Archive for the ‘USPTO’ Category

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The ignored duty to disseminate patent- and trademark-related information to the public

Tuesday, December 22nd, 2009

Despite its massive size, budget and complex regulatory framework, the Patent and Trademark Office has only two statutorily defined duties. According to 35 U.S.C. §2, the Office:

“(1) shall be responsible for the granting and issuing of patents and the registration of trademarks; and

(2) shall be responsible for disseminating to the public information with respect to patents and trademarks.”

That’s it. Grant, issue, register; disseminate information. Simple and straightforward.

While some may argue that the “issuing” aspect has been forgotten in recent years, its difficult to argue that the Office doesn’t pay sufficient attention to the first responsibility. The granting and issuing of patents and the registration of trademarks is the business of the Office, and the Office treats these responsibilities with the appropriate attention.

The same cannot be said, however, for the second responsibility. The duty to disseminate information to the public seems to be forgotten and, at times, flat ignored.

Yesterday was one of those times.

A storm had dumped a mountain of snow on the D.C. area over the weekend, causing the Office of Personnel Management to advise on its website that all federal agencies in the Washington, D.C. area would be closed the next day, December 21.

Many patent practitioners immediately wondered whether the Office was officially closed…thereby triggering “the rollover rule” that would effectively extend Monday due dates to Tuesday.

Unfortunately, the Office never told the patent community whether it was “officially closed,” leaving more than a few of us with less than a clear picture of whether the rollover rule was in play. Morning came and went without any word…as did the afternoon. Nothing. I’m writing this post at 11:38 PM and the Office website still doesn’t say anything about the closure (or the non-closure).

A simple message on the website would have eliminated all confusion. “The Patent and Trademark Office is open (or closed) for purposes of filing papers and paying fees….”

If you think this is trivial, roll back the clock to Halloween, 2007. As many practitioners were preparing last minute continuation applications in an effort to beat the November 1 effective date of the controversial continuation rules, the United States District Court for the Eastern District of Virginia issued a preliminary injunction that temporarily blocked the implementation of the rules. With the stroke of a pen, the urgency associated with those last minute continuation applications disappeared.

While word of the injunction circulated quickly through the blogosphere, the Office remained silent. In fact, at the close of business that day, the Office still had not directly notified the patent community about the injunction that negated the need to file last minute continuations.

Fail.

Sure the Office has successes in the dissemination arena – the ability to search patents and published applications on the website comes to mind. But there are other glaring failures as well – you still cannot, for example, download a .pdf of an issued patent from the uspto.gov website. Seriously….how amazing is that?

With these failures in the “information dissemination” systems, policies and procedures of the Office, can it be said that the Office is satisfying its duty to disseminate information to the public?

Clearly I think not. The Office can, and must, do better. The uspto.gov website should be viewed as the authoritative source of such information, not the butt of jokes and snarky blog posts. This won’t happen, though, until the Office stops ignoring its responsibility to disseminate information.

Director Kappos is bringing welcome change to many areas of the Office. I’m hopeful that a refresh of the duty to disseminate is somewhere on the punch list.

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Patent and Trademark Office closed on Monday, December 21, 2009 due to snow storm

Sunday, December 20th, 2009

The Office of Personnel Management is reporting that all federal agencies in the Washington, D.C. area will be closed tomorrow, December 21. There is no reason to expect that this won’t apply to the Patent and Trademark Office.

Adjust your Christmas week work schedule accordingly.

Posted in USPTO | 7 Comments »

Friday food for thought: Did the Patent and Trademark Office leave $118 million on the table?

Friday, December 18th, 2009

We’re all familiar with the so-called cash crunch that the Patent and Trademark Office faced during fiscal 2009. Patent-based revenue was hit from several angles during the year, resulting in a dramatic reduction in the fees that support operations. A drop in the number of new applications meant applicants were paying fewer filing fees, and the historically low allowance rate translated to fewer issue fees being paid.

Acting Director John Doll reported the lower filing rate in March…and indicated that the Office had stopped hiring Patent Examiners as a result.

The impact of the shortfall didn’t stop at a hiring freeze, though. The Office warned of furloughs and lowered bonuses, reportedly eliminating some. A source has even indicated that the Office adjusted air conditioning schedules in an attempt to save money.

