Intellectual Property Law

Self Motivation and Quality

Posted on June 16, 2008
It's nice to make a difference.In general, if you know that the job that you do is important and makes a real difference, I would think that would make it easier to be self motivated to do the best job possible.Back when new examiners at the Office went through only a two-week training course (Patent Examiner Initial Training) before being set loose to examine new applications, there really wasn't much, if any, time devoted to instilling in examiners an appreciation for the importance of the job they were going to be doing (to my recollection, anyway)...

USPTO Job Fair

Posted on June 03, 2008
The USPTO will host an on-site job fair from 9 a.m. to 3 p.m. on Saturday, June 14th, in the Madison Building Auditorium to recruit patent examiners for fiscal year 2008.The USPTO's goal is to attract qualified applicants who have a bachelors or advanced degree in computer engineering, electrical engineering, mechanical engineering, biomedical engineering, chemical engineering, chemistry and physics...

Trolls?

Posted on May 27, 2008
I've noticed a few interesting stories over the last few months about what some might call 'trolls'. Basically, stories about people who seem to be trying to abuse the intellectual property system.Doubtless there are many other stories like these running around the net...

Patent Examining Means Never Having to Say You're Sorry

Posted on May 23, 2008
Nobody likes to make a mistake, for reasons that are fairly obvious.When you're an examiner, making a mistake will usually cost you time, and probably counts. It also generally costs the applicant time and money.When I first began examining, and found that I had made a mistake in an action, my first inclination was to apologize for it in the subsequent action...

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Another Place to Search

Posted on April 30, 2008
IP Australia and the Australian government have launched a new open, online database featuring almost 20 years' worth of the country's patent application records.The StoryThe WebsiteWhile it's always great to have additional sources to search, I don't see myself using it very often (except in those cases where I'm looking for a specific Australian patent document and am having problems finding it through IP Australia), because it simply takes too long to routinely perform yet another search on another database and to analyze the results of that search...

Changes in USPTO Employment Application Process

Posted on April 03, 2008
The process for submitting an employment application with the Office now has a bit more flexibility.Effective March 31st, the USPTO accepts employment applications via the following methods:Online*E-mail*Fax*Mail or Overnight MailHand DeliveryApplicants must submit their application materials, including required documents, on or before the closing date of the vacancy announcement...

Wow. Continuation Rules Declared Null and Void

Posted on April 02, 2008
This will no doubt be dissected on all of the patent blogs over the next few days. It will likely make for some interesting reading.Patently-OThe OrderThe OpinionThe end result is that things are back where they started (for now). Still a pendency problem...

Pendency Problems

Posted on March 24, 2008
There was a semi-interesting article in January's JPTOS about how one might go about addressing the pendency problems at the Office.In short, the author proposed the following:The USPTO should lessen quality criteria that require review of a primary examiner's office actions, because the resulting lower allowance rate necessarily increases pendency...

Another Idiotic Patent Article

Posted on March 10, 2008
Yet another one of those articles detailing all that is wrong with the PTO has been published, courtesy of Forbes. Like a great many of its kin, it is basically a brief sound-bite of a story, long on fluff and short on substance and analysis, and of course, it cites the standard four or five tired examples of 'overly obvious' patents...

Much Ado About Nothing

Posted on February 09, 2008
So, the Summary Judgment Hearing on GSK/Tafas took place yesterday. And that's about the extent of the news. No decision was rendered.Coverage at Patently-O and PLI, amongst others.

A Little Perspective

Posted on February 04, 2008
While I think about the new rules, production standards and examination in general, I found a couple of articles to remind me of why I'm paid to do what I do, and of who is the ultimate customer.Registration may be required for either or both of these...

Canada Must Be Doing Something Right

Posted on January 13, 2008
Does Canada know something that we don't, or are things just slow up there these days?The USPTO is hiring over a thousand new examiners a year, and is planning to continue doing so for the foreseeable future.So, I found it to be quite the contrast when I ran across CIPO's latest information on their plans for future hiring:2008/2009 Hiring TargetsCandidates that were invited and wrote the written test evaluating knowledge and abilities and were unsuccessful will not be considered in any future recruitment campaigns for a period of 2 years from the date of the written test...

Who Trains Whom

Posted on December 25, 2007
One of the most pervasive subjects [complaints?] that I see discussed regarding patent examination is the quality [or lack thereof] of that examination.In light of that, I thought that the training process might be a subject worth talking about.When I started at the Office, training began with two weeks of PEIT (Patent Examiner's Initial Training)...

Support for the New Continuation Rules

Posted on December 22, 2007
...and it comes from the Public Patent Foundation et al.Not much of a surprise there.From the Press Release:A coalition of consumer advocacy and public interest groups today filed legal papers supporting new U.S. Patent Office (USPTO) rules that would curtail abusive behavior by patent applicants and improve patent quality...

Calling All Inventors

Posted on December 11, 2007
I received an email recently from American Public Media's Marketplace, "a leading business and finance program on public radio with more than 8 million listeners nationwide."They are reaching out to inventors for a series of reports from their Innovation Desk...

