Patent Law Practice Center

Current Developments in the Trilateral Patent Offices

James M. Heintz, a partner in the Intellectual Property and Technology practice group at DLA Piper, sent in this article discussing patent harmonization among the European Patent Office, the Japanese Patent Office and the United States Patent and Trademark Office.

In an informative discussion in Washington, DC , the heads of the three trilateral patent offices provided insight into the direction they are heading and summarized recent developments in the three offices.

The Honorable Benoit Battistelli, president of the European Patent Office, the Honorable Yoshiyuki Iwai, commissioner of the Japanese Patent Office, and the Honorable David J. Kappos, director of the United States Patent and Trademark Office, met in late 2010 in a session sponsored by the Intellectual Property Owners Association.

President Battistelli began his remarks by expressing his surprise that more applicants were not using the EPO’s fasttrack procedure (also referred to as the Patent Prosecution Highway). President Battistelli pointed out that fast-track requests comprised only 7 percent of EPO applications in the last year (16 percent of which were applications originating from the US), despite the fact that requesting fast-track treatment does not require any fees and the request is simple. He also noted the need to raise the bar for greater legal certainty that patents issued by the EPO would be enforceable. Finally, President Battistelli reiterated his support for European patents and centralized litigation. (more…)

USPTO To Launch Prioritized Patent Examination Program May 4, 2011

The USPTO recently announced that the agency will launch it’s new prioritized examination system known as “Track One” on May 4, 2011.  Under the program, patent applicants can elect to accelerate examination of their patent applications (if the application meets certain requirements) filed on or after May 4, 2011.  The USPTO will then “prioritize” the handling of your patent application with a goal of reaching a final disposition within twelve months.  If “accorded special status”, the patent application will be placed on the examiner’s special docket throughout its entire course of prosecution before the examiner until a final disposition is reached.  Final Disposition for a twelve month goal means: (1) mailing of a notice of allowance; (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the BPAI, (5) filing of a request for continued examination, or (6) abandonment of the application within 12 months from the date prioritized status has been granted.

To qualify for Track One prioritized status, an applicant must meet certain requirements: (more…)

Cost Benefits Of Concurrent Patent Reexamination

The following post comes from Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action. (more…)

Patent Law Institute: Hon. Sharon Barner’s Keynote

The 5th Annual Patent Law Institute has just kicked off and we are lucky to have Former Deputy Director of Sharon Barner here to give the keynote address on her experience in the United States Patent Office as Deputy Director  including the initiatives taking place in the Patent Office today as per the USPTO Strategic Plan”.  Here are a few of the highlights of Barner’s remarks:

Barner began by saying that a lot of activity was needed at the USPTO to change things believed needed to change.  The number one goal is to  focus our resources and more effectively improve overall operations and the time it takes to get a patent.  As a part of focusing on timeliness, focus on quality of a patent.  PTO needs to be properly funded.  USPTO needs to have sustainable funding model and end to fee diversion.  However, money alone will not solve problems, needs to be well run and well managed.  Spent time crafting “Strategic Plan” at Patent Office. Barner urged all patent practitioners to review the USPTO 2010-2015 Strategic Plan which highlights the USPTO’s goals and initiatives.  Wanted to make sure resources focused on activities that will actually drive down backlog and drive down pendency and they did this by setting priorities.   How are you going to make priorities real when you’re predecessors couldn’t,  we’re going to manage the priorities the way a business would manage priorities.  (more…)

Life in the Fast Lane – Use of the Patent Prosecution Highway

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and  Practice Center Contributor, recently sent in this article he wrote with colleague’s Drew Schulte and Jia Li discussing the Patent Prosecution Highway and the value that can be achieved for those practitioners willing to explore the new program.

In July of 2006, the United States Patent and Trademark Office (USPTO) established a trial program with the Japanese Patent Office, where an applicant with an allowed claim in one office could fast track the examination of a corresponding application filed in the other patent office.  This program paved the way for what would become known as the Patent Prosecution Highway (PPH).[1] Today, the PPH includes patent offices in many of the world’s largest economies and is growing.[2] Despite the USPTO’s estimate of a 94% overall allowance rate for PPH applications as compared to 44% for non-PPH cases when the United States is the Office of Second Filing,[3] practitioners have continued to be wary of using the new program, especially when it comes to leveraging entire patent portfolios.[4]

In part, the hesitation to embrace the PPH reflects a legitimate fear of comparatively untested methods when it comes to patent prosecution. Although patent practitioners deal every day with cutting-edge technology, which innovates constantly, they are often reluctant to try new approaches as patent prosecution is fraught with dangerous liability.[5] However, for those practitioners willing to explore this new avenue, the PPH offers potentially great rewards in terms of easier and faster prosecutions which can provide value-added leverage for a client’s patent portfolios. (more…)