Patent Law Practice Center

A new PTO Director will face a patent system at a crossroads

The U.S. patent system is at a crossroads. See The Top 3 Reasons the U.S. patent system is in decline. In both 2016 and 2017, the Chinese government made significant improvements to its patent rules and laws. See China relaxing barriers to software and business method patents. As the Chinese landscape for patents and innovation continues to improve, we have to consider that more innovation might move to China, as investors flee in search of better legal protections – protections necessary to justify the speculative investment in early-stage high-tech innovative companies.

Time is of the essence for the U.S. patent system. The 2017 worldwide patent rankings of the U.S. Chamber of Commerce already shows the United States tumbling from 1st place into a tie for 10th place with Hungary.

With strong and principled leadership, it is not too late to turn the tide and restore the United States patent system to its former glory. With this in mind, I recommend in the strongest terms possible that the person selected as the next Director of the United States Patent and Trademark Office (USPTO) share a vision for a stronger U.S. patent system that is once again the envy of the world.

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Hatch Writes President Over Lack of PTO Director

On Monday, June 2, 2014, Senator Orrin Hatch (R-UT) wrote to President Obama expressing concern with the fact that the United States Patent and Trademark Office has been without a director for more than 16 months. The letter from Senator Hatch to President Obama is reproduced below.

In the letter, Senator Hatch also questions whether USPTO Director Michelle Lee was appointed consistent with 35 U.S.C. § 3(b)(1).

There has not been a Director of the Office since David Kappos left in January 2013. Still, the Director did not nominate Michelle Lee for the post as Deputy Director. There has been much made about this in some circles, some saying that the appointment of Lee was in violation of the law. I don’t see a real problem in this case.

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PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011

Here is this week’s installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.” 

In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination.  According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance.  Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed. (See also IPWatchdog’s post “Patent Office Orders Reexamination of Tax Related Patent” for more on this reexamination story). (more…)

On the Record with Former PTO Director Nick Godici – Part 1

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

On Tuesday, June 29, 2010, I had the opportunity to sit down on the record with Nick Godici, the former Acting Director of the United States Patent and Trademark Office and Former Acting Undersecretary of Commerce for Intellectual Property. Godici is one of only a small handful of individuals to have seen the Patent Office on every level, from newest patent examiner to SPE to Group Director, Commissioner for Patents and ultimately to Director of the USPTO.  I have wanted to sit down with him for some time now, and some mutual friends of ours, who are mentioned in the interview in passing, made introductions.  I was put in touch with Godici and now the rest is history, as they say.

I thoroughly enjoyed my time with Godici, and we managed to get into a wide variety of issues that ranged from his early days as a patent examiner, his patent examination philosophy and approach, the role of the USPTO, the Patent Granting Authority versus the Patent Denial Authority, examiner training, building relationships between patent examiners and the patent bar, the PTO work from home initiative, inequitable conduct, the Bilski decision and what the USPTO is now likely doing to address that, the parallels between the Reagan Administration and the Obama Administration in terms of patent and innovation policy and exactly what it is like to be the Commissioner of Patents and the Director of the Patent Office, and much more. Oh yes, we also talked about his getting a call from Secretary of Commerce Gary Locke last summer and returning to the Patent Office for a few months as a special adviser at the request of the Obama Administration. (more…)