Saturday, December 20, 2008

Chamber of Commerce Recommendations to Incoming Admin on USPTO

GovernmentExecutive wrote of the Chamber of Commerce report on the USPTO:

The Patent and Trademark Office is "an agency in crisis" that will face significant challenges in the Obama administration due to a 750,000-application backlog and other internal inefficiencies, a report by the U.S. Chamber of Commerce warned Friday [Dec. 19}.

Of the proposal of deferred examination:

However, the report notes that such a system could create additional uncertainty because rivals would wait longer before deciding whether they could safely market new products.It might also be unfair to shift to competitors, as some deferred programs do, the burden to pay for and initiate a proceeding for someone else's application. Furthermore, the proposal could increase patent lawsuits because parties who have invested in new products may be more willing to litigate, the report states.

Rick Merritt of EETimes wrote: The report notes that from 1988 to 2008 the backlog at the patent office has grown from 268,000 to 750,000 applications. Waiting time for action on an application has stretched from 20 to 32 months over the same period.

Meanwhile, the patent office now employs more than 9,000 people, many of them with less than five years experience examining patents. From 2002 through 2006 the office lost one examiner for every new hire, the report said.

The Chamber report is available.

Note the report discusses qualifications of the Director:

The PTO cannot achieve organizational excellence without the strong leadership and executive management
capabilities of the incoming under secretary and director. Accordingly, that individual must be an experienced,
highly respected leader in whom the Congress and the intellectual property, business, and international
communities can place their full confi dence.
Equally important, the appointment of a top-caliber, knowledgeable intellectual property executive offers the
potential to reinvigorate the public/private partnership that has worked well in the past.

Continuing applications were discussed:

RCE filings have increased from 8.3% of total fi lings in 1998 to 19.6% in 2007. This increase
contributes to the backlog of applications to be examined at the PTO and the increase in average time
of pendency. Reducing the need to file RCEs would have a positive impact on PTO backlogs and reduce
prosecution costs.
The PTO should analyze the cause of this increase in RCE filings from both an internal
and external perspective. Internally, the PTO should consider altering the current examiner
incentives to seek additional production credits by extending prosecution through RCE filings
and encourage early resolution of patentability issues, including credit for prosecution after
final rejection. Externally, the PTO should consider addressing current applicant practices
that lead to extended prosecution and increased RCE filings.
Continuation Practice
PTO should consider whether it would be desirable to limit the time period for presenting broadened
claims in continuation applications so that the public would have increased certainty in understanding
the scope of patent protection ultimately granted to a patent family.

One of the major flaws in Lemley's "Ending Abuse..." was the failure to recognize that the prime driver
for continuing applications was things rectifiable by RCEs, rather than by continuations. The filing of many RCEs
indicates flaws in examination, not attempts to "after-cover" products of competitors. Lemley got it wrong.

Contemplate a comment on PLI on the post Former PTO Leaders Criticize Dudas:

This is a main cause of the backlog, because examiners don't want to allow stuff for fear of getting in trouble. So applicants are forced to file RCE after RCE tying up the examiner's time. I've had numerous examiners tell me that they wanted to allow my case, but couldn't because their SPE told them not to and that SPE's get in trouble if their art unit issues a "bad patent." Thus, the fear of issuing "bad patents" is now crippling the USPTO.

Bad patents can be addressed via reexamination. If anything, the reexamination process should be streamlined to take 6 months instead of 2-3 years. Thus this is a step towards the "gold plated patent" that Gene talked about previously. But not quite as radical. Thus, the USPTO should go back to the old practice of not penalizing examiners and SPES for allowing patents, and thus patents can be granted again after just one amendment, reducing the backlog. If someone has a problem with an issued patent, they file for a reexam (which ideally should be completed in 6 months), upon which the patent can then be litigated.

