Lawmaker Seeks to Expand Post-Grant Reviews

Senator Charles Schumer recently introduced legislation that would expand the scope of covered business methods eligible for post-grant review.  The “Patent Quality Improvement Act of 2013” would also remove the sunset provision and make the program permanent.

Post-grant review procedures allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Schumer’s bill would expand the availability of post-grant review by amending the definition of “covered business methods” to remove the phrase “financial product or service.” The new definition would read as follows:

IN GENERAL- For purposes of this section, the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of an enterprise, product, or service, except that the term does not include patents for technological inventions. (Emphasis added)

If the bill passes, it would then be up to the USPTO to provide precise definitions for the new terms.  While Senator Schumer has stated that the bill would “crackdown on ‘patent trolls’” by providing “small technology start-ups with the opportunity to efficiently address [infringement suits] outside of the legal system,” it has the potential to benefit a wide variety of patent holders.

In addition to this bill there are several others that are pending votes as well:

Manufacturing Innovation in America Act of 2013 (H.R. 2605)

Patent Abuse Reduction Act of 2013 (S. 1013)

End Anonymous Patents Act (H.R. 2024)

Patent Litigation and Innovation Act of 2013 (H.R. 2639)

MODDERN Cures Act of 2013 (H.R. 3091)

PATENT Jobs Act (H.R. 2582)

STOP Act (H.R. 2766)

PACES Act (S. 1478)

PARTS Act (S.780)

Medical Innovation Prize Fund Act (S. 627)

I will keep you updated as the bills are passed or defeated.

How Can I Help?

For detailed advice about post-grant proceedings, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Jury Still Out on Post-Grant Review

Post-grant review became available on September 16, 2012, along with several other America Invents Act provisions. However, the jury is still out on the potential impact of the new method to challenge a patent’s validity.

The new post-grant review procedures allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Post-grant review is also designed to proceed quickly. Under the rules established by the U.S. Patent and Trademark Office, post-grant review proceedings should be completed within one year of their commencement. In addition, although it contains several aspects of litigation, including limited discovery, protective orders, and settlement, it should cost considerably less.

Challengers may also have a better chance of success. While courts presume that patents are valid unless “clear and convincing” evidence demonstrates otherwise, there is no similar presumption in post-grant review. Rather, patents are invalidated based on a preponderance of the evidence.

Although post-grant review certainly has substantial benefits, there are several limitations that may impact how widely it is used. First, challengers must act quickly. The proceedings must be commenced within nine months of a patent’s issuance. More importantly, the petition must include all of the evidence needed to prove invalidity.

In addition, post-grant review has several important implications when it comes to estoppel. Estoppel applies to any invalidity claims that were raised or reasonably could have been raised during the post-grant review. Because the grounds available for challenging invalidity are so broad during post-grant review, estoppel can severely handicap any subsequent litigation. Unlike inter partes reexamination, estoppel applies not only to district court litigation, but also to all USPTO and International Trade Commission proceedings.

Post-grant review is currently only available for “covered business-method patents,” and it will be some time before it expands to all patents. Therefore, the full impact of the new process will likely not become evident for several years.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

What Does First-to-File Patent Mean for Inventors?

On March 16, 2013, the United States officially moved from a “first-to-invent” system to a “first-inventor-to-file” system. The switch is one of the most significant changes under the America Invents Act. Under the new patent rules, the first filed application for an invention has priority over subsequently filed applications, regardless of which applicant was first to invent.

For inventors, it is now all about timing. Applications filed before March 16, 2013 will follow the old system under which the first to invent will often prevail. However, applications filed after the implementation date that do not claim priority to an application filed prior to March 16, 2013 will be prosecuted under the new law.

Given the potential downsides to the new first-to-file system, inventors should consider these important points:

  • First, it may be more difficult to obtain a patent under the new system. The new rules under the AIA expand the range of disclosures that will be considered prior art, making it more difficult to successfully secure a patent. The existing one-year grace period, which eliminated some prior art references, is also more limited under the new rules.
  • In addition, it may also be more difficult to defend a patent application because patents filed under the new system are more susceptible to invalidity challenges. As I have previously discussed, the new post-grant review proceedings allow patents under the first-to-file system to be challenged in the first nine months after issuance.  Also, invalidity challenges may be brought on a wide variety of grounds that were previously reserved for litigation.
  • Finally, there will also be a learning curve for patent applicants, USPTO examiners, and the courts, all of which are accustomed to the old system. So, to avoid the uncertainty that exists, if you have an application that can claim priority before March 16th, 2013, you may want to consider filing your non-provisional patent application taking priority from that provisional patent application.

How Can I Help?

