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

Top 5 Patent Law 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) IPWatchdog: Patent Filings Up Worldwide, Outpacing GDP Growth – This post discusses the new report published by WIPO that shows intellectual property filings worldwide rebounded strongly in 2010 after a considerable decline in 2009; actually, the recovery in IP filings was stronger than the overall economic recovery. The post provides growth statistics from filings all over the world, and then considers whether this increased inventive activity is sustainable in light of the overwhelming backlogs faced by Patent Offices around the world.

2) Green Patent Blog: USPTO Green Tech Pilot Program Begins Final Descent – This post reports on the U.S. Patent and Trademark Office announcement that its Green Technology Pilot Program would be extended for three months but “will soon draw to a close.” The program is being extended through March 30, 2012 or until 3,500 applications are accepted onto the fast track. This post provides links to more information on the issue and how to get placed on the application fast track.

3) 2011 Was Quite a Year – Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Dave Kappos shares on his public blog about the accomplishments and milestones that occurred for IP and the USPTO in 2011. For a summary of all that occurred at the USPTO in regards to its initiatives, programs, and statistical successes this past year, this blog post from Kappos is a good place to start.

4) Foss Patents: Workarounds and Designarounds are What Steve Jobs Suggested to Google and its Device Makers – This post discussed the logistics behind patent filings and litigation, and why cases like the recent Apple v. HTC matter. According to the article, companies like Apple, “…can only keep bringing new assertions as long as their adversaries don’t win rulings that make a quick settlement on the basis of a cross-license a necessity.”

5) The IPKat: Recording a Patent Licence: Is There a Reason for Doing So? – This post explores the issue of recording  a patent license on various national registries.  The post makes contrasts and comparisons to filing trademark rights internationally to the requirements of filing patent licenses internationally, and discusses whether or not such endeavors are necessary and worthwhile.

On behalf of the Patent Law Practice Center, have a wonderfully merry holiday weekend! 

The Role for Open Source in Paradigm Shifting Innovation

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

My writings about open source and software patents have earned me a special place in the hearts and minds of those who harbor irrational hatred of software patents. But I am here to tell you that open source is not all bad and, in fact, should be embraced. Open source, however, is hardly something new to the patent community. Perhaps it is better to say that where open source software is heading is nothing new, and it will come as a shock to those who hate patents, but patents will be completely necessary in order for the open source community to continue to advance and live up to its full potential.

Of course, many in the open source community simply do not want patents and would rather they go away altogether. They choose to believe that “innovation” is synonymous with “independent creation,” which is just straight up intellectually dishonest. In order to innovate one must create a new device or a new process. Simply stated, copying the work of others is not innovative; and neither is ignoring what others have done and independently creating something with careless disregard of whether it is new or used. (more…)

Interview Exclusive: USPTO Director David Kappos

Written by Gene Quinn (of and Practice Center Contributor)

On Monday, July 19, 2010, I was granted behind the scenes access to the United States Patent and Trademark Office, and was allowed to follow USPTO Director David Kappos throughout the day as he went from meeting to meeting. I have already chronicled much of the events of the day in the previous article– Behind the Scenes:  A Day in the Life of David Kappos. At the end of the day I was granted a 30 minute interview with Director Kappos, which appears below.

In this interview Kappos discusses with me his management style, his famously long hours, how he manages to inspire the Office to work harder than ever before, his efforts to get funding for the Office, how the USPTO can help innovators create new businesses and new jobs, and how to inspire young people to do public service. We also learn that he and Judge Rader share the same favorite movie (see Judge Rader Interviewat the end), he likes Star Trek and Star Wars equally (an astute political answer no doubt) and the famous American inventor he would like to meet is a “Mount Rushmore” inventor.

In terms of interview mechanics, I was joined in Director Kappos’ office by Drew Hirshfeld, Chief of Staff, and Peter Pappas, Chief Communications Officer and Kappos’ Senior Advisor.

Now, I proudly present my interview with Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, David Kappos.

QUINN: Thank you very much Director for taking the time at the end of this day.

KAPPOS: You Bet!

QUINN: I appreciate your giving me the opportunity to get an inside view of the PTO. And one of the things I try to do whenever I sit down and chat with people is to get a behind the scenes look. I got a good look today but one of the things I’d like to ask you about, since you spent so many years in the private sector, is what management techniques have you brought from the private sector into the government? (more…)

Patent Office Releases Interim Bilski Guidelines

Written by Gene Quinn (of and Patent Center Contributor)

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

These interim guidelines build upon the memo sent to the examining corps the day the Supreme Court issued its decision in Bilski v. Kappos, and is intended for use by Office personnel when determining subject matter eligibility under 35 U.S.C. 101. According to the Federal Register Notice, this guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.

Significantly, the guidelines explain:

Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 to the detriment of considering an application for compliance with the requirements of Sec. Sec. 102, 103, and 112, and should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.

This should be music to the ears of the patent bar and applicants who were previously stopped dead in their tracks by a seemingly insurmountable 101 rejection. (more…)