By: Mark R. Malek
Hi all. Just a quick note to let you know that the TacticalIP Blog has not gone away. We moved it to the home page of Zies Widerman & Malek. You can access it by clicking here.
Someone brought to my attention a very well put together video on some of the nuances of the America Invents Act. Essentially, the video discusses the first to file requirement and shows us that it is now truly a race to the patent office. We can pick the video apart all day long, but take it for the joke that it is, and not as an indication that anything and everything under the sun is actually patentable. By the way, I especially like the cameo appearance by USPTO Director David Kappos. I thought he did a great job in his acting debut.
In my morning slew of emails that I receive regarding intellectual property updates, I noticed that Dennis Crouch, author of Patently-O posted an article that he projects that the USPTO will issue more than 250,000 patents in 2012. My initial reaction was “Holy Crap,” but that made me immediately go check the backlog.
You may recall that the USPTO has provided the patent dashboard to the public which gives us a great view of the status of the patent backlog. According to the patent dashboard, we are now down to a patent application backlog of 627,367 patent applications. That is down significantly from the 900,000+ patent applications that I remember being pending with Director Kappos took over. Say what you will about the management of the patent office, but I look at the patent backlog as having been the single biggest issue with the USPTO and, somehow, Director Kappos and his team have found a way to put a significant dent in it.
Undoubtedly, there have been a number of changes over the past few years under his leadership. For the most part, I believe they have been good ones. The questions remains, however, as to whether or not the Patent Office is equipped to handle the many changes coming down the pike with the America Invents Act. A great article about one of the biggest issues facing the USPTO, i.e., the underfunding of the USPTO, can be found here. Although the America Invents Act moves funding of the USPTO a step in the right direction, it is not all the way there yet.
As I was perusing my intellectual property news after traveling most of this past week, I found out about this Google’s new “Prior Art Finder” tool. I gave it a shot and it was pretty darn cool. In short, the tool “searches multiple sources for related content that existed at the time the patent was filed.”
Personally, I have used Google Patents to do some prior art searching in the past. It is important for inventors to identify prior art that can be a bar to patentability. A great way to do that is to conduct a patent search, but sometimes, a great start is to just search using the tools that are out there for free. When you conduct a search using Google Patents, several references will be located. These references will likely be related to the invention that you are searching for. The new Google tool will allow you to identify additional sources of prior art.
I read one article that seems to indicate that the Prior Art Finder can become an Infringement Finder for patent trolls. Perhaps it may be the case, but at the very least this will allow inventors to enhance their prior art searching by viewing additional references that are related to their invention.
I am going to follow up on this article with a series of articles on patent searching, whether or not you need to do it, whether or not you should do it, and what you have to do with prior art once you find it. I will try to use this tool more in the future and let you know how my results come out.
I was reading through my daily update this morning from Patently-O and noticed a bulletin that the Board of Patent Appeals and Interferences has changed it’s name to the Patent Trial and Appeal Board (PTAB). Dennis Crouch indicated that this information was obtained from this alert.
This is just one of the many change that is coming from the America Invents Act (AIA). The change is not due to a desire to have a different name. Not by a long shot. This is a product of the First to File system that is coming into place. Interferences were a tool that currently can be used by inventors when two different entities invented the same thing at around the same time. In short, when two applications were pending that were directed to the same invention, one party can request that an “interference” be declared. After an interference is declared, the Board of Patent Appeals and Interferences (BPAI) would determine who was the “first to invent.”
Well, the AIA does away with “first to invent” and moves the United States to a “first to file” system. In that case, we don’t need interferences any more. The protection goes to the inventor that filed their application first. Yes, yes, I am very much so simplifying this, but I just wanted to let you know that this is more than just a desire to change names. The PTAB will still be carrying out many of the other functions that the BPAI carried out, i.e., appeals of Examiner’s decisions, appeals of reexaminations, inter partes review, post grant review, etc.
Many of these changes are set to take effect on September 16, 2012. Here at the firm, the patent department is gearing up for the changes. I will be posting more on what inventors need to be on the lookout for as many of the provisions of AIA are implemented.
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