Jay Walker has been in the news over the last several months. But it hasn’t been because of his large patent portfolio, or as the result of his status as the founder of Priceline.com. Instead, it is as the result of a new endeavor he is behind called Patent Properties. But what is Patent Properties?
The company develops and commercializes its own portfolio of assets and is offering a licensing solution for the mass market of patent owners and users. It was formed in September 2013 with the completed merger of GlobalOptions Group, Inc. and Walker Digital Holdings, LLC, which was a wholly owned subsidiary of Walker Digital, LLC. Initially, the newly formed entity consisted of the patent portfolio created by Walker Digital, which included 379 granted patents, 93 pending patent applications, intellectual property in development and 19 litigation matters.
The United States Patent and Trademark Office (USPTO) is seeking public input to determine the optimal first action and total pendency target levels for patents. Currently, the USPTO targets of 10 months on average to a first office action, and an average of 20 months for total pendency were established with stakeholder input in the previous USPTO 2010–2015 Strategic Plan. These targets have guided the USPTO in making significant reductions to pendency over the past four years, specifically: (1) A 30% reduction in average first action pendency, from an average first action pendency of 25.7 months in fiscal year 2010 to the current average first action pendency of 18.1 months; and (2) a 20% reduction in average total pendency, from an average total pendency of 35.3 months in FY 2010 to the current average total pendency of 28.1 months.
The USPTO is inviting the public to submit comments on issues related to patent application pendency. The USPTO is specifically seeking comments on the following questions:
1. Are the current targets of 10 month average first action patent pendency and 20 month average total patent pendency the right agency strategic targets for the USPTO, stakeholders, and the public at large? If not, what are the appropriate average first action patent pendency and average total patent pendency targets, and what is the supporting rationale for different targets?
The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Due to the confidential nature of unpublished U.S. patent applications, set forth in 35 U.S.C. 122, an applicant must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
To facilitate electronic file sharing between IP offices, such as the sharing relating to the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO), USPTO is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the USPTO to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application. This would satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office.
The America Invents Act (AIA) provided for a variety of new administrative trial proceedings, including: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012.
During the rulemaking to implement the administrative trial provisions of the AIA, the USPTO held roundtable discussions in a number of cities across the country. The USPTO at that time committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some period and had gained experience with the new administrative trial proceedings. With nearly three years of experience with these new proceedings, the time has now come for the USPTO to revisit the rules.
The USPTO began the process of revisiting the AIA administrative trial proceeding rules and trial practice guide by engaging in a nationwide listening tour. The USPTO conducted a series of eight roundtables in April and May of 2014, in Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to share information concerning the AIA administrative trial proceedings and obtain public feedback on these proceedings.
The USPTO is now ready to take the next steps and is seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. Written comments must be received on or before September 16, 2014, and should be sent via e-mail to TrialsRFC2014@ uspto.gov. Electronic comments submitted in plain text are preferred.
Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.
Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.