Sunday, November 29, 2009

Kappos: "But the truth is the USPTO is struggling."

An article in the Milwaukee Journal Sentinel ends with a quote of David Kappos, USPTO Director: "But the truth is the USPTO is struggling."

The article is mainly about a company co-owned by Dick Capstram: As a self-educated inventor whose father ran a garage in Chicago, Capstran won his first patent in 1969 for an automotive exhaust system.

One might recall that muffler patents were ridiculed in a recent post by Gray/Wegner as noted in the IPBiz post
Cars and patents and Jacob Krippelz. Specifically, Gray/Wegner wrote:

Does patenting a better “muffler” help  the auto industry?
In the automotive industry – where  cars are sold based upon every factor 
other than patents

But do Gray and Wegner think about folks like Mirk Buzdum and Dick "Cappy" Capstran and Jacob Krippelz? Probably not.
Buzdum was quoted:

"It's obvious that these technologies are valid, because people are stealing them and they're in production."

Jon Dudas (now at Foley & Lardner, along with Wegner) was also quoted:

"The backlog will grow in the medium- and long-term. Without changing the funding system, the growing backlog and inability to support and hire examiners becomes a vicious cycle."

Coincidentally, Buzdum and Capstran use a Foley & Lardner attorney: They also have hired one of Milwaukee's best-known patent attorneys, Barry Grossman of Foley & Lardner.

Much of the article is about the USPTO program of "abandon one; accelerate another":

Now, under new management, the agency has proposed allowing "small entity" companies with two or more pending applications to accelerate the examination of one of them - but only if the applicant will abandon all rights to another.

**See also

on rules for paying small entity fees-->

As stated in 35 U.S.C. 41(h)(1) and 37 CFR 1.27(a), an owner of a patent or patent application is entitled to Small Entity Status if and only if:

The owner is a "person" (i.e. individual or individuals) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.; or
The owner is a "small business concern", meaning a business which meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.


Once you've established your Small Entity status when you file the application, you can continue to pay small entity fees until you (a) file a continuing application (continuation, division, CIP), or (b) file a reissue application, or (c) pay the issue fee, or (d) pay any maintenance fee which is due after the patent issues. Before you take any of these actions, you need to make a new determination of your eligibility for small entity treatment. This is set forth in the Patent Rules at 37 CFR 1.27(f) and (g):

(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. ...


(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.

(2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.


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