Patent Law Practice Center

Hearing on Examiner Fraud Leaves No Resolution

In mid-September, the House Judiciary Committee held what seemed like it was going to be an oversight hearing to address the allegations of timekeeping fraud by patent examiners made in the Inspector General’s recent report. Prepared statements released in advance of the hearing talked tough, but that was pretty much it. Insofar as getting to the root of the problems identified in the IG report the hearing turned out to be a big, fat nothing.

Congressman Jerrold Nadler (D-NY) (pictured left at the hearing) defended the Office in his prepared remarks, explaining that there were flaws with the methodology of the IG study, which make the conclusions unreliable. For example, it is entirely possible that patent examiners were indeed working while they were not logged into the Patent Office computer systems. After all, examination is a job that requires a lot of reading and contemplation, much of which might occur without being logged into the server. Of course, that, at best, means there is no way to know whether patent examiners are working or not, which is why the IG report recommended the sensible step of requiring patent examiners to log into the Office computer systems whenever they are working.

(more…)

Alice Experts and the Return of Second Pair of Eyes to the PTO

“I have not yet run into an Art Unit that does not have someone designated as an Alice expert,” explained JiNan Glasgow of Neopatents. “They won’t always tell you who it is, but they all say they have an Alice expert.”

While discussing the importance of doing interviews in every single case, Glasgow explained that although it is not something that has been generally publicly disclosed by the Patent Office, “in every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even if they are ready to allow a case, nothing can be allowed without the approval of that Alice expert.” This applies to TC 3600 and beyond, according to Glasgow.

If what examiner after examiner has told Glasgow is correct, this means there is essentially a return to the so-called “second pair of eyes” review at the Patent Office.

(more…)

Patent Office Releases Interim Bilski Guidelines

Written by Gene Quinn (of IPWatchdog.com 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…)

Patent Claim Writing: Insight Into The Drafting Process

Last week, I attended PLI’s Fundamentals of Patent Prosecution 2010 Program: A Boot Camp for Claim Drafting and Amendment Writing in New York City.  I was fortunate to hear an elite panel of experienced patent prosecutors  talk about critical patent application topics.

Amongst the group, was Robert Faber, partner at Ostrolenk Faber LLP and one of our Practice Center Contributors.  He spoke about claim drafting and gave some valuable tips as to how to write a well written claim.  Faber said, ” you want to protect the invention in a claim such that you cover the concept the inventor has in mind and no matter how the particular concept  is executed in years to come.”  Faber advises that you should always describe the concept as broad as possible.

Below is an article Faber passed along, “Patent Claim Writing“, that helps us understand the basics of claim drafting, using a simple example:

United States Patents serve the important national goal of encouraging developments in the useful arts and sciences by granting inventors and their assignees patents that afford a limited time monopoly in their inventions in exchange for their disclosing the invention and how to practice it to the public.  In the patent document, patent practitioners and patent owners= attorneys try to adequately disclose the invention and at least the best mode of practicing the invention sufficiently to enable persons skilled in the art to themselves practice the invention without undue experimentation. 35 U.S.C. ‘ 112, para. 1.  That is the minimal disclosure that must be provided. (more…)

Robert Hulse Discusses USPTO’s Patent Processing Initiative

I’m sure many of you are still trying to weed through the detailed call for comments on the USPTO’s Three-Track Patent Processing Initiative that was published in the Federal Register last week.  It will be interesting to see the comments that come in from the Patent Community and how the PTO’s proposal will evolve based on the comments.  I had an opportunity to ask Robert Hulse, partner at Fenwick & West, LLP and Contributor on the Patent Center, some general questions that I had regarding the PTO’s initiative:

Are you in favor of or opposed to Three-Track proposal?  Do you believe it’s an improvement from the one-size-fits-all patent system?

Generally, I think this proposal will be good for patent applicants, but I would caution that it is just a general proposal with no specific rules.  Once the PTO published the proposed rules for implementing the Three-Track system, we will have a better understanding of how beneficial the system will be for applicants and how likely this system is to achieve the PTO’s stated goals of reducing pendency while maintaining quality examination. 

 For example, the rules may impose a high fee or otherwise place onerous requirements on applicants to take advantage of the prioritized track, Track 1.  In this case, most applicants simply wouldn’t take advantage of Track 1, which would reduce the effectiveness of the program.  This is the case with the current accelerated examination procedure, which requires a supporting document (the Accelerated Examination Support Document, or AESD) that places a tremendous burden on the applicant. (more…)