Patent Law Practice Center

David Kappos Shares USPTO’s Game Plan for 2012

As Director of the USPTO and Under Secretary of Commerce for Intellectual Property, David Kappos is a busy, busy individual. Just look at the year the USPTO had in 2011: they issued more utility patents last year than they ever have in any year prior, they reduced the backlog of unexamined patent applications to below 665,000, and expanded the Peer-to-Patent (P2P) pilot program to strengthen the patent examination process. And don’t forget about the enactment of the America Invents Act!

Considering the success of 2011, it is of no surprise that Kappos is excited about the prospects of what’s to come for the USPTO in 2012. On Director’s Forum: David Kappos’ Public Blog, Kappos lays out what his game plan is for the agency in the new year. Below are the patent driven highlights: (more…)

USPTO Updates Registration Exam for Patent Practitioners

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

“Patent applicants and examiners will benefit from the updated registration examination because newly registered patent attorneys and agents will have demonstrated familiarity with the most current patent laws, rules and procedures,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

All applicants wishing to practice in patent cases before the USPTO must pass the registration exam consisting of 100 multiple choice questions. The revised exam questions will be based on the Manual of Patent Examining Procedure (MPEP) Edition 8, Revision 8, along with other published USPTO policy and procedure reference materials. Administration of the previous version of the registration examination ceased April 4, 2011.

Click here for the full IPWatchdog article.

 

Current Developments in the Trilateral Patent Offices

James M. Heintz, a partner in the Intellectual Property and Technology practice group at DLA Piper, sent in this article discussing patent harmonization among the European Patent Office, the Japanese Patent Office and the United States Patent and Trademark Office.

In an informative discussion in Washington, DC , the heads of the three trilateral patent offices provided insight into the direction they are heading and summarized recent developments in the three offices.

The Honorable Benoit Battistelli, president of the European Patent Office, the Honorable Yoshiyuki Iwai, commissioner of the Japanese Patent Office, and the Honorable David J. Kappos, director of the United States Patent and Trademark Office, met in late 2010 in a session sponsored by the Intellectual Property Owners Association.

President Battistelli began his remarks by expressing his surprise that more applicants were not using the EPO’s fasttrack procedure (also referred to as the Patent Prosecution Highway). President Battistelli pointed out that fast-track requests comprised only 7 percent of EPO applications in the last year (16 percent of which were applications originating from the US), despite the fact that requesting fast-track treatment does not require any fees and the request is simple. He also noted the need to raise the bar for greater legal certainty that patents issued by the EPO would be enforceable. Finally, President Battistelli reiterated his support for European patents and centralized litigation. (more…)

PTO to Effectively Extend Provisional Applications to 24 Months

The following was written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office will soon unveil a pilot program that is aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. USPTO Director David Kappos wrote about this in the November edition of Inventors Eye, see Providing Inventors More Time and Options. In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months.  That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

The Kappos Administration at the Patent Office has been criticized in some circles for even pursuing this path because it is too complicated, but such criticism smacks of a healthy dose of condescension if you ask me.  It seems far too paternalistic to believe that inventors and small businesses are not savvy enough to figure out what they want and what they need.  After all, the idea of attempting to extend the effective life of a provisional patent application was proposed to Director Kappos by an inventor.   (more…)

Patent Reform: Fantasy or Reality?

Patent Reform is an issue that has plagued the patent community for quite some time.  Will it actually ever happen or is it eternally on hold?  Surprisingly, the Patent Office and it’s deficiencies have gotten some well deserved attention in the media and in Congress during the last week.  Will this attention actually result in Congressional action on Patent Reform during the fall term?  Two of our Practice Center Contributors, Scott Mckeown and Gene Quinn, have passed along articles discussing the recent events and what if anything it may mean for Patent Reform.

Economy Recovery Platform Paving The Way For Patent Reform?

Written by Scott Mckeown (partner at Oblon Spivak and our newest Practice Center Contributor)

With Congress on summer hiatus, and significant election uncertainty coming in the Fall, Patent Reform efforts are seemingly on hold (again). Still, last week, the USPTO was able to secure an additional $139 million in funding. H.R. 5874 permits the USPTO to retain $139 million in fees collected from patent applications and patent maintenance fees for fiscal year 2010 “salaries and expenses.”

Senator Leahy, a backer of S.515, in passing the new PTO funding bill took the opportunity to emphasize the importance of the this perenially pending legislation, noting that more needs to be done to modernize and improve our patent system, which is a crucial component of our economic recovery… This bill [the S. 515 manager’s amendment] will provide the legal structure we need to allow our inventors to flourish. It will improve our economy and create jobs without adding a penny to the deficit. (more…)