Patently-O Bits and Bytes No. 36

Bits and Bytes, Patent, Reexamination
  • PatentLawPic304[Not a] Patent Race: IPO released its annualy survey of top utility patent assignees. IBM again leads the way with over 3,000 utility patents issued in 2007. The organization leads the report with the interesting statement: “IPO DOES NOT INTEND TO ENCOURAGE MORE PATENTING IN U.S.”. [LINK]
  • Tafas v. Dudas: On May 19, the CAFC released its notice of docketing in the case — starting a 60 day clock for the PTO to submit its opening brief. I expect that they will take the entire time.
  • Inter Partes Reexaminations: Joff Wild highlights a new report on PTO Inter Partes Reexaminations: “Without appeal, the average pendency period for inter partes re-exam is 43.5 months, much longer than the 28.5 months reported by the USPTO – a 95% confidence interval would put the pendency between 34 and 53 months….To date, there has never been a single inter partes re-examination that has gone through the entire re-examination process (including appeal) and made it to completion. Only three have ever received a decision by the Board of Patent Appeals and Interferences.” [LINK][Report][Zura comments]
  • MBHB Snippets: In the past, I have published several practice focused articles in MBHB’s Snippets publication. The newest edition is now online. Articles include:
    • Aaron Barkoff, Patent Litigation Under a Future Biosimilars Act
    • Kevin Noonan, Follow-on Biologic Drugs and Patent Law: A Potential Disconnect?
    • Jim McCarthy & Marcia Ireland Rosenfeld, It’s Not Easy Selling Green
    • Benjamin Huber, Seagate: Reports of the Death of Opinions of Counsel Have Been Greatly Exaggerated
    • [Read Snippets]

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4 thoughts on “Patently-O Bits and Bytes No. 36”

  1. 4

    Quoted from IPO’s survey

    In 2007 the U.S. Patent & Trademark Office announced that it would
    no longer publish its own report on organizations receiving the most patents, because it wanted to discourage “any perception that we believe more is better.”

  2. 3

    Latest press release from the PTO

    Washington, DC – John Dudas, Undersecretary of Commerce for Intellectual Property, introduced a Senate bill to rename the U.S. Patent Office to the U.S. Rejection Office. “We’ve managed to drop the allowance rate from a high of more than 70% to about 44% in only 6 or 7 years,” said Dudas. “For the first time in recent history, more patent applications are abandoned than allowed. The name change is a reflection of that reality. And it’s an acknowledgement of our goal – to dissuade the filing of applications, and eventually be able to reject all of the applications that are filed.”

    After introduction of the bill, Dudas held a gala celebration, where the band Barenaked Ladies performed the Office’s new anthem “It’s All Been Done.” The anthem was chosen “because it is a perfect reflection of the [examining] corps attitude toward the claims [in patent applications],” remarked John Doll, Commissioner of Rejections. “Ever since [the] KSR [case], everything in the claims that isn’t shown in a single reference is obvious in view or two, three, ten, twenty – however many are required – references. “It’s All Been Done” is another way of saying ‘it’s all obvious!'”

    Initially, many patent lawyers and agents, and even patent Examiners, questions how an Undersecretary of Commerce could introduce a bill in the Senate. Dudas disputes the suggestions he lacks authority to do so. “It’s the same way I can appoint Margaret [Peterlin], who has no experience in patent law, to a position that the law says requires experience in patent law. I just do it. I’m confidant that no one has standing to actually challenge my authority to introduce the bill.”

  3. 2

    The study leaves out too much. What about delays due to party initiated petitions? There seems to be a lot of this, possibly due complex issues cropping up in the cases.

    The decision to base the 43 month figure only on cases where patent owner responded to every office action also overlooks important issues. For example, there are certainly merit based reasons why one party stopped responding, such as tacit agreement with the examiner position. Thus, the study’s decision to throw out the benefits from this type of prosecution outcome (shortened pendency) is perplexing.

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