The Patent and Trademark Office just finished an online presentation of the major features of the newest version of Private PAIR (dubbed “Private PAIR 6.0”).

Later this afternoon, the presentation will be available here for review:  http://webex.client.ninesystems.com/uspto.

The Office deserves kudos for this release of Private PAIR.  The new version has a great interface, is entirely web-based (goodbye USPTO Direct!  and good riddance!), and has a slew of new features that should prove helpful (including a first action predictor that is pretty slick and appears fairly accurate).

Steve and I watched the presentation (and even skyped messages back and forth during; we are hopeless nerds…).  Our “on the fly” notes are available via Rethink(IP) RSS mojo here.

As an added bonus, the presenters dropped several hints about the soon-to-be-released new electronic filing system (estimated date of arrival is currently March 17, 2006).  If their hints prove accurate, the new system just might be what the community has been looking for – a simple solution to electronic filing of paperwork in patent cases.

Look for an online presentation from the Office on the new e-filing system soon.

The patent community is still digesting the potential effects of the PTO proposed rule placing limitations on continuation and continued examination practice. The rule stands to have sweeping effects on patent practice, particularly in the industries that rely heavily on these aspects of patent prosecution.

One thing is clear – if the proposed rule is adopted, a surge in application filings is likely to occur just before the effective date as applicants seek to file claims and avoid the dreaded “justify your existence” petition for filing continuing applications. A small surge in filing of Requests for Continued Examinations might also be seen as ripe cases are accelerated to avoid tripping the petition requirement.

It is difficult, if not impossible, to predict the magnitude of the surge that might occur. These exercises can help you gain an appreciation for what might occur:

First, ask yourself what would happen if every single patent applicant was forced to review their pending application(s) for unclaimed subject matter.

Second, ask yourself what advice you will give to your clients that have pending patent applications as the effective date of the new rule approaches (assuming it is adopted, of course).

Third, ask yourself what subject matter is disclosed in, but not yet claimed by, every single patent application for which you are responsible.

As you consider these questions, remind yourself that the standard for the “justify your existence”" petition, as created by the proposed rule, is completely undefined and seemingly arbitrary.

Worrisome, to say the least.

Here’s another exercise that helps. The closest real-world example of an application surge is the GATT-induced surge in filings of June, 1995. I pulled some data from the PTO website to create the graph below, which shows the number of applications filed on June 7 of every year from 1990 to 2000. Note that the graph does not illustrate the complete surge because it only includes applications that matured into patents. I presume that many more applications were actually filed.

Over 10,000 applications were filed on June 7, 1995, nearly twenty times the average for June 7 of the other years between 1990 and 2000. The impact of this surge on industry, both in terms of workload and expense, was enormous. The impact of the coming surge, I believe, would rival or even best the GATT surge.

Earlier this month, the House Judiciary Committee officially placed Patent and Trademark Office fees on the calendar by recommending passage of the Patent and Trademark Fee Modernization Act of 2005 (H.R. 2791) (PTFMA) without amendment.

While the future of the PTFMA is not clear, we know that PTO funding and fees must be debated at some point this year because the provisions of the Consolidated Appropriations Act of 2005 (H.R. 4818) expire at the end of fiscal year 2006 (September 30, 2006).

Fees and funding, of course, seem to necessarily lead to debate of the fee diversion issue (in fact, the PTFMA includes anti-fee diversion provisions).  That said, it seems that now would be an appropriate time to write your Representative and express your beliefs about the diversion issue.  As you’re penning your letter, consider the following:

1.  Despite the bitter disagreement on several patent reform issues, most PTO stakeholders strongly oppose the concept of fee diversion and support a permanent legislative fix to the problem (H.R. 4818 provides a temporary fix).

2.  At least one influential person believes that innovation is important to our future as a leader of the global economy.  Will our system for protecting innovation be up to the challenge if fee diversion continues?

Feel like writing?  Find your Representative here.

Yesterday, the United States Patent and Trademark Office issued U.S. Patent No. 7,000,000 to John O’Brien (assigned to DuPont) for POLYSACCHARIDE FIBERS.

It took roughly six years to issue the million patents between US 6,000,000 and US 7,000,000. The time it takes to issue each successive set of one million patents continues to shrink, a sure sign of the increasing importance of US patents and of the ability of the Office to handle an increasing workload.

But, US 7,000,000 is symbolic for other reasons, too. Consider this – the file history shows that it took more than two years for the Office to issue a first action on the merits and nearly five years to issue the patent despite the fact that no continuations or requests for continued examination were filed. This application enjoyed a relatively straightforward prosecution, but it still took nearly five years for the inventor and assignee to secure their rights.

