The Federal Circuit recently issued a decision on an appeal from the Patent Trial and Appeal Board where the central question was whether the Board and the examiner properly relied on the same articulated reasoning and factual underpinnings in rejecting a claim, or whether instead the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving the applicant of both notice and an opportunity to respond. See In re Lutz Biedermann.
Lutz Biedermann and Jurgen Harms (collectively “Biedermann”) appealed a decision of the Board affirming the rejection of claims 32, 33, 35–37, 39, and 48 of U.S. Patent Application No. 10/306,057 (“’057 Application”) for obviousness, 35 U.S.C. § 103(a). Ultimately, the Federal Circuit, per Judge Linn (with Judges Moore and O’Malley agreeing), determined that the Board rejection did constitute a new grounds of rejection. Thus, the Board’s decision was vacated and remanded for further proceedings.
The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) recently announced that it will host its next Software Partnership Meeting on Thursday, October 17, 2013, at the U.C. Berkeley School of Law in Berkeley, California.
The purpose of the meeting, among other things, is to allow senior USPTO officials to provide an overview of the executive actions related to patent assertion entities and U.S. innovation initiatives called for in President Obama’s executive actions on June 4th. See also, Obama on Patent Trolls — Much Ado About Nothing. Other topics open for discussion will include feedback from the previous Software Partnership roundtables held in Silicon Valley and New York; a summary of the written comments received in response to the January Federal Register notice announcing the Software Partnership; proposed next steps by the USPTO; and an interactive discussion session on strategies to improve claim clarity, such as the use of glossaries in patent applications.
If you cannot attend the meeting live, the event will also be viewable live online through the USPTO website. For those who do wish to attend live, the USPTO announcement explains that space will be quite limited and, as a result, RSVPs must be received by September 27, 2013.
On Friday, June 28, 2013, three members of the House of Representatives from Northern California submitted a bill called the Patents and Trademarks Encourage New Technology (PATENT) Jobs Act. The purpose of the legislation is to exempt the United States Patent and Trademark Office from sequestration budget cuts and to allow the USPTO full access to the collected user fees.
The text of the bill is not long. The main provisions contained in Section 1 of the bill under the title “Termination of Sequestration in Fiscal Year 2013 for the Patent and Trademark Office,” says:
“Notwithstanding the presidential order issued on March 1, 2013, under section 251A of the Balanced Budget and Emergency Deficit Control Act of 1985 (2 U.S.C. 901a), on and after the date of the enactment of this Act, the budgetary resources sequestered under such order with respect to the United States Patent and Trademark Office shall be available for obligation for the same purpose and in the same manner as if such order had not been issued. The other section of the bill, Section 2, would exempt the USPTO from sequestration budget cuts for fiscal years 2014 through 2021.”
(Pictured: Rep. Zoe Lofgren)
On Wednesday, March 27, 2013, the Practising Law Institute hosted the New York edition of the all-new USPTO Post-Grant Patent Trials program. This was the second of four stops across America for the program. The first stop was in Chicago on March 4, 2013. The remaining live presentations will be in San Francisco, CA, on April 15, 2013, and in Austin, TX, on April 29, 2013.
The headliner for the New York event was David Kappos, the former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Kappos, now at Cravath, Swaine & Moore, provided an overview of what has been happening at the Patent Trial and Appeals Board (PTAB). The slides were prepared by the USPTO and the presentation was originally scheduled to be delivered by Chief Judge James Smith of the PTAB, who unfortunately had to back out due to sequestration/budget matters.
Kappos ably filled in and was a fountain of useful information on the PTAB, what the Office is doing and why. He was, of course, the head of the Office at the time the America Invents Act (AIA) was passed and was intimately involved with the formulation of the Appeals rules that went into effect at the end of 2011 and the many rules packages dealing with the new post-grant trial procedures that went into effect on September 16, 2012, the one year anniversary of enactment of the AIA.
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…)