USPTO to Hold Roundtable Discussions on RCE Practice

Screen Shot 2013-02-11 at 11 50 14 AMBy: Gene Quinn (

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…)

USPTO Seeks Comments on Patent Small Claims Proceedings

By: Gene Quinn (

The United States Patent and Trademark Office (USPTO) is seeking comments regarding whether the United States government should develop a small claims mechanism for patent enforcement. The USPTO is interested in receiving comments from the public regarding whether there is both a need and a desire for this type of proceeding, in what circumstances such a small claims proceeding would be needed (if any), and what features any adopted small claims proceeding should include.

The Federal Register Notice explains that the USPTO’s interest in examining the possibility of adopting a patent small claims procedure relates to recent discussions the agency has had with Federal judges, private practitioners and various stakeholder groups and bar associations.

Specifically, the USPTO is interested in receiving comments directed to what should be the core characteristics of a patent small claims proceeding, if any. The USPTO is interested in comments on matters relating to appropriate subject matter jurisdiction, venue, case management, appellate review, and available remedies. Stating what should otherwise be obvious, the Federal Register Notice also explains that if a small claims proceeding is adopted, it must conform to the requirements of the U.S. Constitution. The USPTO specifically cites the Seventh Amendment as an illustrative example. Thus, to be seriously helpful, any comments provided should be mindful of the fact that the Constitution does have provisions relative to trials that cannot be ignored.


OED Takes Action on Unauthorized Practice of Law

I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic this year is ethics, and those who attend my presentation live or via webcast will earn 1 ethics CLE credit. In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.

One of the cases from 2012 that has caught my attention is The Matter of David P. Gaudio, which was decided on December 12, 2012, and was the last action taken by OED during 2012.


Kappos Stepping Down at USPTO

With no notice to the public, and after the Senate was reported to have adjourned for their August recess, on Friday, August 7, 2009, David Kappos was confirmed as Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.  It was with that inauspicious start that Director Kappos came to power at the USPTO.  At the time of Kappos’ confirmation I wrote:  ”I think getting him in place sooner rather than later is exactly the right thing to do.  Nevertheless, I am not a fan of government rushing so fast that they forget basic principles of open government.” See Kappos Confirmed as USPTO Director. I’m still not a fan of what I have at times referred to as “government by ambush,” but over the years since Kappos’s confirmation, it became exceptionally clear that President Obama made exactly the right pick for the USPTO.

Early in the day on Monday, November 26, 2012, Kappos announced internally at the USPTO that he has decided to step down and leave the agency. The end of the Kappos era will take place sometime at the end of January 2013.

“I am honored to have served this administration by leading the USPTO,” said Kappos. “I believe we have made great progress in reducing the patent backlog, increasing operational efficiency, and exerting leadership in IP policy domestically and internationally. Thanks to the entire USPTO staff for their dedication and hard work. I wish them the very best as they continue their efforts to support the U.S. economy by promoting and protecting innovation.”


Rambus Loses Synchronous Memory Device Method in Reexam

by controlarmsRambus Inc. was on the wrong end of a Federal Circuit decision recently when the CAFC, per Chief Judge Rader, upheld the decision of the Board of Patent Appeals and Interferences in a reexamination in which claim 18 of Rambus’s U.S. Patent No. 6,034,918 was found invalid as anticipated. See In re Rambus, Inc. The ’918 patent relates to a method of controlling a memory device is disclosed wherein the memory device includes a plurality of memory cells.

Judge Rader, writing for a unanimous majority that also included Judge Linn and Judge Dyk, concluded that substantial evidence supported the PTO’s determination that claim 18 reads on the “memory module” in the prior art.