+ years of experience. [Link]
• Lee & Hayes is looking for patent attorneys with at least 3 years of experience. [Link]
• Withrow & Terranova is seeking patent attorneys or patent agents with at least one year of experience. [Link]
• Trading Technologies is searching for a patent agent with 3-5 years of experience. [Link]
• Trading Technologies is seeking a patent attorney with 3-5 years of experience. [Link]
• Volpe and Koenig is looking for a Japanese patent paralegal with prior experience as a patent paralegal. [Link]

Upcoming Events:

• The 2011 AIPLA Annual Meeting will be held October 20-22, in Washington, DC. The Annual Meeting will bring nearly 2,000 IP professionals together to meet, share, and connect with one another and provide insight into some of the most pressing issues facing our profession today! Over 100 IP Professionals, from corporations, law firms, universities, the courts, federal agencies, with expertise both domestically and internationally will be presenting on a varied landscape of IP issues. [Link]
• American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25^th-October 26^th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
• Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
• The University of Texas at Austin will hold its 16^th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
• IPMI is holding the IP Law & Management Institute on November 6^th – 8^th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
• World Research Group, an official Patently-O Jobs sponsor, is hosting the 3rd Annual Social TechNet Intellectual Property Forum Nov. 16-17 in New York. This conference provides solutions to the most prevalent in-house software and online IP protection and management issues. (Patently-O readers can save $200 by using promo code ABY668) [Link]
• IBC will hold a Standards and Patents Conference in London on November 16^th & 17^th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
• IBC will hold a US Patent Reform Congress Conference on November 18^th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
• The American Conference Institute's 2^nd Annual Forum on: Paragraph IV Disputes will be held in San Francisco on December 7^th. Experienced faculty of renowned litigators and judges will guide attendees through every stage of a Paragraph IV challenge to help them formulate offensive moves and defensive plays. (Patently-O readers can receive a discount by registering with code PO 200) [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Director Kappos has announced his desire to hire 1,500 – 2,000 new examiners in the next year.

Although 2010 saw more issued patents than ever before in-history, the chart below provides some evidence that the rise in patent grants is not an historical anomaly. The chart shows the number of patents issued per examiner over the course of the past decade. The chart suggests that the 2010 rise is more of a return to the grant rates of the first-half of the past decade. The anomaly – at least from this perspective – is the 2007-2009 period where the grant rate dropped so precipitously.

The high disposal rate appears likely to continue and perhaps increase in velocity. During the last three weeks (Dec 25, 2010 – Jan 14, 2011), the USPTO has issued more patents than in any three-week period on record.

The increased number of issuances raises some concern that the PTO has lowered its standard for patentability.  It is true, that a higher percentage of applications are resulting in issued patents. However, the PTO is also rejecting more applications than ever before. It is probably time for a quality study comparing patents issued late-2008 to those issued in late-2010.

The high disposal rate appears likely to continue and perhaps increase in velocity. During the last three weeks (Dec 25, 2010 – Jan 14, 2011), the USPTO has issued more patents than in any three-week period on record.

The increased number of issuances raises some concern that the PTO has lowered its standard for patentability.  It is true, that a higher percentage of applications are resulting in issued patents. However, the PTO is also rejecting more applications than ever before. It is probably time for a quality study comparing patents issued late-2008 to those issued in late-2010.

The coming year is certain to bring a host of interesting and important changes to patent law that we will continue to write about, and I wish all of Patently-O's readers a prosperous, rewarding, and enjoyable 2011.  Not to be overlooked, though, are a few events that occurred during the past few weeks:

Judge Kathleen O'Malley joins the Federal Circuit: Just a few days after the Senate confirmed her nomination, former Northern District of Ohio Judge Kathleen O'Malley was sworn in by Chief Judge Rader.  She becomes the tenth active non-senior judge on the court.  As an experienced jurist, she will likely have an immediate impact on the court's jurisprudence, although presumably she will not participate in the two currently-pending en banc appeals, TheraSense v. Becton Dickinson and Tivo v. Echostar.

Changes to Federal Rules of Appellate Procedure: On December 1, 2010, three changes to the Federal Rules of Appellate Procedure went into effect.  These changes consisted of adding a definition of the term "state" that includes the District of Columbia and United States commonwealths and territories (Fed. R. App. P. 1) and modifying several rules that referred to Federal Rule of Civil Procedure 58(a)(1).  These rules now refer to Federal Rule of Civil Procedure 58(a) (the separate document judgment rule) in its entirety.   In addition, Fed. R. App. P. 29 now requires more information about who assisted with an amicus brief, including whether a party's counsel authored the brief in whole or in part, whether a party or its counsel contributed money intended to fund preparing or submitting the brief, and the identity of any persons other than the amicus curiae, its members, or its counsel who contributed money that was intended to fund preparing or submitting the brief.  The complete list of changes is available in a letter from Jan Horbaly, the CAFC Clerk of Court.

