Consumer Watchdog Alleges Google Has "Inappropriately Benefitted" From Ties to Administration, USPTO

Today, Consumer Watchdog, self-described as "a nonprofit, nonpartisan consumer advocacy organization" sent Rep. Darrell Issa (R-CA) a 32-page report arguing "how Google has inappropriately benefited from its close ties to the Obama Administration."

On the "full disclosure" front, Consumer Watchdog has been a longtime (and relentless)  critic of Google, and recently received flak on it's criticism of Google's privacy policies and decision to run a Times Square jumbotron advertisement in September portraying Google as a massive invader of privacy, and caricaturing its ex-CEO Eric Schmidt as a "creepy, high-tech ice cream vendor who profiles children" (link1, link2).

In its latest salvo, CW released a report, culminated from a six-month study, alleging multiple questionable relationships between Google and NASA, the Dept. of Homeland Security, the Federal Communications Commission, and others.  Interestingly, CW implicates the USPTO as well, arguing that that the Office's 2009 deal with Google to publish patent and trademark information for free gives Google "inequitable advantages" over rivals:

Google now has a head start on its rivals in the fiercely competitive cloud computing market, thanks in part to deals inked with the US Patent and Trademark Office and the General Services Administration in the past year. In both cases, Google enjoyed the benefits of support from federal chief information officers. In both cases, a few people involved in the process voiced objections.

Google’s successes started in November 2009 when the USPTO announced its intention to give a sole‐source contract to the search engine to make patent and trademark information available to the public for free. 

Google’s rivals in the field of patent and trademark publishing complained in writing about the contract.  The USPTO then opened the contract to bidding ‐‐ on the condition the service be provided for free. USPTO CIO John Owens continued to push for approval of Google telling company officials in an email in December 2009, “I have quite a bit of pressure to get this deal signed.” Owens didn't explain from where that pressure was coming.

None of the publishing firms bid on the contract.  The no‐cost nature of contract would have an “anticompetitive effect,” said an industry group, the Coalition for Patent and Trademark Information Dissemination.  The arrangement, said a spokesman in a letter to USPTO, would give Google “inequitable advantages in timing, branding and inside technical information” that “are clearly in violation of existing statutes, and would result in unfair competitive advantage over other resellers of patent and trademark information.”

The reason for the group’s concern boils down to the way Google seems to be copying tactics pioneered by Microsoft in order to gain advantages in certain markets. When a company gives away something for free, it is obviously subsidizing the product or service. If that free good or service is obtained on an exclusive basis, it could constitute an illegal advantage. In the case of the PTO, the arrangement seems to raise questions about whether Google, by subsidizing access to certain government information, could ultimately gain a monopoly over that information as other companies find it impossible to compete.

The USPTO officials pushed to get the contract signed before a scheduled meeting between Secretary of Commerce Gary Locke, Director of Patents David Kappos, and Google CEO Eric Schmidt in February 2010.  When the contract was announced, PTO procurement chief Kate Kudrewicz told her contracting officer, “President Obama will be very pleased to hear this news.” Also copied on the e‐mail were Google executives Andrew Young and John Orwant.

To read/download the full report, click here (link)

To read CW's letter to Rep. Issa, click here (link)

Commerce Dept. Continues to Drop Hints on Establishing Regional Patent Offices

Secretary of Commerce Gary Locke was in Detroit for an export conference this week and participated in a roundtable discussion with local small business owners at the Detroit Regional Chamber.  Just prior to leaving, Locke dropped a hint that the Dept. of Commerce was looking to open regional patent offices, and that one of them may be in Detroit.


From Crain's Detroit Business:

The U.S. Commerce Department is considering opening regional offices of the U.S. Patent and Trade[mark] Office as part of its work to help President Barack Obama meet his goal of doubling exports within five years.

When asked how Michigan's manufacturing-heavy industrial base would play a role in meeting that goal, Locke brought up the possibility of a local patent office.

There are currently no regional patent offices in the U.S.

"We're also looking at, for instance, having regional offices for our patent offices. We know that there's a lot of innovation occurring here in Michigan and the Detroit area, so Detroit is a candidate for a separate patent office," Locke said, while scrambling to get to the airport as Tuesday's windstorm hit metro Detroit.

He said it now takes almost three years for an applicant to get a decision on a patent.  "Our goal is to get that down to one year. But a key of that is allowing the patent examiners to talk with the innovators and inventors instead of just trading letters and correspondence or e-mails," Locke said.

Forming regional patent offices is seen as a vital step in decentralizing and improving the patent examination process. Judge Michel has been a very vocal supporter of regional patent offices, and provided the following commentary during an interview (Aug. 2010) with Gene Quinn at the IP Watchdog:

Almost every federal agency I know of has regional offices. The patent office is the odd man out. This isn’t something we don’t know how to do. We do this every year, every day, in practically every agency in the country. They all have regional offices other than the patent office. This is not a hard problem to engineer. This is a question of authority: you have to have the authority to do it. I’m told he doesn’t have the legal authority to open an office in Detroit or Los Angeles, or wherever it might be. Congress has to give it to him or he can’t do it. It’s that simple.

