Each year, PLI holds its annual Patent Litigation seminar. I will be speaking at the New York Patent Litigation 2014 program, which will take place from November 10-11, 2014. There will be an earlier presentation of the program in Chicago, IL, from October 6-7, 2014. In addition to discussing the relatively new ethics rules applicable to patent attorneys, I will discuss a variety of ethics decisions from the Office of Enrollment and Discipline at the United States Patent and Trademark Office.
In one particular enforcement decision that I will discuss during my presentation — In the Matter of James Hicks — the Office of Enrollment and Discipline instituted an enforcement proceeding against James Hicks, who is an attorney admitted to practice in the State of California. Although Hicks is not a patent attorney duly admitted to practice before the United States Patent and Trademark Office, he had been permitted to practice before the Office in trademark and other non-patent matters, as can any attorney admitted to practice.
Hicks, a litigator, was alleged to have engaged in conduct prejudicial to the administration of justice. In Rates Technology, Inc. v. Mediatrix Telecom, Inc., No. 05-CV-2755, the United States District Court for the Eastern District of New York entered an order sanctioning him and his client for failing to comply with the court’s discovery orders. Indeed, the abuses were such that the district court ultimately dismissed the case and imposed monetary sanctions against Mr. Hicks and Rate Technology in the amount of $86,965.81, to be split evenly between them.
Despite what the United States Patent and Trademark Office suggested in their initial guidance to patent examiners, the Supreme Court’s decision in Alice v. CLS Bank has substantially changed the prosecution landscape for computer implemented inventions (i.e., software).
At least initially, the USPTO guidance to examiners seemed extremely patentee friendly. In a memo to the patent examining corps, the USPTO explained that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” The USPTO then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld explained: “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”
Hirshfeld also explained that there is now a slight change in the way applications are to be examined when claims involve abstract ideas. Essentially, it was said, Alice stands for the proposition that the same analysis should be used for all types of judicial exceptions and the same analysis should be used for all categories of invention. Still, even recognizing this shift in analysis, Hirshfeld told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” (emphasis added). Therefore, this initial guidance clearly took the position that nothing has changed from a substantive law point of view as far as the USPTO was concerned.
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.