At the end of the summer, the situation appeared so grim that the Office went to Congress and asked permission to move a$60-70M surplus from the trademark side over to the patent side (yes, an act of Congress is needed).  Congress acted swiftly, and President Obama signed the transfer into law on August 7, 2009.

The urgency of the situation seemed to pass, and operations continued at new ‘adjusted’ levels.

Then, shortly after closing the books on fiscal year 2009, the Office issued its 2009 Performance and Accountability Report. In it, the Office notes that actual fee collections for 2009 totaled $1.874B. As a result, the Office was left with a final appropriation level of $1.874B despite having an approved budget of $2.010B.

So there’s the shortfall. The crunch.

In these circumstances, I would have expected the Office to have spent every penny available to it, making difficult choices along the way. I’m not entirely sure that this happened, though. The following table, reproduced from page 45 of the Report, seems to indicate that $118M was left on the table.

pto_table

I don’t see that management specifically addressed these monies in the Report, and do not know the status of these funds. I suspect they may be lost to fee diversion – a very odd result considering the overall budget shortfall –  since they were not spent during the year in which they were collected. The status indicator “Unobligated Balance, Available” might suggest that the Office will have access to these funds in 2010…but it’s not entirely clear.

FY2009 was certainly full of challenges and I think it’s a bit much to expect the Office to have incurred expenses that neatly matched fee collections, particularly considering the drastic cost-cutting measures that had to be implemented in the final months of the year.  That said, missing it “by that much” would be acceptable. Missing the mark by $118M, though, isn’t.

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The USPTO Practitioner Maintenance Fee – Back on the table?

Monday, December 14th, 2009

Remember the USPTO proposal that would require patent practitioners to pay an annual fee to maintain their license? The practitioner maintenance fee surfaced in November of 2008 when the outgoing Dudas administration pulled it from the shelf – it was published in draft form nearly five years earlier – and fast-tracked it to final form. At the time, the sudden appearance of the final rule in the waning days of the administration looked like a desperate move to put a new regulation on the books as the ill-fated continuation rules remained in limbo (and in litigation).

The saga took a turn in July of this year when the post-Dudas Office attempted to clarify the status of the rule for 2009, indicating that no due date had been announced and that “[n]o decision has been made to collect the fee in FY2009.”

So the rule is officially in limbo, and practitioners don’t know if or when the fee will become due. More importantly, the position of the new Kappos administration on the annual fee and other aspects of the rule remains less than clear.

Now it looks like the Office still considers the rule alive and kicking. On Friday, the Office published a Federal Register Notice [.pdf] that references the “Annual Practitioner Registration Fee” and various other fees related to the rule (voluntary inactive status, USPTO CLE fees, etc.). The Notice is labelled a “continuing information collection” that relates to various aspects of practitioner registration. There is no mention of a due date, and the fee is mentioned alongside several other fees and forms relating to practitioner registration.

The Notice is certainly not a direct indication that the Kappos administration supports the requirement for an annual registration fee. The inclusion of the fee in this “continuing information collection” does, though, seem to indicate that the Office intends to require payment of the fee at some point in the future, perhaps in fiscal year 2010.

The Office is soliciting comments on its “continuing information collection” and will presumably accept comments that address the substance of the proposed annual fee. You can send your input by email to Susan.Fawcett@uspto.gov. Comments must be submitted on or before February 9, 2010.

I have previously offered my support for imposition of the annual fee, with a few important concerns.

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The best choice for Under Secretary for IP/Director of the Patent and Trademark Office – a fresh face with more than the right resume

Saturday, May 2nd, 2009

Hal Wegner reported earlier this week that a selection has been made for the next Under Secretary for Intellectual Property/Director of the Patent and Trademark Office and that the vetting process had begun. Barring any hiccups, an announcement can be expected this week.

Speculation as to the identity of the next Under Secretary is, not surprisingly, running wild. Three individuals – Q. Todd Dickinson, David Kappos, and James Pooley – have been the subject of attention for months now, and a new name – Mike Kirk – was thrust into the ring just last week.

Picking a candidate in this time of turmoil seems an impossible task. There is no shortage of candidates with academic and professional qualifications that are beyond question – each of the favorite candidates above fit into this category.