[L]ook at those parts of the country where there are thousands of unemployed engineers who are experienced, competent people, many of whom are experienced in the patent system as well as their scientific or engineering discipline. They’d make the perfect patent examiner and you could solve an employment problem and a backlog problem very efficiently by hiring those experienced people where they are now. Detroit, Houston, wherever it is. Maybe several different places. I think it’s an obvious good idea. Of course it has challenges to it. Anything involving growth and expansion has challenges but I think it would pay off in a very short timeframe and be an extremely efficient way to solve a series of problems. And it’s kind of shocking that these things aren’t even being discussed. 

Are regional offices needed?  You bet.  The PTO has been kicking this idea around for the last five years or so, but no one knows exactly how serious the Office (or Congress) is on the subject.  In 2006, the PTO highlighted the "consideration of establishing regional offices" as a main part of the Strategic Plan; in 2010, there's barely a mention of it . . .

Lemley on Fixing the U.S. Patent Office

What WON'T work:

Preventing Fee Diversion:  "[S]topping fee diversion is hardly a panacea. In the last several years, the UPTO has been fully funded – that is, Congress didn’t divert fees.  Nonetheless, the backlog grew.  The addition of 10-­20% of operating revenue wasn’t enough even to enable the PTO to hold steady."

Increasing PTO Fee-­Setting Authority:  "[I]t is likely not a good idea simply to spend more money to weed out bad patents.  Most of that money will be wasted on applications that are of no consequence to anyone.  And because of the structure of the examination system, it might not even succeed in weeding out bad patent applications.  Even if it did, however, the current fee structure makes patent quality self-limiting . . . the more bad patents [the USPTO] rejects, the fewer patents will pay maintenance fees, and the less money it will have to conduct a detailed examination."

Retaining Patent Examiners:  "There may well be benefits to reducing examiner attrition. But the evidence suggests that weeding out bad patents is not among them. Empirical research by Lemley and Sampat shows that the longer examiners spend at the PTO, the less searching they do, the less likely they are to issue initial rejections or demand claim amendments, and the more likely they are to ultimately grant a patent. (Lemley & Sampat, 2010). It is the most junior examiners who are most likely to reject applications. The reason is not precisely clear, but may have to do with increased workloads on senior examiners, or with acculturation into a corps whose ethos is to grant rather than deny patents."

Outsourcing Patent Searches:  "[R]ecent empirical evidence suggests that it might not work. [A recent study] found that [examiners] rely almost exclusively on art they find for themselves, not art submitted by applicants. And that doesn’t appear to reflect either applicants drafting around the art they found or the weakness of that art; U.S. examiners largely ignored even art that was submitted because it was found important by a foreign patent examiner during examination of a counterpart application. (Cotropia et al., 2010). If examiners are psychologically primed to rely principally on things they find for themselves, it won’t help to have others provide them with the best art. And it might even hurt, causing examiners not to focus on the best prior art."

What MIGHT Work:

"Second Pair of Eyes": 

Shortly after the Federal Circuit held business methods patentable in 1998, the PTO was inundated with business method patent applications. Most of those applications went to class 705. Indeed, by 2001 class 705 had the largest application volume. In response to this flood, the PTO initiated a specific “quality control” measure in this class in March 2000: the “second pair of eyes” review (SPER), under which applications are subjected to mandatory assessment by more than one examiner before being allowed. (Allison & Hunter, 2006). Requiring two examiners to agree seems to have had a dramatic effect: a 2009 study found that class 705 has the lowest grant rate among high volume classes. (Lemley & Sampat, 2008). One possible explanation for the low grant rate in this class is that the second pair of eyes is working, and that the grant rate reflects better rigor during examinations, rather than application volume. The fact that SPER leads to more rejections in Class 705 doesn’t mean it is an unalloyed success . . . Interestingly, the PTO recently shut down the SPER program in business methods. Too much success, it seems, carries its own risks.

Changing Examiner Incentives:

[PTO] human resource policies could be brought to bear, training examiners to search better, or giving them more time, or finding other ways to debias them. And it seems obvious – though likely politically infeasible – that the rules should not treat allowances differently than rejections. (Katznelson, 2010). These are good ideas, and they are worth exploring further. But implementation may be politically difficult. And some of the possible explanations point in different directions: should we give examiners more time to search, or less, for example?

Tiered Review (AKA "Gold Plated Patents"):

The Patent Office should focus its examination resources on important patents and pay little attention to the rest. But it is difficult for the government to know ahead of time which patents are likely to be important. There are two groups, however, that have better information about the likely technological and commercial value of inventions: patent applicants and competitors. To harness information in the hands of patent applicants, we could give applicants the option of earning a presumption of validity by paying for a thorough examination of their inventions. Put differently, applicants should be allowed to “gold plate” their patents by paying for the kind of searching review that would merit a presumption of validity. (Lemley et al., 2005) An applicant who chooses not to pay could still get a patent. That patent, however, would be subject to serious—maybe even de novo—review in the event of litigation. Most likely, applicants would pay for serious review with respect to their most important patents but conserve resources on their more speculative entries.6 That would allow the Patent Office to focus its resources, thus benefiting from the signal given by the applicant’s own self-interested choice.