These delays are entirely unacceptable but, unfortunately, not out of the ordinary, especially in the chemical arts. As the Office continues to point out, the backlog of applications is back-breaking and growing. They need help, including more Examiners, more money, and reasonable and effective change (as John Doll recently put it, we can’t simply hire our way out of this problem).

So, as we celebrate the issuance of US 7,000,000, let’s remember all that it symbolizes, including the massive backlog currently sitting at the Office.

The United States Patent and Trademark Office is currently developing a new strategic plan and Commissioner John Doll wants your input. The Office is interested in ideas from all types of stakeholders, including individual inventors, small and large businesses, and practitioners. You can send your comments via e-mail to StrategicPlanning1@uspto.gov.

This invitation to participate in the strategic planning efforts of the Office may indeed be the best forum for presenting ideas and suggestions for improving the prosecution system. I encourage everyone involved in the system to share your thoughts, ideas and suggestions with the Office.

You can view and/or download various materials relating to the current strategic plan, the 21st Century Strategic Plan, here.

Last week, the House Judiciary Committee released its report on the Patent and Trademark Fee Modernization Act of 2005 (H.R. 2791) (PTFMA). The Committee reports that it has considered the bill and that it recommends its passage without amendment.

You can view and/or download a copy of the report here.

The PTFMA was introduced on the same day as the Patent Act of 2005 (H.R. 2795) and is one of two completely different strategies to ending PTO fee diversion that are currently pending in Congress. The PTFMA includes the controversial anti-fee diversion provisions that were excised from the major PTO fee bill from the 108th Congress, H.R. 1561, on the eve of its passage by way of absorption into the omnibus appropriations bill. Just like H.R. 1561, the PTFMA sets up a refund system to avoid fee diversion while the other strategy – embodied in the COMPETE Act (S. 1020), which currently sits idle in the Senate Committee on Finance – avoids fee diversion using a fee reduction system.

With the release of the report from the House Judiciary Committee, the PTFMA continues to enjoy an early lead, likely because H.R. 1561 enjoyed such broad support amongst PTO stakeholders.

A debate on PTO funding – and fee diversion – may be held soon if the PTFMA makes it onto the floor calendar.

You can view the PTP archives relating to the PTFMA here.

You can view the PTP archives relating to the COMPETE Act here.

Several friends have shared their experience and insight from the Patent and Trademark Office Town Hall meeting in Chicago last week. The meeting focused on the rule changes proposed by the Office earlier this year.

A good friend provided the slides from the presentations of John Doll (Commissioner for Patents) and James Toupin (General Counsel) from the meeting. John Doll graciously granted permission for me to make the slides available on the blog.

You can view and/or download a .pdf of the slides here.

I haven’t had a chance to review them in detail, but will soon. Feel free to e-mail me with any comments you have on the information presented.

On Friday, the UK Patent Office launched a public consultation aimed at evaluating the inventive step requirement for patentability in the UK. The consultation specifically asks the following questions:

&#149 Is the inventive step requirement for patentable inventions in the United Kingdom right for inventors, the public at large, and the UK economy?

&#149 Are too many “trivial” patents being granted?

&#149 Or are innovation and competitiveness best served by easy patenting with low hurdles?

You can download the full consultation document, including the feedback form, here. Comments should be returned to the Patent Office by May 31, 2006.

For more, see this article on ZDNet.

The Patently-O blog has an excellent review of last week’s Patent and Trademark Office Town Hall meeting held in Chicago. The Office held the meeting to present background information regarding the two rule changes it proposed earlier this year. If you’re following the development of the radical changes proposed by the Office, the Patently-O post is required reading — Kevin Noonan, the author, attended the meeting and provides a detailed, blow-by-blow review.

It’s Friday…here’s some food for thought:

Probably the most interesting thing I read this week is Alessandra Galloni’s Wall Street Journal article, As Luxury Industry Goes Global, Knock-Off Merchants Follow. Ms. Galloni provides amazing detail on the morphing of the proprietor behind what sounds like a small, local watch retailer in Italy (“Mister Watch”) into an international knock-off kingpin. (You can read it here; a subscription is required).

The counterfeiting business is booming. If you don’t already believe that, you will after reading Ms. Galloni’s article. Consider this — according to the article, profits on counterfeit goods can reach $10 per $1 invested; a level that is higher than that realized by the companies being copied and equivalent to returns realized in the illicit drug trade.

Read that again…counterfeiting pays as much as dealing in illegal drugs.

The policy challenges of keeping up with this boom are amazing, particularly once you appreciate the international nature of the business (also described in great detail by Ms. Galloni).

Enjoy that while you watch the Super Bowl. Be sure to get your officially-licensed goods at the NFL Shop.