A First Glance at the Proposed New BPAI Rules

Posted on November 15, 2007
I've finally had the chance to look over the Proposed New BPAI Rules. Interesting stuff.All those new [proposed] requirements for Appeal Briefs...it makes me glad that I'm working on this side of the fence.One thing that caught my eye was the provision of rule 41...

Trick or Treat?

Posted on October 30, 2007
Tomorrow the GSK preliminary injunction hearing will be held at 10 AM. Obviously, there are lots of people who will be paying close attention to the outcome of the hearing.The PLI Blog will be live blogging the hearing. From the announcement:"I am pleased to announce that the Patent Practice Center blog sponsored by the Practising Law Institute will be represented live at the GlaxoSmithKline v...

Hard Counts, Easy Counts, and the New Rules

Posted on October 20, 2007
Examiners are graded on the number of applications they process. Each time an application is taken up for examination, they get credit for that, called a 'count'. When that application reaches some final resolution, either through abandonment, allowance, or appeal, the examiner gets a second count...

Status 32

Posted on October 16, 2007
As has been noted on Patently-O and also in comments here, the Office has flagged all pending applications which do not comply with the new 5/25 claim limits [and put into status 32].They were removed today from examiner's dockets so that notices to that effect could be sent to the applicants...

USPTO Job Interviews

Posted on October 14, 2007
If patent examining sounds like a job that would interest you, read this.USPTO to Host Weekly Patent Examiner Job Interview Sessions at Alexandria HeadquartersThe USPTO will host weekly on-site job interview sessions in Alexandria on Tuesdays and Thursdays starting October 16, 2007 through December 13, 2007...

Office Action, Circa 1976

Posted on October 08, 2007
In 1976, the Office came up with the examiner production quotas that are still in place today. The quotas were designed to embody the amount of time that it should take a competent examiner to generate Office actions for an average application.So, what was the typical examiner doing back in 1976 in order to generate that Office action?Well, anecdotal evidence says that searching in 1976 involved choosing a few subclasses and looking through the shoes...

Prolix

Posted on October 08, 2007
So, does that term mean anything to you?I managed to track down copies of the MPEP from the mid 1970s, because I was wondering what examiners had to face back in 1976 when the current production standards were enacted. (More on that at a later date.)I ran across this fascinating paragraph from Version 3, Revision 48 (April 1976):706...

Be Careful What you Wish For

Posted on October 06, 2007
This post was updated on 10/8.The GAO issued a report this week whose title sums up its contents nicely: Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog.The Office, in response, issued a Press Release.The GAO undertook this report in order to determine, for the last 5 years, (1) the USPTO's process for identifying its annual hiring estimates and the relationship of these hiring estimates to the patent application backlog; (2) the extent to which patent examiner hiring has been offset by attrition at USPTO, and what factors may contribute to patent examiners' decisions to leave the agency; and (3) the extent to which the retention incentives and flexibilities USPTO has implemented align with patent examiners' reasons for staying with the agency...

Too Much Information

Posted on September 30, 2007
I've been reading the provisions of the Rules Changes. Really, too much there to digest at a single sitting, but maybe in small chunks I'll work through this thing.One overall impression I've gotten, though, is that much of these rules changes are geared toward shifting work away from the examiners and towards attorneys/agents/applicants...

New CAFC Decisions

Posted on September 25, 2007
Last week, two decisions regarding what constitutes patentable subject matter under 35 USC 101 came down from the CAFC:In re Nuijten and In re Comiskey.I must admit, I haven't even bothered to read the Nuijten decision. Signals are still unpatentable under 101...

The Changing Patent Landscape

Posted on September 09, 2007
Apparently, 'world-shaking events' have occurred in the patent world in the past couple of months (from what I've heard).First, new rules were published in the Federal Register on August 21st. Here is a summary of the changes 'borrowed' from Patently-O:Continuation Limitation: ?The Office is revising the rules of practice to require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted...

Request for Status

Posted on August 02, 2007
It's no secret that the Office is having a little backlog problem.One of the side effects is that I occasionally pick up new applications for which the attorneys have filed a request for status. Sometimes, they've filed more than one.The requests are all of basically the same form: "Hey, I filed this thing x months ago, and I still haven't heard anything...

Pro Se Patent Applicants

Posted on July 10, 2007
Hear the term 'pro se', and what comes to mind?How about that stereotypical lone inventor, toiling away the hours to perfect their invention, writing up and submitting their patent application, fighting the good fight for their patent, without benefit of an attorney, with the hope that they will ultimately obtain the rightfully deserved patent that will allow them to share their invention with the world (and be rewarded financially, of course)...

A Peek Behind the Scenes in the Patent Academy

Posted on June 26, 2007
A student at the Patent Academy has started a blog.'Relativity' writes a nearly daily entry about his/her experiences at the Academy, about the classes, the quizzes, and yes, even the team building exercises.It is fascinating to get the reactions of one who is being taught patent law and the examination process and procedures from scratch...

Martial Law

Posted on June 20, 2007
O-kayyy.Don't check in for a few days and look what happens.Well, it has become obvious to me that I've got to rein things in a bit.I started this blog because I thought it might be nice if examiners and attorneys could exchange opinions, and maybe give each other a bit of insight into the jobs of their counterparts...

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