Read/download: Mark A. Lemley, "Can the Patent Office Be Fixed?  (link)

Study: Applicant-Submitted Art is Largely Ignored by Examiners

Patent law both imposes a duty on patent applicants to submit relevant prior art to the USPTO and assumes that examiners use this information to determine an application's patentability. In a recently-published paper, Christopher Cotropia, Mark Lemley and Bhaven Sampat tested the validity of these assumptions by studying the use made of applicant-submitted prior art by delving into the actual prosecution process in over a thousand different cases.

In short, the findings are quite disturbing:

We find, to our surprise, that patent examiners effectively ignore almost all applicant-submitted art, relying almost exclusively on prior art they find themselves. This is not simply because the applicant has “drafted around” the art they submitted. Even late-submitted art is ignored by examiners. Either applicants submit uniformly weak prior art, or examiners simply ignore what they receive and focus on the art they find themselves. Based on our further examination of the data, the latter explanation seems more likely.

These findings have significant implications on a number of important legal and policy disputes:

(1)  Outsourcing patent searches - if examiners only pay attention to the art they find for themselves, the effectiveness of outside submissions may be questionable.

(2)  Presumption of validity - should the law presume a patent valid over art that the examiner has not given much consideration?

(3)  Inequitable conduct - the findings suggest that the most common form of inequitable conduct - the willful failure to submit prior art to the USPTO - may be less of a problem than previously thought; not because applicants don't try to deceive the USPTO, but because any effort to do so seems wasted.

(4)  Patent valuation - "citation counts" are often used as a prominent measure of a patent's strength.  If counts become inflated due to repeated submissions by an applicant, the strength (i.e., value) of the patent may become overstated.

Other findings from the study:

• Over three-quarters of the submitted art against which patentability is evaluated comes from applicants. Most of the art (63%) is previous U.S. patents.
• Examiners account for a much larger share of citations to U.S. patents versus other types of art. Examiners account for 34% of citations, versus 6.2% for non-patent art and 6.1% for foreign patents. This is consistent with prior suggestions that patent examiners primarily search prior U.S. patents.
• 17 % of the patents in the sample were issued with no rejections.
• Of the references examiners use to reject claims, only 12.7% come from the applicants, while 87.2% come from examiners.
• Over 90% of the U.S. patents used in rejections emanate from examiner searches, rather than from applicants.
• Examiners used only 2.9% of the applicant-submitted foreign patents and 1.1% of the applicant-submitted non-patent art.

To read/download a draft copy of the study, see "Do Applicant Patent Citations Matter? Implications for the Presumption of Validity" (link)

USPTO Close to Agreement With POPA to Overhaul Performance Review for Examiners

USPTO management has worked with representatives of the patent examiners union (POPA) to establish a proposal to "better align the performance standards for patent examiners with the USPTO’s goals for increasing quality in patent examination and reducing the backlog of pending patent applications." If adopted, the changes would be the first major revision to the patent examiners’ performance appraisal plan (PAP) since 1986.

Some of the proposed changes to the Performance Appraisal Plan (PAP) include:

•     Establishing a “Stakeholder Interaction” element that emphasizes routine use of interviews to facilitate compact prosecution and timely responsiveness to requests for personal interviews;

•     Revising the performance standards to include a single quality element for all examiners—increasing the focus on examination quality and improve the transparency of how quality is measured; and

•     Revamping the workflow element to provide examiners more opportunities to use their professional discretion to manage their own workflow.

POPA President Robert Budens is upbeat about the proposal, remarking

"Where other efforts to revise the examiner PAP over the past quarter century have failed, this effort has been successful because management was willing to include POPA in the process . . .this spirit of cooperation has helped to create a new PAP that we feel is beneficial to the examiner while also setting the agency on a more direct path to shorten pendency while maintaining high quality examination."

POPA’s leadership is now sending the revised performance standards to its members for a vote, which is expected to be held in July.  If approved, the new performance standards could be implemented as soon as the 2011 fiscal year.

Of course, the devil will be in the details, which the PTO assures will be provided in the coming weeks . . .


See the USPTO press release here.

Kappos to Propose "Three-Track" Patent Examination Process

From the Wall Street Journal:

U.S. Patent and Trademark Office chief David Kappos is proposing a new three-track system for patent applications that would allow applicants to pay an undisclosed amount on top of the standard $1,090 filing fee to jump to the front of the line for expedited reviews.

* * *

Officials haven't decided how much expedited processing would cost. The middle track would be similar to the system used now, which includes a $755 fee when a patent is issued and periodic fees to keep the patent in effect.


The slowest track would allow companies and inventors to pay a smaller fee and essentially park their applications for up to 30 months before the patent review begins.

Interestingly, nothing's been published on the USPTO web site.  To read more, click here (link)

UPDATE:  The USPTO has now issued a formal press release:

“We recognize that the traditional ‘one-size-fits-all’ examination timing may not work for all applicants,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “By allowing applicants greater control over the timing of examination, the USPTO will be able to deploy its resources to better meet the needs of innovators. We look forward to input from the public as we shape this proposal.”