But, at this critical time, the Office and the patent community desperately need a Director that brings more than merely the right resume. The unprecedented state of disarray in which the Office is operating requires a candidate that brings intangible character traits that aren’t necessarily born from having attended the right school, having worked at the right firm, or having led the Office in the past.

We need a fresh face that, simply by being nominated, sends a signal to all Office stakeholders that a period of healing is set to begin. We need someone that, from day one, instills confidence in all stakeholders that the Office is committed to restoring the sense of partnership that has been destroyed in recent years. We need someone that is willing to try new approaches to old problems while respecting the Office’s role in protecting inventor’s rights. We need someone that values administrative efficiency, but that is not willing to compromise those rights in pursuing it. We need someone that embraces a goal of complete transparency and marries it with the Office’s statutory duty to “disseminat[e] to the public information with respect to patents and trademarks.”

The position is, without doubt, more challenging than it has ever been before and the new Under Secretary stands to inherit an incredible mess. No matter the selection, I firmly believe that the community stands ready to assist the new Director in unravelling everything and setting the Office and the system back on the right track.

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Posted in USPTO | 12 Comments »

Two excellent summaries of Tafas v. Doll

Tuesday, March 24th, 2009

Both Dennis Crouch and Stephen Albainy-Jenei have posted excellent summaries of the Tafas v. Doll case. If you’re looking for more information on this complex case – and the uncertain future of the proposed rules that would limit continuations, Requests for Continued Examination, and claims – be sure to check out both the Patent Baristas post and the PatentlyO post.

As I’ve re-read the case several times, Judge Bryson’s concurring opinion continues to draw my attention. His open wondering about the ability of the Office to limit serially-filed continuations is very interesting…especially when considered in light of the Office’s recent efforts to explore the possibility of implementing a deferred examination system.

Could a deferred examination system that allows an applicant to file, in parallel, several continuations while the original application remains pending provide a compromise to the competing concerns over late-filed continuations and an applicant’s ability to claim that which he disclosed?

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Patent world poised to explode

Tuesday, March 3rd, 2009

Is there anyone out there that still thinks patent law is boring, stuffy, and uneventful? If so, the next few weeks will likely change their viewpoint.

All eyes are on Congress this week as many believe both chambers will see introductions of new vintages of the now perennial patent reform bill. Bicameral introduction, with bipartisan original sponsors in each chamber, is expected and would be a new twist. Such an approach might be a sign that, somehow, this round is different. But don’t forget that, despite significant hearing activity and coverage in the media, patent reform legislation has seen very little movement in previous sessions. Only time will tell if the 111th is any different.

The coming excitement doesn’t end there, though. Remember that the Court of Appeals for the Federal Circuit is sitting on the Tafas v. Dudas case, and a decision could come anytime over the next several weeks. Depending on the outcome, the opinion could represent a posthumous victory for the Dudas administration or a final reminder of its failed attempts at aggressive administrative reform.

And don’t forget that we’re still waiting for President Obama to appoint a new Under Secretary of Commerce/Director of the Patent and Trademark Office. The confirmation hearings for the person tapped for this exciting and challenging post will, no doubt, receive a great deal of attention as many stakeholders wait to see if the Office will continue the policy initiatives of the Dudas era or if new leadership will bring new approaches to familiar problems.

Clear your schedules – there’s plenty of patent law excitement on the way.

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Posted in Congress, Courts, USPTO, caselaw, legislation, regulation | 2 Comments »

Happy New Year and Happy Anniversary

Sunday, January 4th, 2009

Welcome to 2009!

For the first post of the New Year, I thought I’d break tradition a bit. Instead of looking forward and listing all the things I’m hoping for in 2009, I’ve decided to look backward and commemorate an anniversary.

Three years ago this week (January 3rd), the Patent and Trademark Office published the controversial continuation and claim limit rules (read the original Promote the Progress post here).

Three years! Can you believe it?

Since that date, the patent community has lived under an inescapable cloud of doubt as to whether the right to claim a properly disclosed invention would be severely limited by agency rule-making. While we’ll soon have an answer from the Court of Appeals for the Federal Circuit regarding the legality of the continuation rules, the “final” answer on the issue of limiting the right to claim an invention – independent from these rules - might not be known for some time. The philosophy and clout of the next Director, the political climate that develops under the new Administration, and the willingness of the 111th Congress to consider the issue under the patent reform banner will certainly influence the issue.

