Does the USPTO paying for shared services violate the AIA?

During the August 20, 2015, Patent Public Advisory Committee (PPAC) meeting, USPTO Director Michelle Lee first announced what was known as the shared services initiative. Today, “shared services” has been re-branded “enterprise services,” but the initiative remains the same.

In 2015, Lee explained the shared services initiative by saying that agencies falling under the Department of Commerce would utilize shared services for human resources, information technology and procurement functions. The fear then, however, was that the USPTO’s user fees would be used to pay for the IT and other needs of other Commerce agencies when those funds are supposed to be used only for the operation of the USPTO. See AIPLA letter to Secretary Pritzker and Under Secretary Lee. That is precisely what is happening now, only worse.

The new reality today is that the USPTO is paying for shared services that are simply not shared. According to Frank Murphy, Acting Chief Financial Officer, who recently spoke at a PPAC public meeting, the USPTO will not be using the services because the USPTO systems are superior to the shared services being created. The USPTO is still, nonetheless, paying for the creation of these services.

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Board ends interference on CRISPR

The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has issued a decision in the CRISPR patent interference pending between The Broad Institute, Inc. (the Junior Party; second filer) and The Regents of the University of California (the Senior Party; first filer). The dispute is related to U.S. Patent Nos. 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641; and U.S. Patent Application Serial No. 14/704,551.

The PTAB, in a per curiam decision, wrote:

Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference. Broad provided sufficient evidence to show that its claims, which are all limited to CRISPR-Cas9 systems in a eukaryotic environment, are not drawn to the same invention as UC’s claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment. Specifically, the evidence shows that the invention of such systems in eukaryotic cells would not have been obvious over the invention of CRISPR-Cas9 systems in any environment, including in prokaryotic cells or in vitro, because one of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful in a eukaryotic environment. This evidence shows that the parties’ claims do not interfere. Accordingly, we terminate the interference.

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Congress moves to divert agency fees, but not Patent Office fees

In early February 2017, Congressman Gary Palmer (R-AL) and Senator Mike Lee (R-UT)(shown left) introduced the Agency Accountability Act of 2017 (AAA) in both the House of Representatives (HR 850) and the Senate (S. 299), respectively. The AAA is a bill that would direct most fines, fees, and other unappropriated proceeds to the Treasury, making them subject to the appropriations process.

Senator Lee and Congressman Palmer explained that the Agency Accountability Act is designed to reestablish Congressional authority over agencies. Palmer and Lee believe that at least some agencies have been spending money on programs that Congress has not approved.

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USPTO instructs examiners on patent eligibility cases

The United States Patent and Trademark Office recently issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to patent examiners provides discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.

The PTO acknowledges in the memo that the Federal Circuit even more recently issued another precedential decision in Amdocs (Israel) Ltd. v. Openet Telecom, which will be discussed in forthcoming subject matter eligibility guidance. For more on that case, please see Software eligible because it recites technical solution to technical problem.

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Hearing on Examiner Fraud Leaves No Resolution

In mid-September, the House Judiciary Committee held what seemed like it was going to be an oversight hearing to address the allegations of timekeeping fraud by patent examiners made in the Inspector General’s recent report. Prepared statements released in advance of the hearing talked tough, but that was pretty much it. Insofar as getting to the root of the problems identified in the IG report the hearing turned out to be a big, fat nothing.

Congressman Jerrold Nadler (D-NY) (pictured left at the hearing) defended the Office in his prepared remarks, explaining that there were flaws with the methodology of the IG study, which make the conclusions unreliable. For example, it is entirely possible that patent examiners were indeed working while they were not logged into the Patent Office computer systems. After all, examination is a job that requires a lot of reading and contemplation, much of which might occur without being logged into the server. Of course, that, at best, means there is no way to know whether patent examiners are working or not, which is why the IG report recommended the sensible step of requiring patent examiners to log into the Office computer systems whenever they are working.

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