A public meeting will be held on July 20 at 1:30 p.m. at the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia. Those interested in attending the meeting must register by 5:00 p.m. (EDT) July 16.
Written comments must be submitted by August 20, 2010.
Additional details on the program will be available in the June 4, 2010 edition of the Federal Register.

Video: Kappos Speech on the Future of the USPTO

On April 6, Director Kappos spoke at the William Mitchell College of Law, where he shared his vision for a "more innovation-friendly U.S. patent system."

The law school has graciously posted a video of the speech online - you can watch it here (link)

USPTO Launches Ombudsman Pilot Program for Handing Problematic Examinations

Tuesday the USPTO announced that the agency is looking to assign an ombudsman (plus one backup) to each technology center in an effort to assist applicants in "handling application-processing problems if the normal channels have not been successful."  This one-year pilot program is intended to provide applicants with additional resources to ensure application-processing problems are handled in a more efficient way, thereby saving applicants and the Agency both time and resources and improving patent quality.

According to the Office, the objectives for the Patents Ombudsman Pilot Program are:

1. To facilitate complaint-handling for pro se applicants and applicant’s representatives whose applications have stalled in the examination process; 
2. to track complaints to ensure each is handled within ten business days; 
3. to provide feedback and early warning alerts to USPTO management regarding training needs based on complaint trends; and 
4.  to build a database of frequently asked questions accessible to the public that tracks commonly seen problems and effective resolutions. 

The entire Patent Examining Corps and other Patents operation units (e.g., Office of Patent Application Processing) will be included in the program.

In order to participate in the Patents Ombudsman Pilot Program, pro se applicants or applicants’ representatives must fill an electronic form on the USPTO Web site to provide their name and phone number and select the ombudsman for the patent organization (e.g., TC 2400) in which they are seeking assistance.  After receiving confirmation, The participant should expect a telephone call from the ombudsman within one business day to proceed with the inquiry.

The Patents Ombudsman Pilot Program is scheduled to run for one year from its effective date.  Therefore, any request under the Patents Ombudsman Pilot Program must be submitted before April 6, 2011.

Read the USPTO press release here (link)

Read the Federal Register Notice here (link)

View earlier public comments on the Ombudsman program here (link)

USPTO Looking at a Two Year Delay For Converting Provisional Apps Into Non-Provisional Apps

The USPTO is proposing to change the process for converting provisional patent applications by providing a 12‑month extension to the existing 12-month provisional application period.   In stead of simply providing a two year period, the USPTO will allow applicants to add another year through the missing parts practice in nonprovisional applications.

Essentially, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.

According to Director Kappos:

“One of the things I kept hearing at the many roundtables we’ve held with inventors all across the country was that additional time flexibility during the provisional period would greatly benefit them,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The existing 12-month provisional period may provide too little time for inventors to test the marketplace. Giving applicants a 12-month period to reply to a missing parts notice would effectively give applicants more time to evaluate the value and market potential of their inventions. It not only helps applicants decide whether to incur the additional costs involved in pursuing a patent, but also, makes the patent office more efficient in enabling the delivery of new products and services to market.”

Read the USPTO Press Release here (link)

Read the Fed. Reg. Notice here (link)


Comments are due by June 1 and may be directed to: extended_missing_parts@uspto.gov

(Not So Much of a) Happy New Year For The USPTO

While patent practitioners look for signs of hope and support for an improved USPTO in 2010, Congress is making clear that they won't be doing any favors for the agency this year.  John Schmid of the Milwaukee Journal Sentinel published a report last week claiming that Congress has withdrawn $100M in funds from the Office at the last minute during budget negotiations on December 9.

Congress bases its annual funding decisions on agency estimates on what it expects to collect. For fiscal 2010, the Patent Office initially believed the economic slump would depress fee income, which it projected at $1.887 billion. But the volume of applications unexpectedly increased in the fiscal first quarter, which began Oct. 1, making it likely that the agency could collect at least another $100 million in the current year.

The Patent Office requested a provision that would have allowed the agency to spend up to an additional $100 million, assuming 2010 collections reached an appropriate level; the provision was inserted into early budget drafts. However, it was quietly stripped out at the last minute, the Patent Office said.

"We were expecting a $100 million cushion in the budget, and we were disappointed that it was taken out," an agency spokesman said.

Interestingly, none of the congressional sources for the story were willing to identify which lawmaker or legislative aide was directly responsible for the decision.


This move appeared to be a form of punishment for the USPTO, and particularly to the fee-funded nature of the agency.   In related documents, the congressional budgetary conference noted that

A confluence of factors in fiscal year 2009, including depressed revenues, continuing declines in the patent allowance rate, recent court decisions, and the absence of inflation has highlighted major, unacceptable deficiencies in USPTO's budget formulation and execution processes. USPTO's financial situation in fiscal year 2009, while anomalous, may be repeated again. The decision to rely solely on fee income has removed USPTO from the safety net of the appropriations process and has placed it at the mercy of the economy; it has allowed USPTO to build a boom time infrastructure that it cannot support in an economic downturn. Complicating and contributing to this situation is the fact that USPTO's budget formulation process does not reflect the agency's resource requirements for the relevant fiscal year. Fiscal year 2010 will likely present a new and more daunting set of financial challenges for the agency and achievement of key performance measures will likely continue to decline.

