Patent Law Practice Center

USPTO Gets Support for National Pro Bono Program

In the name of promoting innovation and equal access to the patent application process, the America Invents Act provides that the USPTO should  “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.”  As such, the USPTO has wasted no time in implementing the programs. A pilot pro bono patent program was established in Minnesota in 2011, and another 5 programs are scheduled to begin in 2012. (more…)

Scott McKeown on Post Grant Strategies

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:

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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.

New PTO Initiative Gives More Opportunities to Amend After Final

Last week, the United States Patent and Trademark Office (USPTO) announced the start of the After Final Consideration Pilot, a new, internal pilot program geared toward advancing the goal of compact prosecution by allotting additional time to examiners to consider applicant submissions after final rejection. Gene Quinn, IPWatchdog author, Practice Center contributor, and PLI Patent Bar Review instructor, published an article discussing the After Final Consideration Pilot and how applicants may avail themselves of it.

Here is a brief excerpt from Gene Quinn’s article:

Over the past several months, including at the PLI Patent Law Institute and at the MIP Patent Forum in Washington, DC, last week, former Commissioner for Patents Bob Stoll took the blame for the growing RCE backlog.  Those familiar with patent practice know that RCEs were previously placed at the front of the line in the patent examiner’s active work pile.  Stoll changed this, placing RCEs on the new work docket, which effectively lengthened RCE consideration from several months to several years.  This was done to expedite patent examiners picking up new cases, which worked, but came at the expense of what is now over an 85,000 case RCE backlog.  In retrospect Stoll says moving RCEs was probably a mistake.  It has taken the USPTO well over a year to do anything about this because of the need to negotiate with the union over additional examiner time and credit for dealing with After Final submissions in the pilot program.

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

To read the article in its entirety, please visit IPWatchdog.com.

Top 5 Patent Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patents Post-Grant: Discovery Practices Before the Patent Trial & Appeal Board – This post discusses how the USPTO has fleshed out the meaning of “limited discovery” as a result of the new proceedings established by AIA, Post Grant Review and Inter Partes Review, and how the include “limited discovery”.

2) IP Watchdog: Chakrabarty Controls on Isolated DNA Sequences, not Mayo* – This post, written by guest author Eric W. Guttag, shares a perspective on the Supreme Court’s decision in Prometheus and its remand of AMP and what their potential impact may be when considering Diamond v. Chakrabarty.

3) Patently-O: Self-Replicating Inventions: Supreme Court asks for Government’s Views in Monsanto Patent Exhaustion Case – This post takes a look at Bowman v. Monsanto and how the the Supreme Court has invited the Solicitor General to file briefs expressing the views of the United States in the case.

4) PatentDocs: Record Number of PCT Applications Filed in 2011 – This post reports on WIPO’s announcement that patent filings under the Patent Cooperation Treaty would be up again in 2011, and that the number of international patent filings would set a new record.  According to the WIPO announcement, an estimated 181,900 PCT applications were filed last year.

5) IP Kat: Battle of the Tablets hits the UK – Samsung seeks declaration of non-infringement of Apple Registered Community Design – This post shares the on-going dispute between Apple and Samsung regarding the alleged infringement of certain Samsung tablets and how the dispute finally reached the courts in the UK.

Challenge to Social Networking Patent Among the Reexamination Requests Filed Week of March 26, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Earlier this year, Real Time Social Inventions sued ten companies, including Facebook and Oracle, for infringement of U.S. Patent No. 7,853,881.  Now, RT Social Networks has requested reexamination (see inter partes Request No. (2)), stating that it is the only real party in interest, even though RT Social Networks is not one of the defendants named in those infringement actions. 

An unidentified party has requested reexamination of an Intellectual Ventures voice recognition patent (see ex parte Request No. (8)).  There does not appear to be a parallel District Court case, continuing a recent trend of reexamination being requested against “assertion entities,” even in the absence of litigation.

Apple was in the news, requesting reexamination of the VirnetX patent (see inter partes Request No. (3)) that was recently added to the infringement case involving the two companies (as well as Cisco) in the Eastern District of Texas.

(more…)