March 23, 2010
@USPTO: *Wyeth* didn’t you calculate my patent term correctly?
These days it’s all about that little extra. Why should it be any different when it comes to the United States Patent and Trademark Office? It was recently decided in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010) that the USPTO’s calculation of the Patent Term Adjustments (PTA) took that little extra away from patentees. The PTA is the amount of additional time allotted to a patent when certain deadlines are not met during the examination process.
The deadlines are laid out in two different subsections within Title 35 of the United State Code: § 154(b)(1)(A) and § 154(b)(1)(B). The deadlines included in §154 (b)(1)(A) include an issuance of an Office Action within 14 months of the date the patent application was filed, 4 months to respond to a reply, 4 months to act on an application after a decision by the Board of Patent Appeals and Interferences, and 4 months to issue a patent from the date the issue fee was paid. Anything longer than that is an “A Delay.” Pursuant to §154 (b)(1)(B), the USPTO must issue a patent within 3 years of the application of the patent (provided, of course, that the subject matter meets the other requirements for patentability). Anything longer than that is a “B Delay,” according to the Wyeth Opinion. Should any of these provisions occur, the patentee is entitled to an extension to the term of their patent until the provision is satisfied.
November 12, 2009
Patently-O’s First-to-File Survey
Professor Dennis Crouch
University of Missouri
School of Law
Not that we want to club anyone to death with stories about first-to-file patent reform, but given that Director Kappos has begun beating the patent reform drum, it’s becoming more important that all the facts are known. Up to now, there really hasn’t been any consensus on whether moving to a first-to-file priority system would be a drastic change. Dennis Crouch, over at Patently-O, insists that the Director may be using flawed statistics to demonstrate that change will not be so bad. Interestingly enough, after Professor Crouch and a few others posted comments about it on Director Kappos’s blog, the comments were closed off, ending the discussion on that forum. I guess Mr. Kappos is not really interested in hearing from the patent community — despite portraying that he will listen to feedback.
In an effort to come up with some real numbers, Professor Crouch has created a survey that is designed to record the position of patent professionals on this issue. If you have an opinion, one way or the other, you should take a minute, click over, and take the survey. You can’t complain later about how things end up, if you didn’t participate in the discussion.
UPDATE: It looks like Kappos’s blog has let through a few more comments, but they are clearly censoring responses.
November 10, 2009
The USPTO Embraces the Blogosphere, Lobbies for First-to-File
Kappos: “Hey Ted, can you show me how these here tubes work?”
The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.
In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog. In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.
The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention. The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in. The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention. The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.
Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.
October 11, 2009
What do you think?
In case you didn’t notice (i.e., you’re not a total IP nerd, like we are), the United States Patent & Trademark Office put a new face on their website. Makes sense — new administration, new director, new site design.
We figured this would be a good opportunity to tryout an opinion post. Tell us what you think.
October 1, 2009
PTO Issues Count System Proposal that Includes Additional Time for Examination
On September 30, 2009, Director Kappos issued an update to the Patent Examining Corps and, in it, addressed the way in which Patent Examiners are evaluated for production. (You find a copy of his propasal here). Many patent professionals believe that the current count system seems to be one of the problems causing the backlog at the patent office. The Director’s update represents only a start to solving the bigger problem, but it is, nonetheless, a start.
In the overview, the proposal sets for providing more time for Examiners to review applications, providing time for Examiners to conduct interviews, and diminishing credits that Examiners receive for Requests for Continued Examinations (RCEs). Of specific interest to me was a quote that I noticed right in the overview: “Reduce Examiner reluctance to allow applications.” WOW! That seems like a huge step in the right direction to me. It should certainly feel like a step in the right direction for Applicants.
