Patent

LOCATION! LOCATION! LOCATION!

Press Release, 12-40

U.S. Commerce Department to Open Four Regional U.S. Patent Offices

For the First Time, USPTO Will Expand Operations Outside Washington, DC, to:

Detroit!

Dallas!

Denver!

AND 

Silicon Valley!

WASHINGTON – Acting U.S. Commerce Secretary Rebecca Blank and Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos today announced plans to open regional USPTO offices in or around Dallas, Texas, Denver, Colorado, and Silicon Valley, California. These offices are in addition to the already-announced first USPTO satellite office to open on July 13 in Detroit, Michigan. The four offices will function as hubs of innovation and creativity, helping protect and foster American innovation in the global marketplace, helping businesses cut through red tape, and creating new economic opportunities in each of the local communities. Next week, Acting Secretary Blank and Under Secretary Kappos will travel to each of the newly selected cities to meet with local businesses, entrepreneurs and public officials to discuss the new office openings.

“Intellectual property protection and innovation are engines of economic growth and the bedrock of America’s private sector,” said Acting U.S. Commerce Secretary Rebecca Blank. “The Obama administration is committed to making certain our businesses and entrepreneurs have the resources they need to grow, create jobs and compete globally. These new offices are an historic step toward further advancing our world’s best IP system, and reinforcing the United States as the number one destination for innovation capital, and research and development around the world.”

The offices announced today will help the USPTO attract talented IP experts throughout the country who will work closely with entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process, allowing businesses to move their innovation to market more quickly, and giving them more room to create new jobs.

 

“By expanding our operation outside of the Washington metropolitan area for the first time in our agency’s 200-plus year history, we are taking unprecedented steps to recruit a diverse range of talented technical experts, creating new opportunities across the American workforce,” said David Kappos, Director of the USPTO. “These efforts, in conjunction with our ongoing implementation of the America Invents Act, are improving the effectiveness of our IP system, and breathing new life into the innovation ecosystem.”

Patents are a significant factor in private sector job creation. In fact, the U.S. Commerce Department issued a recent report finding that IP-intensive industries are the source – directly or indirectly – of 40 million jobs, contributing $5.06 trillion to the U.S. economy in 2010.

Selection of the four sites was based upon a comprehensive analysis of criteria including geographical diversity, regional economic impact, ability to recruit and retain employees, and the ability to engage the intellectual property community. The Leahy-Smith America Invents Act of 2011 (AIA), signed into law by President Obama in September, requires the USPTO to establish regional satellite locations as part of a larger effort to modernize the U.S. patent system over the next three years.

 

The USPTO is working to develop concept of operations for the three newly-announced locations based on the Elijah J. McCoy Detroit Office and will develop best practices based on this model over the coming months and years. The Detroit office will employ approximately 120 individuals in its first year of operations. The USPTO also seeks to identify and maximize the unique regional strengths of all four offices to further reduce the backlog of patent applications and appeals.

The USPTO team plans to begin site procurement activity and establish a timeline for the three newly-announced locations in the coming months.

For additional background on the selection criteria and methodology, please click here.

For non-press inquiries pertaining to the satellite site selection, please contact Azam Khan, USPTO deputy chief of staff at azam.khan@uspto.gov.

 

“FIRST TO FILE” AMERICA INVENTS ACT LEGISLATIVE HISTORY GUIDE

Stop at Starbucks, get your favorite venti coffee and several treats(you’ll need them), find your favorite chair, and grab your Ipad, and link to Social Science Research Network. Joe Matel, who, currently, is the Judiciary Committee Counsel to Senator Jon Kyl, has presented his two part article, titled, “A Guide to the Legislative History of the America Invents Act (AIA)” to examine the origins and the legislative commentary on the provisions of the Leahy-Smith America Invents Act, a comprehensive patent-reform law that the POTUS signed and enacted on September 16, 2011. The AIA adopts the first-to-file system of patent priority, modifies the defintion of prior art, and creates several new post-issuance administrative proceedings and amends existing proceedings. Part I of the article focuses on the AIA’s changes to sections 102 and 103 of title 35 and related issues. The article is organized by the sections of title 35 that are significantly amended by the AIA, and then by the uncodified sections of the AIA. 

Citation: (Matal, Joe, A Guide to the Legislative History of the America Invents Act: Part I of II (2012). 21 Fed. Cir. B.J. 435 (2012). Available at SSRN: http://ssrn.com/abstract=2064740)

Thank you to Patently O for bringing this to my attention.

MICRO ENTITY INVENTORS MAY RECEIVE 75% DISCOUNT ON PATENT FEES

 

USPTO Issues Proposed Rules to Implement the Micro Entity Provision for Paying Discounted Patent Fees

The USPTO has published proposed rules related to micro entity provisions in the Leahy-Smith America Invents Act. Smaller innovators qualifying for micro entity status receive a 75 percent discount on patent fees. The micro entity proposed rules were published in the Federal Register on May 30, starting a sixty-day public comment period. Read more at USPTO.

Micro Entity Status Inventors

Patent application filers may be able to qualify for Micro Entity status and qualify for 75% discount of patent filing fees. The Leahy-Smith America Invents Act, (AIA) signed by President Obama on September 16, 2011, creates this new status that entitles micro entity patent filers to a remarkable 75% discount on fees. Currently the regular fee for filing a provisional patent application is $250, the Small Entity fee is $125 and the Micro Entity fee would be $62.50.  Although, this status is supposed to be available as of the date of enactment of the AIA, the USPTO is not expected to place the Micro Entity fee system into effect until 2013.