USPTO Opens Detroit Office: As Dennis predicted earlier, on December 16, Director Kappos announced plans to open the first USPTO satellite office in Detroit, Michigan.  The office will open in 2011, and represents an effort to broaden the PTO's workforce through geographic diversity.  Depending on the success of the Detroit office, the PTO will consider opening additional satellite offices. 

Patent Pilot Program for U.S. District Courts: On December 17, Congress gave its final stamp of approval to H.R. 628, which establishes a pilot program to encourage the enhancement of patent case expertise among district court judges.  Under the Act, at least six district courts will be designated for the program.  Judges in these districts will be able to request to hear cases involving patent issues, although patent cases will still be randomly assigned regardless of whether a judge is so designated.  However, non-designated judges may decline to accept a patent case if it is assigned to them, and should this occur the case will be re-assigned to a designated judge.  In effect, this program will hopefully provide a slight push towards some judges hearing more patent cases than others (and thus developing more expertise in that area), but stops well short of creating a specialized court of trial judges who hear only patent cases (and, unlike the original bill, in the final version there is no money appropriated for specialized training or clerks for designated judges).  The Act also requires periodic reporting of comparison data between designated judges and non-designated judges on issues such as their respective reversal rates by the CAFC.

The coming year is certain to bring a host of interesting and important changes to patent law that we will continue to write about, and I wish all of Patently-O's readers a prosperous, rewarding, and enjoyable 2011.  Not to be overlooked, though, are a few events that occurred during the past few weeks:

Judge Kathleen O'Malley joins the Federal Circuit: Just a few days after the Senate confirmed her nomination, former Northern District of Ohio Judge Kathleen O'Malley was sworn in by Chief Judge Rader.  She becomes the tenth active non-senior judge on the court.  As an experienced jurist, she will likely have an immediate impact on the court's jurisprudence, although presumably she will not participate in the two currently-pending en banc appeals, TheraSense v. Becton Dickinson and Tivo v. Echostar.

Changes to Federal Rules of Appellate Procedure: On December 1, 2010, three changes to the Federal Rules of Appellate Procedure went into effect.  These changes consisted of adding a definition of the term "state" that includes the District of Columbia and United States commonwealths and territories (Fed. R. App. P. 1) and modifying several rules that referred to Federal Rule of Civil Procedure 58(a)(1).  These rules now refer to Federal Rule of Civil Procedure 58(a) (the separate document judgment rule) in its entirety.   In addition, Fed. R. App. P. 29 now requires more information about who assisted with an amicus brief, including whether a party's counsel authored the brief in whole or in part, whether a party or its counsel contributed money intended to fund preparing or submitting the brief, and the identity of any persons other than the amicus curiae, its members, or its counsel who contributed money that was intended to fund preparing or submitting the brief.  The complete list of changes is available in a letter from Jan Horbaly, the CAFC Clerk of Court.

USPTO Opens Detroit Office: As Dennis predicted earlier, on December 16, Director Kappos announced plans to open the first USPTO satellite office in Detroit, Michigan.  The office will open in 2011, and represents an effort to broaden the PTO's workforce through geographic diversity.  Depending on the success of the Detroit office, the PTO will consider opening additional satellite offices. 

Patent Pilot Program for U.S. District Courts: On December 17, Congress gave its final stamp of approval to H.R. 628, which establishes a pilot program to encourage the enhancement of patent case expertise among district court judges.  Under the Act, at least six district courts will be designated for the program.  Judges in these districts will be able to request to hear cases involving patent issues, although patent cases will still be randomly assigned regardless of whether a judge is so designated.  However, non-designated judges may decline to accept a patent case if it is assigned to them, and should this occur the case will be re-assigned to a designated judge.  In effect, this program will hopefully provide a slight push towards some judges hearing more patent cases than others (and thus developing more expertise in that area), but stops well short of creating a specialized court of trial judges who hear only patent cases (and, unlike the original bill, in the final version there is no money appropriated for specialized training or clerks for designated judges).  The Act also requires periodic reporting of comparison data between designated judges and non-designated judges on issues such as their respective reversal rates by the CAFC.

