Search Results for: Alice v. CLS Bank

Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem

Journal, Patent

David Boundy’s writing often focuses on the intersection between administrative procedure and Patent Office operations. In his new Patently-O Law Journal essay, Boundy explains the role of guidance (the MPEP, memoranda to examiners, checkboxes on forms, etc. -- anything the PTO uses to govern the public or its employees outside the Code of Federal Regulations). Boundy explains when the PTO may act by guidance vs. when the PTO must use a full statutory rulemaking procedure.

Boundy walks through how bad PTO guidance practices is leading to lost patent protection, companies not formed, companies that fold because of delays and unpredictability of their patent applications, business opportunities not pursued, and similar economic effects, etc.  He estimates the cost as several billion dollars per year.

Boundy's essay then explains how that law applies to several specific rules that PTO improperly promulgated by guidance that create difficulties for patent applicants.

  • Example 1: The secret 2007 restriction memo
  • Example 2: Unpublished rules for ADS submission of bibliographic data
  • Example 3: MPEP § 2144.03(C) misstatement of the law of intra-agency Official Notice
  • Example 4: MPEP § 1207.04 and an examiner's power to abort an appeal
  • Example 5: the PTAB’s Trial Practice Guide (The right way)

Boundy's essay is directly relevant to the pending en banc petition in Hyatt v. USPTO that challenges the agency's right to "reopen prosecution" following a second rejection rather than allowing issues to be appealed.  Although the Federal Circuit ruled that Hyatt's petition was time-barred, Boundy explains, inter alia, that PTO procedural failures likely divested the agency from any statute of limitations defense.  See, e.g., National Resources Defense Council v. Nat’l Highway Traffic Safety Admin, 894 F.3d 95, 106 (2d Cir. 2018) (a rule does not go effective until published in the Federal Register, and that’s the event that commences the limitations period). 

Read it here:

  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
Prior Patently-O Patent L.J. Articles:

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

USPTO Announces Recipients of 2017 Patent Pro Bono Achievement Certificate

Patent

From USPTO: Alexandria, VA– The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the recipients of the 2017 Patent Pro Bono Achievement Certificate in recognition of individuals who help make the Patent Pro Bono Program available to financially under-resourced inventors and small businesses.

In 2017 more than 85 volunteer patent practitioners reported 50 or more hours of patent pro bono service to a regional patent pro bono program. To acknowledge their contributions, USPTO provided certificates and listed their names and employers on the Patent Pro Bono Program website.

“I want to congratulate the recipients for their dedication, time, and commitment they’ve demonstrated in an effort to help spur innovation on behalf of under-resourced inventors and small businesses,” said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Andrei Iancu. “Their assistance is crucial not only to the success of our Patent Pro Bono Program, but the success of our nation toward inspiring innovation across the country, and ensures that everyone who has the desire is given the opportunity.”

The continued efforts of patent practitioners across the country have strengthened the success of the Patent Pro Bono Program since 2015. To date, more than 1,500 patent professionals have volunteered their availability, time, and resources to help make the Patent Pro Bono Program a success.

In 2018, USPTO will expand its recognition to include law firms and corporations in addition to individual patent practitioners. Those whose registered practitioners cumulatively contribute a minimum number of hours (based on firm size) to one or more participating regional patent pro bono programs may receive the 2018 Law Firm and Corporate Achievement Certificate.

2017 Winners Include:

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Patent Venue: Half Christmas Pie, And Half Crow

Journal, Patent

Professor Paul M. Janicke returns to the Patently-O Patent Law Journal with a look back at his predictions about venue prior to the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct. 1514 (2017)(limiting patent venue).  The new article is aptly titled Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13.

Read the Article: Janicke.2017.ChristmasPie

Prior Patently-O Patent L.J. Articles:

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.