The conferees note that although USPTO is a fee-funded agency, USPTO's budget development process should not be markedly different from other Federal agencies, at least initially. Yet today, the USPTO is unable to produce a clear and concise statement of resources needed to operate independent of the agency's estimate of projected revenues. Whatever advantages the current funding arrangement confers to the agency and its constituencies, the current state of budget formulation, execution and management at the USPTO cannot continue.

Read John Schmid, "Congress deals funding blow to Patent Office" (link)

Read excerpts from congressional budget documents pertaining to the USPTO here (link)

See also IAM Blog, "Bleak times at the USPTO make big fee hikes more likely" (link)

John Farmer, Richmond-Times Dispatch, "Leading-Edge Law: Congress made patent situation worse" (link)

USPTO Launches Patent Quality Improvement Initiative

The USPTO has been establishing procedures for measuring the quality of patent examination and to improve overall patent quality (together with the Patent Public Advisory Committee (PPAC)).  The Office is now seeking help from the public.  From a recent Federal Register Notice:

As part of this effort to improve the quality of the overall patent examination and prosecution process, to reduce patent application pendency, and to ensure that granted patents are valid and provide clear notice, the USPTO would like to focus, inter alia, on improving the process for obtaining the best prior art, preparation of the initial application, and examination and prosecution of the application. The USPTO is seeking public comment directed to this focus with respect to methods that may be employed by applicants and the USPTO to enhance the quality of issued patents, to identify appropriate indicia of quality, and to establish metrics for the measurement of the indicia. This notice is not directed to patent law statutory change or substantive new rules. It is directed to the shared responsibility of the USPTO and the public for improving quality and reducing pendency within the existing statutory and regulatory framework.

For purposes of this notice, a "quality patent" is defined as a patent:

(a) For which the record is clear that the application has received a thorough and complete examination, addressing all issues on the record, all examination having been done in a manner lending confidence to the public and patent owner that the resulting patent is most likely valid;

(b) for which the protection granted is of proper scope; and

(c) which provides sufficiently clear notice to the public as to what is protected by the claims.

Notably, the term ‘‘quality patent’’ does not include the economic value of the resulting patent.

For ease of organization and analysis, the areas for which the USPTO is requesting comment are divided into specific categories:

Category 1—Quality measures used: metrics that would supplement or improve current metrics (i.e., Allowance Compliance Rate and In-Process Revbiew Compliance)

Category 2—Stages of Monitoring: stages of examination where quality metrics should be measured

Category 3—Pendency: 'nuff said

Category 4—Pilot Programs: feedback regarding the effect on patent quality and examination quality resulting from various pilot programs (e.g., Peer-to-Patent, Pre-Appeal Brief Conference Pilot, First Action Interview Pilot, Continuing Education for Practitioners (CEP) Pilot)

Category 5—Customer Surveys Regarding Quality: feedback on past USPTO surveys of the patent community and proposed modifications for future surveys.

Category 6—Tools for Achieving Objectives: requesting identification of existing tools which are, or can be made, available to users and the USPTO to enhance the quality of the USPTO’s processes. This would include, for example, software tools that  will provide meaningful monitoring, search tools, claim analysis tools, and case law identification tools.

Category 7—Incentives:  requesting comments on means to incentivize applicants and USPTO personnel to adopt procedures and practices that support the achievement of patent quality. Notes the PTO: "It is recognized that any additional effort to increase the quality of the product has an associated cost."

Written comments must be received on or before February 8, 2010. No public hearing will be held.  Written comments should  be sent by email addressed to patent_quality_comments@uspto.gov.

Download a copy of the Notice here (link)

USPTO Looks to Reduce "Stress" of Data Delivery, Seeks High-Volume Dissemination for Future

Currently, the USPTO is looking to unload about 2 petabytes (i.e., 2000 terabytes) of patent-related data sets to an outside vendor in an effort to segregate public data from the examiner systems, and to make "virtually all public information from the USPTO accessible on the Internet. " Importantly, the PTO wants to make this information free of charge to the public, including current pay-for-service data products (e.g., XML Grants). Also, this change appears to be part of a longer-term "data dissemination solution" for allowing high-volume dissemination.

These data sets include:

• Application documents (Specification, Claims, Amendments, etc.)
• Meta Data associated with the Applications (Application Data/Transaction History/Patent Term Adjustment/Patent Term Extension Foreign Priority/Attorney Address/Continuity Data/Published Documents)
• Assignment Data, including history of assignments
• Fee Data Associated with the Patent Application/Patent
• Application Meta Data (document or paper type/ date of the paper/ page size)

Notably, the USPTO has no current plans to scan or convert paper files into electronic form.

According to the USPTO:

One of the agency’s potential solutions is to enter into one or more no cost contract(s) where the vendor(s) will fund the development of a secure infrastructure at the USPTO that will permit unrestricted delivery (exceptions to this may be treaties with foreign countries or data considered to be sensitive if shared with certain other specific countries/entities) of the data in bulk or a common machine readable format to the vendor. The vendor will be responsible for funding the ongoing operation of the infrastructure, including the maintenance of the historical data and the periodic updates to the data. The vendor will also be required to make the data that is provided by the USPTO available to the public on a no charge basis. As part of any resulting agreement, the vendor will be allowed to maintain, repackage (add value), distribute, and sell any resulting enhanced data sets and retain any fees collected.

