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PTO Press Release: Deputy Peterlin Leaving PTO

Patent, ,

Margaret Peterlin has announced that she will be leaving the PTO in August.  She has sparked resistance from the patent community ever since her appointment as deputy director of the USPTO in May 2007. She is considered an expert at legislative tactics at a time when the PTO was asking for legislation opposed by many patent practitioners.  In late 2007, a DC District dismissed a lawsuit against the USPTO requesting that Peterlin be removed from office. The complaint alleged that she lacked the intellectual property law experience required by statute for her position.  In many ways, the negative reaction to Peterlin was simply a reflection of frustrations felt by many patent practitioners.  In an internal message to PTO employees, Director Jon Dudas indicated that Peterlin is also expecting her first child later this year.  Congratulations and Good Luck!!

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Continuation Rules to Issue August 21

Patent, , , ,

After some persistence, the PTO revealed the substance of the new continuation rules to Dow Jones reporter Stuart Weinberg:

Applicants will have the right to file two so-called continuations and one request for continued examination. Applicants seeking additional continuations will need to explain why the request is necessary. Current practice allows applicants to file an unlimited number of continuations. . . . [The PTO also] plans to limit the number of claims an applicant may include in an initial application to 25. Applicants that include more than 25 claims will be required to include a prior-art search, a detailed report that explains how their invention differs from what's already in the public domain. The new rules, which will be published on the PTO's Web site Tuesday [August 21], are scheduled to go into effect Nov. 1.

…The number of continuation requests has been rising in recent years. In 2006, almost 30% of applications were devoted to continuation requests, up from 27% in 2005 and 25% in 2004, Peterlin said. . . . Peterlin alluded to misuse of continuations when discussing the pending rule changes. "What we have found is, sometimes, people engage in a little
post-filing research," she said, adding that, while this may make good business sense, it doesn't make for an effective patent system.

Although we have not seen the final rules, it appears that applicants will not be losing rights at the time the final rules are published. Rather, the new rules will become effective on November 1, 2007. Do expect the rules to be retroactive in that they will apply to pending applications.

Pre-view of rules via Venable Law Firm

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Women as Patentees

Academic Studies, Inventors, Patent

Patents are intended to lure potential inventors into the business of innovation.  The truth is, however, that very little is known about how patents really drive innovation.

Historically, only a very small number of women have obtained patents. Data from historic studies:

  • 1790 – 1895: About 1% were granted to women;
  • 1905 – 1921: About 1.4% were granted to women;
  • 1954: 1.5% of issued patents included women inventors;
  • 1977: 2.6% listed one or more women as inventors;
  • 1996: 9.2% listed one or more women as inventors.

Since patentees do not list their sex, all of these studies rely upon segregating inventors according to traditional first-names.

2006: In my own recent study, I looked at a sample of 150,000+ patents issued between 1999 and 2006.  I then made a list-ranking of first-names of first-listed inventors. Can anyone guess how many of of the top-100 inventor-names were traditionally female names???

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Evidence Based Prosecution: Non-Patent Prior Art Leads to Rejections

Academic Studies, Patent, Patent Prosecution

ScreenShot041Quality patents depend upon our ability to find and examine prior art regardless of its form. Most prior art cited by the USPTO arrives in the form of patent-related references — most notably, issued U.S. patents, published patent applications, and foreign patent documents. We know, for instance, from Columbia Professor Bhaven Sampat that about 90% of cited non-patent prior-art references are provided by the applicant, and that only 10% are examiner references. Link.

In some technologies where patenting has a long and extensive tradition, the lack of non-patent prior art is not a serious problem.  In other areas such as software and biotechnology, non-patent references harbor most of the important prior art. 

Results: My new study of 100,000 recently issued patents reveals that patent that cited non-patent literature are significantly more likely to receive rejections from the PTO.  Specifically, patents citing at least one non-patent reference have a 39% greater chance of receiving a final rejection when compared with patents that issued without citing any non-patent references. Regarding non-final rejections, citing non-patent prior art increased the likelihood of receiving a rejection by 9%.

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Patently-O Bits and Bytes No. 100

  • PTO Director: Commerce Secretary Locke has been confirmed as Commerce Secretary. Congratulations. With patent attorney blinders - the next step is to solidify the PTO leadership positions. Leading candidates include Todd Dickinson and David Kappos (IBM). Dickinson is an old-guard Clinton supporter. Kappos was an Obama donor.
  • Drop in Filing?: I recently relayed an apparent quote from the PTO General Counsel James Toupin reporting a 16% decrease in new patent filings. Toupin and the PTO have since rejected that number as a large overstatement and have indicated that they will provide better numbers shortly. The bottom line is still true - the PTO is experiencing a cash-shortfall and is cutting its own budget wherever it can.
  • Fee Increases: Dramatically shifting its position, the IPO has announced that it opposes "any significant increase in USPTO patent fees in the near term."
  • IP Primer: The Dickstein Shapiro firm has released a new version of its IP Primer (free, but you have to give a name).
  • Patent Reform 2009: The Senate Judiciary Committee holds the ball on patent reform and is set to meet again to discuss mark-ups on March 31, 2009. Lobbying will be heavy during the next week to define the center "consensus" ground. Quinn; IPWatch.

The Legacy of A.B. Dick and Motion Picture Patents: How these 100+ Year Old Ruling Reshaped Patent Law

Patent, , , , ,

by Dennis Crouch

I see the US Supreme Court's 1912 decision in Henry v. A.B. Dick Co. as a major turning point in American patent and antitrust law. 224 U.S. 1 (1912).  The Court's 4-3 decision favored the patentee and allowed the patent owner to place restrictions on the use of its patented product even after sale. But, that decision sparked a major reform effort.  Just a few years later, the Supreme Court reversed course in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), effectively overruling A.B. Dick and signaling a new largely anti-patent-monopoly era.

In A.B. Dick,

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USPTO Discontinues Accelerated Examination Program for Utility Applications (Design Patent Rocket Docket is also Suspended)

Patent

by Dennis Crouch

The USPTO is discontinuing its Accelerated Examination program on July 10, 2025.  The program has received fewer than 100 petitions in recent years, compared with 10,000+ Track One prioritized examination requests.  The USPTO anticipates further raising the annual limit on Track One requests in 2025.  The USPTO also recently terminated the Climate Change Mitigation Pilot Program on January 28, 2025. See Discontinuation of the Accelerated Examination Program for Utility Applications, 90 Fed. Reg. 24324 (June 10, 2025).

The Accelerated Examination program allowed applicants to advance their applications out of turn by filing a petition to make special along with a pre-examination search and examination support document.  The program was designed to provide expedited examination for applicants willing to invest significant effort in preparing detailed examination support materials, including prior art searches and claim charts mapping the prior art to each pending claim.  However, the program’s popularity plummeted following the introduction of Track One prioritized examination in 2011.  Unlike Accelerated Examination, Track One requires only payment of a fee—currently $4,200 for large entities—without the burden of preparing examination support documents or conducting pre-examination searches. (more…)