To qualify as a Micro Entity, the filer must be a Small Entity and must meet the following criteria:

(1) The applicant has not been named as the inventor on a total of more than four utility patents (regular utility patents, not provisional patent applications), design patents or plant patents. This also does not include certain international PCT applications and applications owned by a previous employer. In addition, the applicant had to have had a gross income in the previous year of less than three times the median household income reported by the Bureau of the Census (The median household income has been hovering around $50,000 for the past two years.) In the event that the patent application has been assigned, the assignee had to have a gross (not net) income of less than three times the U.S. median household income; or

(2) the majority of the patent filer’s employment income is from an Institution of Higher Learning, or the applicant has assigned, or is obliged to assign the patent to an Institution of Higher Learning. An Institution of Higher Learning is a public or non-profit accredited institution that admits post-secondary students for programs of not less than 2 years.

 

 

The United States Patent and Trademark Office e – Office Action Debut

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Benefits of e-Office Action

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• Reduced paper management in your office

Enrollment in e-Office Action is easy and takes only a few minutes from the Private PAIR Customer Number details tab.

For more information about the e-Office Action Program and how to take advantage of its benefits visit the e-Office Action web site or call the Patent Electronic Business Center (EBC) at 1-866-217-9197 (toll-free).

SUPREMES HOLD FRCPs OUTPLAYS SECTION 145

SUPREME COURT OF THE UNITED STATES DECIDES KAPPOS v. HYATT 

[April 18, 2012]
JUSTICE THOMAS delivered the opinion of the Court.

Under the Patent Act of 1952, if a Patent and Trade Office (PTO) examiner denies a patent application, 35 U. S. C. §131, the applicant may file an administrative appeal with the PTO’s Board of Patent Appeals and Interferences, §134. If the Board also denies the application, the applicant may appeal directly to the Court of Appeals for the Federal Circuit under §141. Alternatively, the applicant may file a civil action against the PTO Director under , which permits the applicant to present evidence that was not presented to the PTO.

 

Respondent Hyatt filed a patent application covering multiple claims. The patent examiner denied all of the claims for lack of an adequate written description. Hyatt appealed to the Board, which approved some claims but denied others. Pursuant to §145, Hyatt filed a civil action against the Director, but the District Court declined to consider Hyatt’s newly proffered written declaration in support of the adequacy of his description, thus limiting its review to the administrative record. Applying the deferential “substantial evidence” standard of the Administrative Procedure Act (APA) to thePTO’s factual findings, the court granted summary judgment to the Director. On appeal, the Federal Circuit vacated the judgment, holding that patent applicants can introduce new evidence in §145 proceedings, subject only to the limitations in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. It also reaffirmed its precedent that when new, conflicting evidence is introduced, the district court must make de novo findings to take such evidence into account.

USPTO Patent Law School Clinic

USPTO Expands Patent Law School Clinic Certification Pilot Program.  The United States Patent and Trademark Office (USPTO) today announced that it will open the current Patent Law School Clinic Certification Pilot Program to admit 10 additional schools for the upcoming fall 2012 academic year. This pilot program allows law students to practice patent law before the agency under the guidance of a law school faculty clinic supervisor.  Submissions from interested law schools will be accepted through Friday, June 1, 2012.

Participating Law Schools

University of Akron School of Law American University, Washington College of Law
University of Connecticut School of Law The George Washington University School of Law
Howard University School of Law The John Marshall School of Law
University of Maine School of Law University of Maryland School of Law
University of New Hampshire School of Law North Carolina Central University School of Law
University of Puerto Rico School of Law University of Richmond – Richmond School of Law
Rutgers Law School – Newark Vanderbilt College of Law
West Virginia University School of Law William Mitchell College of Law

 

Supreme Court Unanimously Holds Prometheus Method Claim Unpatentable Subject Matter by Merely Reciting Law of Nature

Supreme Court Unanimously Holds Prometheus Method Claim Unpatentable Subject Matter by Merely Reciting Law of Nature

In a unanimous decision, (BREYER, J., delivered the opinion for a unanimous Court) the Supreme Court on March 20, 2012, reversed the Federal Circuit and held that method claim for treating autoimmune diseases are not eligible for patent protection because it merely recites a law of nature.  Mayo Collaborative Services v. Prometheus Laboraties, Inc., U.S., No. 10-1150, 3/20/2012.  If a law of nature is not patentable, then neither is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself. A patent, for example, could not simply recite a law of nature and then add the instruction “apply the law.”
Cite as: 566 U. S. ____ (2012)
Opinion of the Court

SARA BLAKELY NEWEST MEMBER OF PATENTAIRES’ CLUB TM

Sara Blakely Forbes MagazineUndercover Billionaire: Sara Blakely Joins The Rich List Thanks To Spanx BY Clare O’Connor Forbes Staff Writer
Blakely owns 100% of the private company, has zero debt, has never taken outside investment and hasn’t spent a nickel on advertising. At 41 she’s the youngest woman to join this year’s World’s Billionaires list without help from a husband or an inheritance. She is part of a tiny, elite club of American women worth ten figures on their own, including Oprah Winfrey and Meg Whitman.

Yahoo About Face

Yahoo enforces its patents against Facebook. According to the lawsuit, filed in Federal District Court in San Jose, Calif., Yahoo contended that Facebook had knowingly and improperly violated some of the company’s core intellectual properties. The patents, which were issued from 1999 to 2010, cover advertising, privacy, customization, social networking and messaging reported by the NYTimes

See a perspective from an unsuspecting inventor for Yahoo Patents  in an article titled, “A Patent Lie: How Yahoo Weaponized My Work.”