Patent Law Practice Center

USPTO to Host Software Partnership Meeting at Berkeley Law

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) recently announced that it will host its next Software Partnership Meeting on Thursday, October 17, 2013, at the U.C. Berkeley School of Law in Berkeley, California.

The purpose of the meeting, among other things, is to allow senior USPTO officials to provide an overview of the executive actions related to patent assertion entities and U.S. innovation initiatives called for in President Obama’s executive actions on June 4th. See also, Obama on Patent Trolls — Much Ado About Nothing. Other topics open for discussion will include feedback from the previous Software Partnership roundtables held in Silicon Valley and New York; a summary of the written comments received in response to the January Federal Register notice announcing the Software Partnership; proposed next steps by the USPTO; and an interactive discussion session on strategies to improve claim clarity, such as the use of glossaries in patent applications.

If you cannot attend the meeting live, the event will also be viewable live online through the USPTO website. For those who do wish to attend live, the USPTO announcement explains that space will be quite limited and, as a result, RSVPs must be received by September 27, 2013.

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House Bill Would Exempt PTO from Sequestration

On Friday, June 28, 2013, three members of the House of Representatives from Northern California submitted a bill called the Patents and Trademarks Encourage New Technology (PATENT) Jobs Act. The purpose of the legislation is to exempt the United States Patent and Trademark Office from sequestration budget cuts and to allow the USPTO full access to the collected user fees.

The text of the bill is not long. The main provisions contained in Section 1 of the bill under the title “Termination of Sequestration in Fiscal Year 2013 for the Patent and Trademark Office,” says:

“Notwithstanding the presidential order issued on March 1, 2013, under section 251A of the Balanced Budget and Emergency Deficit Control Act of 1985 (2 U.S.C. 901a), on and after the date of the enactment of this Act, the budgetary resources sequestered under such order with respect to the United States Patent and Trademark Office shall be available for obligation for the same purpose and in the same manner as if such order had not been issued. The other section of the bill, Section 2, would exempt the USPTO from sequestration budget cuts for fiscal years 2014 through 2021.”

(Pictured: Rep. Zoe Lofgren)

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Kappos Gives Presentation at PLI Post-Grant Program

On Wednesday, March 27, 2013, the Practising Law Institute hosted the New York edition of the all-new USPTO Post-Grant Patent Trials program. This was the second of four stops across America for the program. The first stop was in Chicago on March 4, 2013. The remaining live presentations will be in San Francisco, CA, on April 15, 2013, and in Austin, TX, on April 29, 2013.

The headliner for the New York event was David Kappos, the former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Kappos, now at Cravath, Swaine & Moore, provided an overview of what has been happening at the Patent Trial and Appeals Board (PTAB). The slides were prepared by the USPTO and the presentation was originally scheduled to be delivered by Chief Judge James Smith of the PTAB, who unfortunately had to back out due to sequestration/budget matters.

Kappos ably filled in and was a fountain of useful information on the PTAB, what the Office is doing and why. He was, of course, the head of the Office at the time the America Invents Act (AIA) was passed and was intimately involved with the formulation of the Appeals rules that went into effect at the end of 2011 and the many rules packages dealing with the new post-grant trial procedures that went into effect on September 16, 2012, the one year anniversary of enactment of the AIA.

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USPTO to Hold Roundtable Discussions on RCE Practice

By: Gene Quinn (IPWatchdog.com)

As you may be aware, there is a growing number of unexamined Requests for Continued Examination (RCEs) clogging the Patent Office docket. In fact, as of the end of Fiscal Year 2012, there were 95,200 RCEs that were awaiting examiner consideration, which is almost double the 48,680 that were awaiting examiner action at the start of Fiscal Year 2011.

The USPTO is concerned about the RCE backlog and the agency, in collaboration with the Patent Public Advisory Committee (PPAC), will host a series of public roundtables to solicit stakeholder input on ways the agency can reduce the number of Request for Continued Examination (RCE) filings.
The initiative is part of the USPTO’s effort to reduce patent application pendency. In order to accomplish this, the USPTO is seeking to better understand the root causes for filing RCEs and plans to use the information gathered during the public events to design additional programs and initiatives aimed at reducing RCE filings and backlog. (more…)

USPTO Seeks Comments on Patent Small Claims Proceedings

By: Gene Quinn (IPWatchdog.com)

The United States Patent and Trademark Office (USPTO) is seeking comments regarding whether the United States government should develop a small claims mechanism for patent enforcement. The USPTO is interested in receiving comments from the public regarding whether there is both a need and a desire for this type of proceeding, in what circumstances such a small claims proceeding would be needed (if any), and what features any adopted small claims proceeding should include.

The Federal Register Notice explains that the USPTO’s interest in examining the possibility of adopting a patent small claims procedure relates to recent discussions the agency has had with Federal judges, private practitioners and various stakeholder groups and bar associations.

Specifically, the USPTO is interested in receiving comments directed to what should be the core characteristics of a patent small claims proceeding, if any. The USPTO is interested in comments on matters relating to appropriate subject matter jurisdiction, venue, case management, appellate review, and available remedies. Stating what should otherwise be obvious, the Federal Register Notice also explains that if a small claims proceeding is adopted, it must conform to the requirements of the U.S. Constitution. The USPTO specifically cites the Seventh Amendment as an illustrative example. Thus, to be seriously helpful, any comments provided should be mindful of the fact that the Constitution does have provisions relative to trials that cannot be ignored.

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