If you have any questions about the timing of your patent application, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

How Long is My Patent Term?

After you have spent all the time an effort to get your patent granted, determining the length of  time your patent rights are valid is the next step.

Normally, your patent term runs for 20 years from the filing date of the earliest U.S. application to which priority is claimed.  However, that isn’t the whole story.  Various issues can arise during the prosecution of your patent, so adjustments are made to the patent term.

As you might expect, this can make determining how long you patent rights exist a bit more difficult.
Fortunately, the U.S. Patent and Trademark Office recently announced a new tool for patent holders. The online calculator enables members of the public to estimate the expiration date of a utility, plant, or design patent.
The tool can help determine if the patent term has been shortened or extended by a number of factors, including:
•    Type of application (utility, design, plant);
•    Filing date of the application;
•    The grant date of the patent;
•    Benefit claims under 35 U.S.C. § 120, 121 or 365(c);
•    Patent term adjustments and extensions under 35 U.S.C. § 154;
•    Patent term extensions under 35 U.S.C. § 156;
•    Terminal disclaimer(s); and
•    Timely payment of maintenance fees.

The USPTO’s new calculator tool “provides a best estimate of a patent’s expiration date, based on a comprehensive list of factors than can be found in USPTO records.”

The calculator can be downloaded here.

How Can I Help?

While the calculator can provide valuable information, I recommend that individuals and companies still consult with an experienced patent attorney to determine if a patent is still in force. The USPTO also agrees, noting, “Before relying on an expiration date, individuals should always carefully inspect all relevant documents available through the USPTO, court records and elsewhere, and consult with an attorney.”

So, if you, or someone you know, need help with determining patent terms or any other Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Patent Harmonization.

The U.S. Patent and Trademark Office held public hearing on March 21, 2013 seeking input on international harmonization of substantive patent law.


World intellectual property leaders are increasingly making patent harmonization a priority.  In addition its work with IP5, a collaboration of the world’s top five IP offices, the United States has also been meeting with leaders from the patent offices of Denmark, France, Germany, Japan, the United Kingdom, the United States, and the European Patent Office.

At the most recent meeting of the “Tegernsee Group” (named for the city in Germany where the first meeting was held), the members were asked to collaboratively develop a joint questionnaire to aid in the acquisition and analysis of stakeholder views across jurisdictions. The questionnaire specifically seeks information and views on four issues of particular interest to harmonization of substantive patent law:
•    The grace period;
•    Publication of applications;
•    The treatment of conflicting applications; and
•    Prior user rights.

Each patent office in the Tegernsee Group will be separately administering the joint questionnaire to its respective stakeholders. The questionnaire being administered by the USPTO can be found here.
As with other pubic hearings, the USPTO also plans to make the public roundtable available via Webcast.  Webcast information will be available on the USPTO’s Internet Web site at www.uspto.gov/ip/global/aia_harmonization.jsp before the public hearing. A transcript of the hearing along with comments from the public will also be posted online.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

USPTO Seeks Feedback to Improve Patent Quality.

Patent quality is a hot topic for 2013.  The U.S. Patent and Trademark Office (USPTO) recently announced a series of roundtable discussions intended to foster a partnership with the software community to enhance the quality of software-related patents.

More recently, the USPTO put out the call for feedback on how to improve overall patent quality.

As detailed in this Federal Notice, the USPTO is specifically interested in potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents. The issues for comment are broken down into two distinct areas—clarifying the scope of the claims and clarifying the meaning of a claim term in the specification.

The USPTO is seeking public comment on advantages and disadvantages of applicants employing the following practices when preparing their patent applications:

  • Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.
  • Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.
  • Indicating whether examples in the specification are intended to be limiting or merely illustrative.
  • Identifying whether the claim preamble is intended to be a limitation on claim scope.
  • Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations
  • Indicating whether terms of degree–such as substantially, approximately, about, essentially–have a lay or technical meaning and explaining the scope of such terms.
  • Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.
  • Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

Finally, the USPTO also plans to issue a separate notice directed towards identifying potential practices that it can employ to achieve the same goals.

I will be sure to post an update when the notice is published.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

USPTO Extends Missing Parts Pilot Program Again.

The U.S. Patent and Trademark Office (USPTO) will further extend its Extended Missing Parts Pilot Program for another 12 months. The program is beneficial for inventors because it allows patent applicants to request a twelve-month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application.

According to the USPTO: “This would serve as a vehicle for inventors–at their option–to effectively have up to 24 months to make decisions regarding the significant investment of time and money required to take a non-provisional patent application forward.”