But this is an anniversary, so let’s reflect a bit. Even though these three-year old rules have yet to become law, their enormous impact on the patent community is undeniable. Most owners of large portfolios of applications made an effort to review their applications to determine if any continuation filings should be made ahead of the original Halloween deadline. These efforts required a significant investment of time and money that, if the rules die in the end, might have been completely unnecessary.

And the Office, no doubt, has spent a small fortune defending the rules.

More importantly, though, the impact of the proposed rules goes way beyond time and money. Over these past three years, I’ve had the opportunity to talk to practitioners and other patent stakeholders around the country and from all sections of the community (private practice, in-house, small company, large company). One thing is clear – the rules have contributed significantly to the deterioration of the sense of partnership between stakeholders and the Office that seemed to exist just a few short years ago.

Happy Anniversary!

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Cross your fingers – Bush administration set to issue twenty ‘highly contentious’ rules in final weeks

Monday, December 1st, 2008

Most outgoing Presidential administrations push through a few regulations in the final weeks of their tenure in a last ditch effort to exert their influence on federal law.  We had reason to believe the Bush administration was different, though – way back in May, Chief of Staff Joshua Bolten issued instructions that final versions of such last ditch regulations should be issued no later than November 1, 2008.

The Bolten memo is apparently set to be ignored, though.  According to this New York Times article, no less that twenty ‘highly contentious’ rules are set to be finalized after the soft November 1 deadline and before inauguration day.

Will we see any new regulations in the patent arena?  Not likely.  Although the ‘highly contentious’ draft IDS and Markush claim regulations remain in limbo, the Dudas-directed PTO has previously indicated that it does not intend to finalize these rules. Also, we’ve passed the 60 day deadline that accommodates the typical lag time for new rules to become effective before inauguration and provides opportunity for a new President to modify or delay last ditch regulations.

Certainly anything is possible, though.  Remember that the Office recently resurrected the Practitioner Maintenance Fee regulation after it sat dormant for five years.

Cross your fingers.

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The practitioner maintenance fee and the promise that should not have been made

Thursday, November 20th, 2008

In the surprise final rule that gave birth to the new (and terribly-named) Practitioner Maintenance Fee, the Patent and Trademark Office promised us that the fees it collects through the new rule won’t be diverted for other purposes:

Comment 2: A large number of comments, citing past history, raised concern that annual practitioner maintenance fee payments would be diverted, and therefore opposed the annual practitioner maintenance fee on the basis that the fees would not be used to operate the roster maintenance process, including the disciplinary system.

Response: The USPTO has operated with full access to fee collections for the past four years. Annual practitioner maintenance fees collected under section 11.8(d) will be used to support maintenance of the roster of registered attorneys and agents, including the disciplinary system.

That’s reassuring, considering the extent to which PTO funds have been diverted to other causes in the past ($422.5 million diverted since 1992).  But is it a promise the Office can rightfully make?

Clearly it isn’t.  Sure the Office currently has full access to the fees it collects.  But, that could be a temporary situation.  Congress has never provided a permanent end to fee diversion (the current fix is the latest temporary fix), and something tells me Congress will be looking for new sources of cash in the coming months.

And the Office knows this.  Indeed, it wasn’t that long ago that the Department of Justice, with Associate Counsel from the Patent and Trademark Office sitting alongside, argued in Figuerora v. United States that Congress could divert all patent fees to other, non-patent purposes if it chose to do so.  Judge Newman’s direct question on this point during oral argument, and government counsel’s response, is illustrative:

Judge Newman – “Is the government’s position that…Congress could appropriate the entire [patent fee] income…and allow the backlog to continue to increase in the patent office if, in fact, [that's] what Congress decided to do?”

Government counsel: “Yes, your Honor. It’s our position that Congress’ legislation is not limited by the preamble’s promotion language on which the Appellant relies.”

The promise that Practitioner Maintenance Fee monies will be used to support OED activities is, simply put, one that the Office cannot make.  It might be true next year, and the year after, but fee diversion will always remain a possibility until Congress implements a permanent fix.

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Posted in USPTO, regulation | 4 Comments »

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