Patent Law Practice Center

The New Law the USPTO is Thankful for this Thanksgiving

In the spirit of expressing gratitude this Thanksgiving holiday, Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, shares the newest law for which the USPTO is thankful. On November 18, 2011, President Obama signed into law H.R. 2112, the Consolidated and Further Continuing Appropriations Act. This bill provides the USPTO with official spending authority through the end of September 2012 (the end of the fiscal year) and the ability to spend up to $2.7 billion dollars. According to Scott’s post,  (more…)

Trilateral Patent Offices Step Closer on Patent Harmonization

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. In an effort to continue to move forward in the absence of true global cooperation, the Trilateral Offices at their 29th Trilateral Conference considered proposals to reduce the burden for patent applicants by increasing cooperation on procedures and improving the exchange of procedural information.

Meeting for their Annual Trilateral Conference near Paris, France, the heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.

Click here for Gene Quinn’s full article on IPWatchdog.

Tech Giants Weigh In On USPTO Post Grant Rule Making Effort

Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.

Group 2 Comments on AIA Implementation Due to USPTO Tomorrow

As pointed out last week, the USPTO has been busy fashioning new rules to implement the various provisions of the Leahy-Smith America Invents Act (AIA). Comments on Group 2 Rules, which include Inter Partes Review & Post Grant, must be submitted by November 15th.

Last week, Cisco, Google, Verizon and Intuit submitted joint comments (here) directed solely to the implementation of post grant proceedings, namely, Inter Partes Review (IPR) and Post Grant Review (PGR). Not surprisingly, these tech giants (i.e., targets of serial patent infringement suits) are especially supportive of post grant mechanisms as an alternative to traditional litigation. The Group’s comments encourage the Office to adopt liberal standards for initiation of IPR and PGR, limit the potential estoppel affect of a concluded proceeding, and provide procedural flexibility for petitioners. (more…)

Press Release: Commissioner for Patents Robert Stoll to Retire from Government Service After 29 Years at the USPTO

As Per USPTO Press Release:

Deputy Commissioner Margaret “Peggy” Focarino to be Named Commissioner for Patents

WASHINGTON – Commissioner for Patents at the United States Patent and Trademark Office (USPTO) Robert L. Stoll has announced his intention to retire from the agency effective December 31, 2011. Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has announced that he will nominate current Deputy Commissioner for Patents Margaret “Peggy” Focarino to the position of Commissioner for Patents once Commissioner Stoll’s resignation becomes effective.

Stoll was appointed Commissioner for Patents by Under Secretary Kappos in October 2009. In his 29 years with the Patent and Trademark Office Stoll has held several leadership posts including training foreign officials on all aspects of intellectual property (IP), overseeing the Office of Enforcement, and directing federal legislative priorities for the Agency. In his tenure as Commissioner for Patents, Stoll was in charge of implementing initiatives to improve the speed and quality of the patent review process, and was instrumental in reducing the patent application backlog to under 670,000. Stoll also served as a principal liaison to representatives of government, academia and industry in order to raise awareness of the critical role patents play in economic development, and played a key role in the USPTO’s effort to enact historic patent reform legislation. (more…)

Point – Counterpoint: The Debate Over Prior User Rights

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Since prior user rights first came up as an issue in the patent reform debate I have been opposed to the idea.  Whether I like prior user rights or not, the reality is that prior user rights are now a part of U.S. patent law.  Nevertheless, the debate goes on about whether prior user rights are a good idea.  In fact, the United States Patent and Trademark Office is tasked through the America Invents Act with conducting a Prior User Rights Study.  To facilitate this study a public hearing on prior user rights was held on October 25 in the Madison Auditorium at its Alexandria, Virginia campus of the USPTO.

With this in mind I thought I would once again revisit prior user rights. One of the arguments I have heard recently supporting prior user rights is that a corporation that is going to invest billions of dollars into a facility should know that their investment is safe and that the plant can’t be shut down by a later filed patent application.  This argument is so specious as to be nearly laughable if you ask me.  This strikes me as just more of corporate America wanting the government to save them from themselves.

Click here for IPWatchdog’s full article.