The USPTO first launched the pilot in 2010 and has previously extended it. As highlighted by the USPTO, it benefits both the agency and inventors “by permitting additional time to determine if patent protection should be sought–at a relatively low cost–and by permitting applicants to focus efforts on commercialization during this period.”

In order to take advantage of the Extended Missing parts Pilot Program, the applicant must satisfy the following conditions:

  • The applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing, preferably by using Form PTO/AIA/421 titled “Certification and Request for Extended Missing Parts Pilot Program;”
  • The application must be an original (i.e. not a Reissue) nonprovisional utility or plant application filed under 35 U.S.C. 111(a) within the duration of the pilot program;
  • The nonprovisional application must directly claim the benefit under 35 U.S.C. 119(e) and 37 CFR 1.78 of a prior provisional application filed within the previous twelve months; and
  • The applicant must not have filed a nonpublication request.

The program will now will run through December 31, 2013.

How Can I Help?

For more information about how you or your company may benefit from this pilot program or one of the many others offered by the USPTO, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Can an Interview Improve Patent Quality?

During patent prosecution, a patent applicant can request an interview with the examiner to discuss the pending application.

The USPTO has always believed that well-documented interviews can help foster high quality patents by enhancing understanding and issue-resolution between the inventor and the Examiner. Now it has the data to support these claims.

The USPTO recently analyzed data on patent quality in applications where interviews were held as well as where interviews were not held. The study included data from over 22,000 applications from the past five years.

The findings revealed that interviews conducted prior to final disposition (allowance or final rejection) of the application increase the probability that the subsequent action will be in full compliance with all applicable quality standards. In addition, the data showed that interviews help decrease both improper allowances and improper rejections by approximately 40 percent compared to applications without interviews prior to the final disposition.

Based on the findings, the USPTO now more than ever encourages both examiners and applicants to consider using  interviews.

How Can I Help?

For more information about how to use this process to your advantage, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

EPO Patent Filings Reach New High

The European Patent Office (EPO) recently announced that it received 258,000 patent applications in 2012, which represents a 5.7 percent increase over 2011 and set a new record. The EPO also saw a 5.8 percent increase in the number of patents published.

“This new peak in European patent filings for the third year in a row shows that companies from Europe and around the world are continuing to seek protection for their inventions, and that Europe remains an attractive market for new technologies,” said EPO President Benoît Battistelli. “This growth is part of a consistent, long-term trend, and is clear evidence of the confidence of industry in the value of European patents.”

Below are several trends noted in the EPO’s press statement:

  • With 63% of the filings, a clear majority came from non-European countries (2011: 62%), while the share from the 38 EPO member states was 37% (2011: 38%).
  • The top five positions in 2012 are once again held by the US (24.7%), Japan (19.9%), Germany (13.4%), China (7.3%) and Korea (5.5%).
  • Globally, Asian firms continued to fuel the growth in filings: more than half of the increase comes from Japan, China and Korea combined.
  • US companies reached a new record with 63, 777 filings, reinforcing their number one position.
  • For Europe, following Germany as number three in the top five, the ranking is stable, with France in sixth place (4.6%), ahead of Switzerland (seventh: 3.2%), the UK (eighth: 2.6%) and the Netherlands (ninth: 2.5%). In absolute numbers, all of these EPO countries saw an increase in filings.

How Can I Help?

U.S. companies are increasingly seeking to protect their patent rights overseas. If you, or someone you know, need help with filing a patent, trademark or copyright overseas in Europe, China or any other country, or just advice regarding how best to protect your ideas, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

New Patent Classification System Officially Off the Ground

The U.S. Patent and Trademark Office (USPTO) and the European Patent Office (EPO) recently announced the formal launch of the Cooperative Patent Classification (CPC) system. The new global classification system for patent documents is said to incorporate the best practices of both the EPO and USPTO systems.

The CPC is a collaborative efforts of both offices to create a bilateral classification system that will result in significant benefits to the global innovation community.  The intent is for the CPC to foster patent harmonization efforts by enhancing the ability to leverage and use work through an integrated network of intellectual property offices.

The CPC system has been in the works since October 2010. It includes approximately 250,000 classification symbols based on the International Patent Classification (IPC) system, and will allow examiners and patent users worldwide to conduct searches by accessing the same classified patent document collections. As highlighted by the USPTO, the aim is to enable more efficient prior art searches and enhance efficiency through work-sharing initiatives designed to reduce unnecessary duplication of work.

CPC definitions containing a thorough description of the technical subject matter covered will be provided for every CPC subclass and regularly updated. Distance learning will be made available to users in early 2013. Downloadable CPC schemes, CPC definitions and concordances (e.g. ECLA to CPC and CPC to IPC) are now available on the official CPC website.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman