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PTAB Proposals on House Side

Last week, I summarized the PTAB modifications proposed in the Senate’s Patent Act” (S.1137).  While there is an expectation that at least the House will try to bring “Innovation Act” (H.R. 9). to the floor for a vote, meaningful progress seems unlikely. Opposition to the bills has ramped up in recent days from conservative groups, and proponents of competing bills.  Coupled with the looming five week summer recess, it is inevitable that  Congress will kick the proverbial can down the road.

As pointed out previously, a rule package from the USPTO is expected in the July-August time frame that could moot many of these issues.  With that in mind, a delay in legislative action would be prudent.

That said, here are the current proposals of H.R. 9 that are directed at PTAB practice.

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Continue Reading PTAB Cheat Sheet for House Bill

Should Systemic Changes to The Patent System Be Undertaken in Response to Bad Actors?

Efforts to enact patent reform (as well as the America Invents Act of 2011) are/were largely driven by the perception that the patent system is being abused by bad actors. Currently, many of the most established technology companies in the world are routinely sued for patent infringement by small/medium sized patent holders. The larger, established targets of these lawsuits consider these smallish companies “patent trolls.” They insist that the current legal system is enabling trolls to inflict legal expense as a form of extortion in exchange for license payments. On the other side of the equation is the small/medium sized patent holders that claim the present system is necessary to ensure a fair shake for all innovators, regardless of size or business. And, that the present system has existed for decades to the benefit of big business. 

That is, pure licensing entities characterize the debate as being about who they are instead of their conduct. In that sense it reminds me a lot about of the debate that raged in the wake of the O.J. Simpson trial. 
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Continue Reading O.J. Simpson & Patent Reform

Congress Clings to Familiar Patent Reform Issue 

As we approach the witching hour of mid-term elections, Congress begins to turn back to the business of law making. With so few legislative initiatives having meaningful bipartisan support, and a lame duck executive eager to appear — well, not so lame, patent reform offers political opportunity.

Something wicked this way comes.
Continue Reading Renewed Patent Reform Chatter, Why?

Planned Silicon Valley Office in Limbo

Seems Congress is currently winning the never ending fee diversion battle with the USPTO. As a result, efforts to expand USPTO satellite office to Dallas, Denver and Silicon Valley have been significantly slowed. While permanenet office locations in Dallas and Denver have been identified, the search for a permanent …

After Final USPTO Initiative Retooled

Some pre- grant news of note this week. Last Friday the USPTO announced the After Final Consideration Pilot Program 2.0 (Federal Register Notice here). The revised pilot program modifies the initial concept by introducing a patent examiner feedback component.

Recall that the USPTO launched version 1.0 as the  “After Final Consideration Pilot” (AFCP) to foster compact prosecution and to slow the growing RCE backlog. The pilot program allotted additional productivity time to patent examiners in exchange for their consideration of after final amendments that might result in allowance of the application. Prior to the pilot program even amendments requiring nominal further consideration were routinely denied under 37 C.F.R. § 1.116.

Under the terms of the first version of the pilot, examiners decided whether the after final amendment could be fully considered, including any additional search required, within the three hour time limit provided for by the program. (i.e., fully considered and allowed). There was no need to file any special request in the previous version of the program.

Recognizing that some examiners were treating such submissions inconsistently, and that unsuccessful amendments proceeded along the normal course without any additional added value (e.g., acknowledgment/feedback from the examiner), the USPTO has provided for examiner further communication in version 2.0.
Continue Reading After Final Rejection Pilot Program Revamped by USPTO