For more information, see "USPTO's Data Dissemination Solution" via Fed BizOpps.gov (link)

Read the PTO's Q&A document on the project here (link)

For a timeline on the project, click here (link)

For a list of interested vendors competing for this work, see here (link)

See also, "Patent office wants help reselling data" (link)

First Action Interview Pilot Program Expanded by the USPTO

Lat week the USPTO announced that it is expanding its First Action Interview Pilot Program, where an applicant is entitled to an interview with the patent examiner prior to the first office action on the merits in a new utility application.

Previously, the program was limited to two computer-related technology areas, but now includes additional technology areas for a six-month period beginning on October 1, 2009. According to the USPTO, the initial pilot program showed that

[T]he patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one. For the applications involved in the initial pilot, the First-Action Allowance rate increased six-fold when compared to applications from the same technology area not involved in the pilot.

Currently, an applicant may request an interview prior to a first action. However, granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the expanded pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication, which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment or remarks (arguments).

Should the applicant choose not to have a first action interview, a First Action Interview office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance and fees due will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a First Action Interview office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, to reply, with limited extensions of time. It is this First Action Interview office action that is considered the first action on the merits in the application.

There have been several improvements made to the program since the initial pilot. For example, the response period to reply to the pre-interview communication can now be extended by 30 days. Also, the applicant can now waive receipt of the First Action Interview office action during the interview with the examiner, convert the previously-submitted draft amendment to a formal amendment and proceed directly to the second substantive examination. This may be preferable to those who would prefer not to wait for the First Action Interview office action and refile the proposed amendment formally.

For details regarding eligibility and criteria for participation in the pilot, click here (link) (to see the enhanced page, click here)

Read the USPTO press release here (link)

- Generally, an applicant's request to participate in the program must be filed during the six month life of the program and at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system.

- The request to enter the Pilot Program must be made via EFS-Web

"That's One Small Step . . ." Kappos Starts PTO Reform By Tweaking Examiner Productivity Metrics

Yesterday, the PTO published a briefing paper that was provided to the USPTO examining corps (via POPA) on a proposal that would change the "count system" in the USPTO, which is universally blamed as being a large contributor to the current backlog. Under the current count system, examiners are paid using a modified GS schedule and earn more money through productivity "count" incentives. As examination progresses, examiners get counts to earn incentive credits at various stages. The more "counts" an examiner gets, the more money he/she typically earns.

Of course, this has led to accusation of examiners (as well as applicants) "gaming" the system to gain an advantage (e.g., "RCE churning"). The current proposals are aimed at curbing these practices.

The modified count proposal rests on the following:

• Combining count system with more time for examiners;

• Providing more time overall for examiners by: (1) adding 2 hours to each examiner’s FY09 Hrs/BD); and (2) add additional time, if necessary, to account for reduction in RCE counts so that every examiner gets at least 1 net additional hour over their FY09 expectancy;

• Give more time for First Action on the Merits - shift counts so FAOMs get more credit, and subsequent actions get less;

• Diminish credit for Requests for Continued Examination (RCEs);

• Provide time for examiner-initiated interviews - one hour of non-examining time would be granted for conducting the interview and preparing the post-interview documentation for examiner initiated interviews (interviews for restrictions would be excluded); and

• Provide consistent credit for transferred or “inherited” amendments - initial or first Office Action done by the new examiner on the transferred or “inherited” amendment will get a set amount of counts (non-RCE transfers = 1.5 additional counts total; RCE transfers = 1.75 counts).

With regard to patent quality review:

- No examiner shall receive an oral warning based upon a single clear error in Patentability Determination.

- No examiner shall be deemed to have failed an oral warning improvement period on the basis of a single clear error in Patentability Determination.

- However, an examiner may receive an oral warning for multiple clear errors in Patentability Determination over a period of two or more consecutive quarters during a fiscal year.

As a side note, the Kappos proposal is not final - the modifications must still be approved by agency employees in the coming weeks. If enacted, the modifications to the count system would be the first major change since 1976.

Applicants should be encouraged that this proposal came so quickly after Kappos took over in the USPTO. Additionally, the USPTO has traditionally been less-than-eager to post or otherwise publish these types of internal documents - the openness of the current regime is certainly refreshing.

To view the briefing paper, click here (link)

Kappos Gives First Public Address at IPO Annual Meeting

IPO has now concluded its annual meeting here in Chicago, where one of the many highlights was David Kappos serving as the "kick-off" speaker. In his speech (now posted on the USPTO site), Kappos discussed future plans and goals for the USPTO:

- Reengineer the examiner count system - "we’re going to have a count system that helps everyone get to the point without requiring two or three RCEs."

- Cut pendency across the board, by allowing an applicant to select an application to advance in the queue in exchange for each application they withdraw before substantive examination.

- Focus on global worksharing—which Kappos believes "is key to helping us meet the increasing challenge of efficiently managing the USPTO’s workload."

- "Our biggest challenge – Funding."

