As you may be aware, there is a growing number of unexamined Requests for Continued Examination (RCEs) clogging the Patent Office docket. In fact, as of the end of Fiscal Year 2012, there were 95,200 RCEs that were awaiting examiner consideration, which is almost double the 48,680 that were awaiting examiner action at the start of Fiscal Year 2011.
The USPTO is concerned about the RCE backlog and the agency, in collaboration with the Patent Public Advisory Committee (PPAC), will host a series of public roundtables to solicit stakeholder input on ways the agency can reduce the number of Request for Continued Examination (RCE) filings.
The initiative is part of the USPTO’s effort to reduce patent application pendency. In order to accomplish this, the USPTO is seeking to better understand the root causes for filing RCEs and plans to use the information gathered during the public events to design additional programs and initiatives aimed at reducing RCE filings and backlog. (more…)
The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the PTO. To this end, patent reexamination in particular has exploded in popularity as a viable alternative to costly litigation, or parallel path, to enhance litigation positions. This topic was discussed during the Practising Law Institute’s seminar entitled, Post-Grant USPTO Proceedings 2012 – The New Patent Litigation. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, broke down post-grant topics into pre-trial and post-trial strategies, issues, and goals, and spelled out cost effective post-trial strategies.
Here is a clip from Scott’s discussion during the Pre-Trial and Post-Trial Post-Grant Strategies Concurrent with Litigation panel:
The “Post Grant USPTO Proceedings 2012 – The New Patent Litigation” seminar is currently available for viewing on demand. The on demand program includes access to select chapters of the seminar’s Course Handbook.
Patent law heavyweights will convene for what looks to be two very special days in New York City at PLI’s 6th Annual Patent Law Institute on February 16-17th.
Chief Judge Randall Rader of the Federal Circuit will participate in an all-star dialogue panel between the bench and bar along with United States District Judge William Young and nationally-recognized expert practitioners Donald Dunner, Seth Waxman and Dean John Whealan of the George Washington University Law School.
Robert Stoll, who recently retired as Commissioner for Patents at the USPTO, is slated to open the program with a PTO keynote address. Commissioner Stoll is expected to report the latest developments regarding the PTO’s on-going implementation of the America Invents Act and other critical PTO developments.
Co-Chairs Scott M. Alter (Faegre Baker Daniels LLP), Douglas R. Nemec (Skadden, Arps, Slate, Meagher & Flom LLP) and John M. White (Berenato & White; Director of Patent Professional Development, Practising Law Institute) will navigate attendees through 6 exciting plenary sessions that discuss the practice impacts of recent Supreme Court and Federal Circuit decisions, AIA changes, current critical patent issues from the corporate counsel perspective, views from the District Court bench, the never-ending PTO changes and for good measure, an hour of legal ethics credit! (more…)
Another great presentation I sat in on today at Fundamentals of Patent Prosecution 2011 was an Introduction to Patent Drafting. The speaker was Willian Frommer of Frommer Lawrence & Haug . Here are the highlights from the discussion:
Frommer suggested that whenever possible, the attorney should interview the inventor to obtain a detailed understanding of the invention and that an attorney’s role is to learn of a specific embodiment of the invention, but also to predict possible alternative embodiments and implementations that may be brought to market. He offered two practice tips: 1) Courts will sometimes limit a claim to a preferred embodiment or even invalidate claims that are broader than the disclosed embodiments. The more embodiments, the better. Try to anticipate competing products that may affect your client’s market and 2) The inventor is often the best source for alternative embodiments. (more…)
It is often said that hiring a litigator to draft a contract results in an iron‐clad contract that no one will ever sign. That’s because litigators learn by seeing how things can go wrong, and shoring things up to prevent that scenario from recurring in the future. We typically get involved when reasonable minds have failed to agree – the joint venture has gone south, the software didn’t perform, or the parties disagree over the scope or value of patented technology. Thus, we have developed a treasure trove of anecdotal evidence of what not to do and we live by the motto “learn from the mistakes of others, as you may not live long enough to make them all yourself.”1