On Dec. 21, IAM wrote:

In other words the final version is much less forthright about the significance of Jon Dudas’s successor than was the draft. I wonder why this is. It is worth remembering that the authors of the report are all very high-profile members of the patent community. Two of them – Todd Dickinson and Herb Wamsley – though contributing in a personal capacity are the executive heads of the organisations that represent US IP practitioners and owners, the AIPLA and the IPO respectively. Clearly, it would be slightly uncomfortable, to say the least, if the new director of the office did not tick all the qualification boxes the report identifies and the two of them were on the record stating: “We believe that the single most important way to establish the incoming administration’s credibility is through the appointment of a skilled leader who possesses these qualifications … .” Do they possess some inside knowledge about the identity of the new director, or is it just a case of not wanting to leave a hostage to fortune?

Using the appointment of Chu to head DOE as a touchstone, IPBiz predicts Barack Obama will appoint someone as Director who has significant patent experience.

One commenter to a Dec. 23 post on Patently-O wrote:

Deferred examination "for perhaps up to three years" -- this is what applicants already get.

BTW -- if the USPTO promulgates rules (or Congress passes a law) which create a requirement for an "enhanced IDS," then I doubt any application will want to have examination deferred.

Once an applicant has gone through the trouble and expense of preparing both the application and enhanced IDS, the cost of examination is just a small part. Once application is already in for $10K-$20K, they might as well go all in.

Unless IPBiz missed it, the Chamber report did not mention "oppositions."

***In passing

Back in 2007. the Foresight Institute had a post:

Today’s San Jose Mercury News — the newspaper of Silicon Valley — features a guest editorial by Wirt Cook, IBM vice president and senior state executive, on the proposed Patent Reform Act, titled “Patent Reform Act best way to protect, foster innovation”:

Berman’s bill will enable private-citizen-experts to help patent examiners research the novelty of proposed patents so that they can make a more informed decision. The bill will also create a framework for individual inventors or businesses to dispute the validity of a patent without the expense and time of a courtroom litigation.

I’m no patent expert, but this does sound good. The real experts — Ted Sabety, Mark Lemley, and more recently Larry Lessig — have been raising patent issues as problematic for nanotechnology. —Christine

The "framework" in question was "oppositions" or post-grant review [PGR]. In "Patenting Nanotechnology," Lemley proclaimed Gary Boone to be the inventor of the integrated circuit. Guess that makes him an expert. Sabety has an article: "The Doctrine of Inherency and the Carbon Nanotube Patents: Experimental Measurement vs. Documentary Inference."

See also

Lemley on patenting nanotechnology

***Of gold-plating, a comment to pli-->

Of --Thus this is a step towards the "gold plated patent" that Gene talked about previously--, the discussion by (now President-Elect) Obama of gold-plated patents mentioned by Gene was a recycling of a proposal by Mark Lemley and others.

See for example:

A variant of the Intellectual Property Today article had been submitted to IPFrontline, who refused to publish it.

***And, what is it that law professors do?

truthonthemarket writes:

There also appears to be some confusion about what it is that law professors do. I suspect that the current scholarly output of the legal academy is heavily weighted towards normative scholarship rather than describing what the law is or predicting what courts will do.

Or opining on non-existent articles in the 1947 New York Times? [8 JMRIPL 80]

**UPDATE** IPWatchDog trashed Mark Lemley:

If President-Elect Obama is receiving guidance from Rai on patent matters or on who to appoint to run the Patent Office we are all in deep trouble. It was Rai, along with fellow Obama advisor Mark Lemley, who is a Professor of Law at Stanford Law School, that spearheaded the filing of the Amici Curiae brief of eleven intellectual property law professors in support of the Patent Office position in the GlaxoSmithKline and Tafas challenge of the claims and continuations rules. How anyone who knows anything about patent law or patent practice could support the claims and continuations rules is puzzling, but the unfortunate truth is that law professors do not know anything about practicing law so their viewpoint is obviously one without experience.

What does one expect from someone who relies on a non-existent NYT article for his patent policy?

***Comment to Patently-O on 14 Feb 09-->

Of --He was PTO director under Clinton and before that was a partner at the Howrey firm.--, Dickinson was at Howrey after his time at the USPTO. He is now on the USPTO roster.


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