President's Strategy for American Innovation

Posted Wednesday, September 30, 2009 by Jim Ruttler.

The Executive Office of the President has released a paper detailing the President’s strategy for American innovation. The essence of the paper is that bubble type growth in dot coms, housing, and finance are not sustainable drivers of economic activity. The President suggests that a returned focus on innovation is necessary for Americans to thrive in an increasingly competitive global economy. In order to achieve the goal of an innovation based economy, the President seeks to promote research, invest in education, improve our physical infrastructure, increase internet access, open capital markets, and implement policies that encourage innovation. Notably, the President believes that the government’s role should be in providing tools to foster innovation. With respect to the U.S. patent system, the paper stated:

“Intellectual property is to the digital age what physical goods were to the industrial age. We must ensure that intellectual property is protected in foreign markets and promote greater cooperation on international standards that allow our technologies to compete everywhere. The Administration is committed to ensuring that the United States Patent and Trademark Office has the resources, authority, and flexibility to administer the patent system effectively and issue high-quality patents on innovative intellectual property, while rejecting claims that do not merit patent protection.”

The paper can be read in its entirety at: http://www.patentlyo.com/sept-20-innovation-whitepaper_final.pdf.

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New Patent Office Director on Objectives

Posted Wednesday, September 30, 2009 by Jim Ruttler.

The new Director of the U.S. Patent Office, David Kappos, has provided some exciting and interesting initial thoughts on where the Patent Office is heading. Among other things, Kappos indicated that he is working towards reducing the pendency of the first examiner action to around 10 months. This would be an exceptional accomplishment, given that applications presently wait for around 24-36 months prior to the first examiner action. If implemented, it would make it possible to more expediently obtain an enforceable patent or, alternatively, determine whether patent protection was not possible. Kappos has suggested two possible means for achieving this goal: modifying the present examiner reward system to incentivize compact examination and making it possible to request accelerated examination in exchange for abandoning another pending application. The incentives for compact examination would presumably reward examiners for disposing of applications within one or two actions, instead of the present practice of requiring multiple requests for continued examination, which delays issuance and prevents the examiner from considering new applications. The accelerated option would be useful in having applicants voluntarily abandon currently pending applications, thereby cutting into the present backlog. However, it may provide an advantage to larger entities in that small entities and independent inventors sometimes only file one application. The transcript of the Kappos presentation can be found at http://www.uspto.gov/ under news.

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Patent Prosecution Highway

Posted Thursday, September 17, 2009 by Jim Ruttler.

There are currently procedures with a number of foreign patent offices to advance examination of patent applications when a corresponding U.S. patent application has been allowed. For instance, when a U.S. patent application has been examined and claims have been found to be allowable, an applicant can turn around and use this finding of allowability to request that examination of corresponding foreign patent applications be expedited. This obviously requires foreign patent applications to have been filed within the requisite time frame (generally 12 months from the U.S. filing date or 30 months from the U.S. filing date when a PCT application has been filed within 12 months of the U.S. filing date). However, pendency of foreign applications can be significantly reduced to only a few months once the corresponding U.S. application has been found allowable. The official statistics also indicate that the likelihood of rejections goes down along with the number of rejections. Currently, only Japan and Korean offer a patent prosecution highway, but there are a number of other foreign patent offices that offer a pilot program: http://www.uspto.gov/web/patents/pph/.

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Temporary Patent Office Guidelines on Patentable Subject Matter

Posted Thursday, September 03, 2009 by Jim Ruttler.

The Patent Office has released interim guidelines for determining whether a process defines patentable subject matter. A flow chart outlining the guidelines is provided by the Patently-O blog: http://www.patentlyo.com/files/flowchartmort-8-24-09.pdf. Unfortunately, these guidelines are almost certain to change in the coming months when the Supreme Court issues its decision on the standard for determining patentable subject matter in the Bilski case. For the time being, however, these guidelines can help in preparing an application for examination. But, one should also include in the application subject matter that may not currently be patentable in the hopes that that subject matter becomes patentable by the time examination of the application occurs.

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Trademark Requests for Reconsideration and Appeals

Posted Monday, August 24, 2009 by Katie Long.

Upon receipt of a final refusal, a trademark applicant may file a Request for Reconsideration with the examining attorney, or an Appeal with the Trademark Trial and Appeals Board (TTAB). An office action is considered final when the examining attorney has issued the same refusal twice on the same application. All evidence argued during an Appeal must be part of the record, ie: submitted during responses to Office Actions and Requests for Reconsideration. Both a Request for Reconsideration and an Appeal must be filed within six months of the date of the final refusal. An applicant should consider filing both a Request for Reconsideration as well a Notice of Appeal during the allotted time period. The filing fee for the notice of Appeal is $100, and the Appeal proceeding is suspended pending the outcome of the Request for Reconsideration. If the examining attorney rules in the applicant’s favor on the Request for Reconsideration, the application will advance to the next phase of the application process. If the applicant’s Request for Reconsideration fails, the applicant has secured its position in the Appeals process.

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