Post Grant Specialist Joins Oblon Post Grant Team
I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new partner, Mr. Kevin Laurence to the Oblon Post Grant Patent Practice Group. Kevin is well known in post grant circles as co-chair of the IPO U.S. Post-Grant Patent Office Practice committee, frequent lecturer and author on post grant topics, and the founding partner of an IP branch office of the Stoel Rives firm.
Kevin joins chemical/bio post grant partners Vince Shier Ph.D and Kirsten Grunenberg Ph.D.
Comprehensive Coverage of Old & New Post Grant Practices
Several former USPTO administrative patent judges now in private practice, including my collegaue Lee Barret, have collaborated to publish the new book Post Grant Patent Practice (BNA). The book is very well done and comprehensively covers the broad range of topics that have defined post grant patent practice for decades, as well as those that are reshaping the future of this rapidly emerging practice specialty. From patent owner mechanisms such as patent reissue practice and certificates of correction to the new patentability trials of the AIA, derivation, supplemental examination, and more, the perspective of these former insiders will serve as an invaluable reference.
Since the enactment of the America Invents Act (AIA) in September of 2011, the “patent reform” embodied by the AIA has been slowly rolling out. In fact, the bulk of the truly significant changes to patent law are only months old, some still weeks away. These changes include the change over to the first inventor to file model on March 16th, and the kick off of the new post grant patent proceedings 6 months back. With so much recent change it would seem premature to consider further changes to patent law until the last round has had time to take effect…but politicians disagree.
Evidently at least one Congressman feels that the AIA does not go far enough to combat patent “troll” lawsuits. Congressman Defazio of Oregon is sponsoring yet another bill entitled “Saving High-Tech Innovators From Egregious Legal Disputes Act.” The bill, like its 2012 predecessor, proposes that the costs (including attorney fees) of certain types of patent lawsuits should be recoverable from the Patentee once the court finds the patent invalid, or not infringed. The 2012 version of the bill was limited to software type inventions and mandated payment for only frivolous suits. Read the rest of this entry »
In recent months there has been much discussion of the USPTO’s decision to open satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley. The Detroit office opened in July 2012 and hosts about fifty examiners and ten administrative patent judges (APJs). A location has been selected for the Dallas-Fort Worth office and the site selection process is underway for the Silicon Valley Office.
As currently managed, the satellite offices are designed to process patent applications, i.e., ex parte prosecution and appeals therefrom. Post grant patent proceedings, save perhaps some patent reissue proceedings, will remain at the USPTO main campus in Alexandria Virginia. That is, the new patentability trials of the America Invents Act (AIA), patent reexamination, supplemental examination and derivation proceedings will be processed at the main campus in Alexandria. Patent reexamination and supplemental examination proceedings are handled at the Central Reexamination Unit (CRU) and the Trial Section of the Patent Trial & Appeal Board (PTAB) handle contested proceedings of the AIA. There do not appear to be any current plans to migrate Contested Proceedings or CRU functionality to satellite offices.
President Decries Software Patent Extortionists
Last week during his YouTube broadcast, President Obama labeled software patent trolls as extortionists. In doing so, he also commented that the recent patent reform only went “half way” to solving the existing patent litigation explosion in this area. Shortly thereafter the Internet was abuzz that perhaps the Administration was considering a new legislative effort.
Perhaps most interesting is the President’s characterization of the previous reform effort as only going “half way.” Can the Administration really be considering a second salvo? Read the rest of this entry »
President Enacts AIA Technical Fix into Law
As reported yesterday by Politico, the President signed a series of bills into law, including H.R. 6621. As a reminder, Congressperson Lamar Smith (R-Tx) sponsored H.R. 6621 to correct several “technical” aspects of the America Invents Act (AIA). The primary technical correction of the Bill is the elimination of the 9 month dead zone that was inadvertently created for newly issued, first to invent patents relative to their availability for Inter Partes Review (IPR). As the technical amendment was enacted into law yesterday, the post grant dead zone has been eliminated.
Functional Claim Drafting Practices Considered by USPTO
Despite public misconceptions to the contrary, software is not patentable. Of course, aspects of software, or “software related” patents exist in which an otherwise statutory apparatus or product is claimed that includes computer implemented functionality. In an effort to enhance the “quality” of these software related patents, the USPTO issued a notice last Thursday in the Federal Register entitled: Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software Related Patents.
The Notice “sets forth several topics to begin the Software Partnership discussion. The first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.”
Reading through the tea leaves, the USPTO appears quite interested in exploring means-plus-function claiming with the software community. Since this style of claiming directly links the disclosed structure of the patent specification (algorithmic in the case of computer implemented features), it may be that the Office is proposing to rein in the scope of software claims by requiring the more narrow claim type. Thus, the “enhancement in quality” may result in future software related patents becoming more difficult to assert based on their narrower scope. To this end, the USPTO proposed the following talking points for the upcoming roundtable: Read the rest of this entry »
H.R. 6621 Clear All Congressional Hurdles
Late last week, the Senate passed H.R. 6621 with amendment (passed days earlier by the House). The Senate amendment removed the provision requiring a USPTO report on the remaining pre-Gatt patent applications (i.e., “submarine patents”). The pre-Gatt provision was the only one that drew any opposition in the House. As such, the amended bill was accepted by the House without objection (late last night) and will now be enacted into law by the President.
As a reminder, the main benefit of the technical amendment is the elimination of the post grant dead zone.
Business-to-Business Initiative Drives Government Interest
Small technology companies and start-ups face a daunting task in enforcing their intellectual property due to the cost prohibitive nature of patent litigation. In year’s past academics and major bar associations would often brain storm as to how these market participants (as opposed to NPEs) might be able to cost effectively get a fair shake in the U.S. patent system. Back in 1989, an idea was floated that perhaps the government could help out by establishing a small claims court of sorts to allow such small players an opportunity to prove their case.
For example, where relatively small amounts of licensing revenue/damages are at stake, (e.g., 3 million or less) it is frustrating for small organizations to be faced with a legal bill of equal value to the potential recovery. Although these goals are far from clear in this week’s Federal Register Notice (here), the USPTO is soliciting commentary on the concept of creating a small claims court that would be voluntary in nature, likely exclude NPEs, and focus on small (a few million or less) business-to-business disputes Read the rest of this entry »
Technical Amendment Passes First Hurdle
Yesterday, the House considered H.R. 6621, a bill to correct and improve certain provisions of the America Invents Act, under a suspension of the rules requiring a two-thirds majority vote for passage. The bill was passed 308-89.
Rep. Rohrabacher spoke out against the GATT study aspect of the Bill (requiring information on the remaining “submarine patents” pending at the USPTO), which might explain the surprising opposition to such an otherwise politically insignificant legislative initiative. Seems Rep. Rohrabacher was concerned about the study revealing information on these otherwise “secret” applications.
In any event, the Bill now heads to the Senate, greatly increasing the odds that it will be passed and enacted in the near term.