Under the law, the USPTO Director David Kappos has the power to nominate a new Deputy, but the actual appointment is done by the Secretary of Commerce (Locke). 35 U.S.C. 3 requires that "The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law." Within current PTO inner circle, Chief Communication Officer Peter Pappas has been suggested for the position as has Patent Commissioner Bob Stoll. Traditionally, the Patent Commissioner serves as interim deputy director until the office is filled. However, Director Kappos has full control over the interim organization. Peggy Focarino is currently the Deputy Commissioner of Patents.

Patenting Methods of Treatment. After deciding Bilski, the Supreme Court asked Fed. Cir. to take a fresh look at the case of Prometheus v. Mayo. In Prometheus, the patent in question is directed toward an iterative method of determining the correct dosing of a drug by injecting a quantity of the drug and then measuring the level of the drug found in the body. The Mayo Clinic and its supporters argue that the patent should be held invalid under 35 U.S.C. 101 as lacking patentable subject matter. The Federal Circuit has now released its new opinion on the case, holding once again that the claims are patentable. More to come.

Silence Implies Consent. A reader sent me a copy of the recent BPAI rehearing decision ex parte Njo involving a Pitney Bowes patent application. In the original appeal, the patent applicant had not filed a reply brief to directly contest the examiners arguments. The BPAI made clear that failure to respond should be seen as acquiescence. "This absence does, in our view, also suggest that such inaction may constitute acquiescence in the Examiner's arguments. "Silence implies assent." Harper and Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)." Consequently, the Board refused to allow the applicant to present new counter arguments that could have been raised in the reply brief.

Hands free typing. This week I had a successful shoulder surgery. The folks at Nuance were nice enough to give me a free copy of their voice transcription software known as Dragon NaturallySpeaking 11 (legal). I am now writing the blog hands free!

Under the law, the USPTO Director David Kappos has the power to nominate a new Deputy, but the actual appointment is done by the Secretary of Commerce (Locke). 35 U.S.C. 3 requires that "The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law." Within current PTO inner circle, Chief Communication Officer Peter Pappas has been suggested for the position as has Patent Commissioner Bob Stoll. Traditionally, the Patent Commissioner serves as interim deputy director until the office is filled. However, Director Kappos has full control over the interim organization. Peggy Focarino is currently the Deputy Commissioner of Patents.

Patenting Methods of Treatment. After deciding Bilski, the Supreme Court asked Fed. Cir. to take a fresh look at the case of Prometheus v. Mayo. In Prometheus, the patent in question is directed toward an iterative method of determining the correct dosing of a drug by injecting a quantity of the drug and then measuring the level of the drug found in the body. The Mayo Clinic and its supporters argue that the patent should be held invalid under 35 U.S.C. 101 as lacking patentable subject matter. The Federal Circuit has now released its new opinion on the case, holding once again that the claims are patentable. More to come.

Silence Implies Consent. A reader sent me a copy of the recent BPAI rehearing decision ex parte Njo involving a Pitney Bowes patent application. In the original appeal, the patent applicant had not filed a reply brief to directly contest the examiners arguments. The BPAI made clear that failure to respond should be seen as acquiescence. "This absence does, in our view, also suggest that such inaction may constitute acquiescence in the Examiner's arguments. "Silence implies assent." Harper and Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)." Consequently, the Board refused to allow the applicant to present new counter arguments that could have been raised in the reply brief.

Hands free typing. This week I had a successful shoulder surgery. The folks at Nuance were nice enough to give me a free copy of their voice transcription software known as Dragon NaturallySpeaking 11 (legal). I am now writing the blog hands free!

The USPTO has now issued a new set of proposed rules for proceedings in Ex Parte Appeals before the Board.  This new set of rules is a major complete revision of the BPAI rules that had been proposed in 2008 and should be seen as operating in parallel to ongoing changes-in-practice at the BPAI announced earlier in 2010.

Comments on the proposed rules should be submitted to BPAI.Rules@uspto.gov by January 14, 2011.

* * * * *

Particular proposed rule changes include:

• The Board will take jurisdiction over appeals as soon as the reply brief is filed, and examiners would no longer have an opportunity to respond to a reply brief.
• Once it takes jurisdiction, a procedural remand of the case would require Director's approval.
• The Board will presume that all pending claims under rejection are being appealed.
• The Rules will no longer require certain statements that simply reiterate information already of record. (e.g., claims appendix and statement on the grounds for rejection).
• An examiner's answer that includes a rejection based on new evidence will be designated as a new ground of rejection, and applicants will be allowed to delay the appeal in order to await a decision on a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief.

File Attachment: 2010.Appeal.Rules.Proposed.pdf (176 KB).