- Future objectives include:

• Reducing first action pendency to 10 months and overall pendency to 20 months;

• Decreasing the size of the patent application backlog to approximately 300,000 cases;

• Reducing patent appeals pendency to 3 months;

• Reducing reexamination pendency to 1 year;

• Bringing the quality of PCT processing to world-class level; and

• Implementing a robust IT system capable of supporting all the USPTO’s operations on a 24/7 basis, and capable of facilitating full electronic patent and trademark processing.

Read the speech in its entirety here (link)

MORE: According to the Just a Patent Examiner Blog, Kappos has started a blog. For the time being, it's only hosted on the internal USPTO servers. However, according to the blog, "we plan to make the blog available to the public in the coming weeks." Also, internal USPTO announcements indicate that a joint union and management task force will begin the work of "addressing the patent examiner count system."

"Senior Management Changes" at the USPTO; Doll Retires

Today the PTO announced that, after 35 years at the USPTO, Commissioner for Patents John Doll has intends to retire from the agency on October 2, 2009. As a result, David Kappos has nominated longtime USPTO executive Robert (“Bob”) Stoll to the position of Commissioner for Patents, and has named Margaret (“Peggy”) Focarino Deputy Commissioner for Patents.

It is expected that U.S. Commerce Secretary Gary Locke will appoint Stoll after Doll’s retirement becomes official. The Commissioner appointment is for a term of five years.

It is not certain how Doll's retirement will affect the ongoing continuation rules litigation (Tafas v. Doll), but it certainly won't help the PTO's case at this point.

See Stoll's biography here (link)

See Focarino's biography here (link)

Read the PTO announcement in its entirety here (link)

USPTO Looking for Deputy Commissioner For Patent Examination Policy

From the USAJobs Site:

DEPUTY COMMISSIONER FOR PATENT EXAMINATION POLICY

SALARY RANGE: 117,787.00 - 177,000.00 USD /year

OPEN PERIOD: Friday, August 21, 2009to Monday, September 21, 2009

SERIES & GRADE: ES-1220-0/0

POSITION INFORMATION: This is a Full-Time General position in the Senior Executive Service. This position is located in the Office of the Commissioner for Patents of the U.S. Patent and Trademark Office, Alexandria, Virginia.

DUTY LOCATIONS: vacancy(s) in one of the following locations: 1 vacancy - Alexandria, VA
WHO MAY BE CONSIDERED: Applications will be accepted from all groups of qualified individuals. (U.S. citizenship required)

JOB SUMMARY:

The United States Patent and Trademark Office (USPTO), a progressive organization dealing with intellectual property issues around the world, is seeking a high performing professional to join its Senior Executive Team as the Deputy Commissioner for Patent Examination Policy.
The USPTO is a fully user fee-funded organization with an annual budget in excess of $1.9 billion and approximately 9,000 employees comprised largely of engineers, scientists, and attorneys. The USPTO operates as a performance-based organization; has received an unqualified audit opinion for thirteen consecutive years; formulates a performance-based budget; relies on performance-based contracting; has an award-winning performance reporting program; and is transitioning to electronic end-to-end processing of both patent and trademark applications. The USPTO is located at its new state-of-the-art headquarters in Alexandria, VA.

KEY REQUIREMENTS:

Selectee is subject to a 1 year SES probationary period
Selectee is subject to a Federal Executive Personnel Financial Disclosure.
Successful completion of a background investigation is required.

Read more here (link)

CAFC Pushes Back on PTO Actions

In Re McNeil-PPC, Inc., 2008-1546, July 31, 2009

McNeil owns a patent claiming a tampon for feminine hygiene with a solid fiber core in which the core is denser than the radially projecting "ribs" and the ribs are narrower at their bases than their distal ends. McNeil requested that the PTO reexamine its patent based on an unexamined Japanese application (Sasaki). The PTO rejected the patent as anticipated and obvious over Sasaki. McNeil appealed.

One of the issues surrounded McNeil's request for reconsideration, which the BPAI considered "untimely." While the first page of the Board's decision is marked "May 30, 2008", the image file wrapper ("IFW"), listed the "Mail Room Date" of the decision as June 2, 2008. McNeil filed the Notice of appeal on August 1, 2008.

McNeil presented a declaration from Jeffrey Nase, a now-retired member of the Board from 1996 to 2006, who had been employed by the PTO continuously before that going back to 1973.

The CAFC found Nase's declaration convincing:

The following is a summary of Nase's declaration: Historically, the date the PTO mailed a document was the date that triggered any response period. It is unclear why the opinion says "Decided: May 30, 2008" but was not mailed until June 2—perhaps the mail room was slow, or perhaps one of the members of the Board panel decided to revise the opinion or reconsider it over the weekend of May 31 and June 1, 2008. Before August 2006, the date decided was hand-stamped on the front of opinions; beginning only in August 2006 did the Board decision have the date decided typed on the front. Nase opines that if the PTO had intended this minor formatting change to have substantive effect, there would have been public notice (which there was not).

