Peer-to-Patent Begins Expanded Pilot

Even the most ardent supporters of the current US patent system will readily admit that the patent examiners do not see or consider all of the relevant prior art.  This is a growing problem for patentees with important or valuable patent rights as (1) courts increasingly see invalidity as the most likely non-settlement outcome of patent litigation and (2) the Supreme Court questions whether the clear-and-convincing standard for invalidating a patent applies when the USPTO failed to consider relevant patentability questions.

A Patent Granting Milestone

Today, the USPTO issued its 168,000th utility patent of calendar year 2010.  I highlight that milestone because it surpasses the 167,350 mark for the entire 2009 calendar year.  At the current pace, I project that the USPTO will grant at least 33% more utility patents in 2010 than it did in 2009 (36% more is a better estimate).  The high-water mark for USPTO patent grants is 2006 — that year, the office issued 173,772 utility patents.  At the current 2010 pace, that mark will be passed in the next two weeks.

Single-Attorney Prosecution; Compact Prosecution; and the USPTO Backlog

The US Patent Office has long favored a “compact prosecution” examination approach. With compact prosecution, once substantive examination begins, the Office focuses its attention on promptly conducting and concluding the examination.  By reducing the duration of substantive prosecution, it is more likely that the case will be examined by an individual examiner and less likely that the examiner will have to re-learn the technology each go-round. 

Measuring Pendency and Allowance Rate – The Role of RCEs

I like the fact that the USPTO appears to be moving away from its fictional notion that a request for continued examination (RCE) should be counted as an abandoned and then re-filed patent application.  Over the past few years, the PTO's official statistics on pendency and allowance-rate both relied on RCE counts. As a consequence, both figures were artificially depressed.  In its new Patent Dashboard, the USPTO provides the traditional measures (counting an RCE as an abandonment) and the more relevant measures that treat an RCE filing as part of ordinary patent prosecution.

USPTO’s Data Visualization Center and Patent Dashboard

The USPTO has publicly released its data visualization center and patent dashboard. The site does an excellent job of providing a visual overview of the current USPTO state-of-affairs in terms of patent backlog, pendency, and allowance rate. The site also breaks-down those numbers in various ways that may be useful for advising your clients.  Data-downloads on the site provide unprecedented public access to PTO numbers that were previously either uncalculated or largely kept secret.

USPTO Guidelines for Determining Obviousness

The USPTO has released a set of updated examination guidelines on the core patentability issue of obviousness. The 18–page guidelines do not have the force of law, but will impact how examiners judge obviousness in practice. The updates primarily focus on Federal Circuit opinions that interpret and implement the holdings of KSR v. Teleflex, 550 U.S 398 (2007). I have copied the following tables from the Federal Register. [http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf].

USPTO Patent Grant Numbers

PatentlyO073

Patently-O Bits and Bytes

  • Funding: The Senate has also passed the PTO funding bill (H.R. 5874) that restores $129 million of fee-collected income to the PTO. The bill specifically provides “For an additional amount for `Salaries and Expenses’ of the United States Patent and Trademark Office, $129,000,000, to remain available until expended: Provided, That the sum herein appropriated from the general fund shall be reduced as offsetting collections assessed and collected pursuant to 15 U.S.C. 1113 and 35 U.S.C. 41 and 376 are received during fiscal year 2010, so as to result in a fiscal year 2010 appropriation from the general fund estimated at $0: Provided further, That during fiscal year 2010, should the total amount of offsetting fee collections be less than $2,016,000,000, this amount shall be reduced accordingly.”  The President will sign the bill shortly.
  • The PTO is expected to use the money to hire and train additional examiners and upgrade its information technology system.
  • Gene Quinn — the IPWatchDog — is posting a series of interesting interviews:

Patently-O Bits and Bytes

  • Funding: The Senate has also passed the PTO funding bill (H.R. 5874) that restores $129 million of fee-collected income to the PTO. The bill specifically provides “For an additional amount for `Salaries and Expenses’ of the United States Patent and Trademark Office, $129,000,000, to remain available until expended: Provided, That the sum herein appropriated from the general fund shall be reduced as offsetting collections assessed and collected pursuant to 15 U.S.C. 1113 and 35 U.S.C. 41 and 376 are received during fiscal year 2010, so as to result in a fiscal year 2010 appropriation from the general fund estimated at $0: Provided further, That during fiscal year 2010, should the total amount of offsetting fee collections be less than $2,016,000,000, this amount shall be reduced accordingly.”  The President will sign the bill shortly.
  • The PTO is expected to use the money to hire and train additional examiners and upgrade its information technology system.
  • Gene Quinn — the IPWatchDog — is posting a series of interesting interviews:

Unreasonable Patent Applicant Delay and the USPTO Backlog

Over 1.2 million non-provisional patent applications are pending examination at the USPTO. Of those, more than 700,000 have not received even a preliminary examination.  The backlog is the source of a tremendous amount of bad publicity for the USPTO.  At a recent PPAC meeting, former USPTO Deputy Director Stephen Pinkos asked an important question regarding the backlog.  Namely, Mr. Pinkos asked USPTO officials to identify the portion of the backlog that can be attributed to patent applicant delays rather than to the USPTO.

An Interview with PTO Director David Kappos

Joff Wild of IAM Magazine has posted a 40-minute video of a recent interview with USPTO Director David Kappos.

Patent Prosecution Highway

The USPTO is quickly moving forward with its Patent Prosecution Highway (PPH) and applicants may want to consider whether it is time to jump aboard.

USPTO To Begin Re Calculating Patent Term

The USPTO has posted a notice acknowledging the Federal Circuit’s decision in Wyeth v. Kappos and indicating that the Justice Department will now determine whether to seek an en banc rehearing or petition for certiorari. In the meantime, the PTO will change its PTA calculations to “conform with the Federal Circuit’s decision.”

Next Commissioner for Patents: Robert (Bob) Stoll

PatentLawPic779The USPTO has released a press release indicating that PTO Director Kappos has nominated "longtime USPTO executive Robert ("Bob") Stoll" for a five year term as Commissioner for Patents and has appointed Margaret ("Peggy") Focarino as Deputy Commissioner for Patents. It is the duty of Gary Locke (Secretary of Commerce) to actually appoint the Commissioner. 35 U.S.C. ? 3. The press release indicates that Secretary Locke has already "expressed support" for the nomination.

Director Kappos: “Patent quality equals granting those claims the applicant is entitled to under our laws.”

In a recent e-mail to patent examiners, new USPTO Director Kappos focused on shifting examiners away from the mindset that rejection equals quality toward a focus on ensuring that patentable claims issue and that unpatentable claims fall.

Interim Guidelines on Examining Statutory Subject Matter

The USPTO has issued a set of interim examination guidelines for determining whether a claim is properly directed to patentable subject matter under 35 U.S.C. ? 101, relevant Supreme Court precedent, and Bilski. The instructions begin with a realization that the area is in flux and that more permanent guidelines will be established once the Supreme Court rules on Bilski v. Kappos. In addition, these are guidelines rather than rules or laws. Thus, an examiner's failure to follow the guidelines is "neither appealable nor petitionable."

Estimated Workload of Preparing and Filing Reexaminations

As part of the Paperwork Reduction Act of 1995 (44 U.S.C. 3506(c)(2)(A)), the USPTO is required to evaluate its methods of collecting information from the public. In a recent Paperwork Act notice & publication, the Office offered the following estimates for reexamination practice.

Proof of Actual Fraud on the Patent Office

US v. Reid, 09-cr-00320-CMH (E.D. Va. 2009)