* * *

Because the "Transaction History" page appears inaccurate, and because Nase's declaration provides the most plausible explanation for the conflicting evidence of when the Board took action on McNeil's request for reconsideration and is corroborated by the IFW entry, we find that the Board issued its decision on McNeil's request on June 2, 2008, and that the Board therefore decided this case on June 2, 2008, not May 30. McNeil's appeal is therefore timely.

On the merits of the rejection, the CAFC found that the PTO missed the boat regarding the claim language:

It is not entirely clear, however, that the Board understood McNeil's claim. In its initial decision, the Board stated, "We find that Sasaki's Figures 8 and 10 reasonably appear to depict the ribs of its tampon as being compressed less at their distal ends than at their ends proximal to the drawstring at the center of the drawn fiber strips." . . . McNeil's claim, however, states that the ribs are less dense than the core, not that the distal ends of the ribs are less dense than the proximal ends . . . the Board quoted a claim of Sasaki, which stated that "compressed masses [are] formed at equal intervals along the axial line direction on the outside circumferential surface of the tampon." . . . Sasaki makes no comparison between these "compressed masses" and any core. In fact, it is not clear that Sasaki contains a "core" at all. Instead, Figure 8 is drawn in such a way that suggests Sasaki's tampon is composed of six ribs and no core. There is not substantial evidence, indeed, no evidence, that Sasaki discloses [the claimed features].

The Board's rejection of claim 1 as anticipated lacks substantial evidentiary support and is therefore reversed. Because claims 1, 3, and 4 stood or fell together, the rejections of claims 3 and 4 are also reversed.

Download a copy of the opinion here (link)

---------------------------

Jorge Taylor v. USPTO, 2009-1133, August 4, 2009 (Nonprecedential)

Taylor was a pro se inventor that obtained a patent on a chemical sealant device for repairing flat tires. When it came time to pay the maintenance fee, Taylor alleged that the PTO informed him by phone that his required fee was $1,030, which he paid by check. It turned out that the correct fee was supposed to be $1,040, and not $1030. Also, Taylor used the wrong form for transmitting his payment, and sent the payment to the Applications Branch rather than the Maintenance Fee branch.

After cashing the check, the PTO surmised that the PTO employee who processed the form may not have recognized this filing as an attempt to pay a maintenance fee, and may have processed it as a regular application filing fee.

When it came time to pay the 11 1/2 year fee, the PTO informed Taylor that the patent expired, and refused to accept his petitions to revive the application. The CAFC found that the PTO's handling of the application was "arbitrary and capricious":

The unrebutted record shows that the PTO did not inform Mr. Taylor that his January 2001 payment of $1030 was deficient by $10. Instead, the record shows that the PTO cashed Mr. Taylor’s check and still proceeded to consider his patent expired. These actions are inconsistent with the PTO’s obligation under MPEP § 2531 to provide a “Notice of Non-Acceptance of Patent Maintenance Fee” to the “fee submitter,” here Mr. Taylor.

[A]lthough the MPEP “does not have the force of law,” . . . it “has been held to describe procedures on which the public can rely.” . . . In this case, the MPEP notice to the fee submitter of maintenance fee insufficiency accords with the most basic notions of fairness and procedural due process. This court finds that the Office’s course of action in accepting Mr. Taylor’s deficient payment on the one hand, while on the other hand expiring his patent without notifying him under MPEP § 2531 that his payment was inadequate, was arbitrary and capricious. . . . In this case, equity would counsel that the PTO should reinstate Mr. Taylor’s patent upon receipt of his payment for all outstanding maintenance fees. This relief will remedy, to this court’s best estimation, the PTO’s arbitrary and capricious actions.

Read/download the opinion here (link)

USPTO News Shorts

USPTO published final rules on PCT procedure - The USPTO has revised the rules of practice in 37 CFR 1.485 on how applicants may make amendments to the claims in an international application. Under the current PCT Regulations, applicants are required to submit replacement pages for only those pages which contain changes, where under the revised PCT Regulations applicants will be required to submit a complete set of the claims when amending any of the claims. This rule went into effect on July 1, 2009.

Read the notice here (link)

e-Office Action Program Delayed - from the PTO "The e-Office Action Program production launch, scheduled for June 29th, has been delayed. It is currently expected to occur in July. Applicants can still participate in the e-Office Action Pilot Program before the launch by sending an e-mail to the PAIR team at PAIR@USPTO.gov and start taking advantage of the many benefits it offers."

For more information on the e-Office Action Program, see here (link) and here (link).

USPTO Bailout Bill Introduced

From National Journal's "Tech Daily Dose":

Senate Judiciary Chairman Patrick Leahy and ranking member Jeff Sessions came to the rescue of the Patent and Trademark Office on Wednesday night when they introduced a bill that will allow the agency to use funds designated for its trademark portfolio to be used to address its growing backlog of patent applications. The trademark budget, which is statutorily untouchable, has a $60 million-$70 million surplus. CongressDaily reported this week that Commerce Department and PTO officials had been making the rounds on Capitol Hill to let key lawmakers know how the office was struggling in the recession and offering up legislative ideas like the loan plan.

The PTO, which is funded through fees collected from its users, suspended overtime pay for patent examiners effective Sunday and earlier this year instituted a hiring freeze amid a slump in the number of patent applications filed. Under the bill, the PTO can make use of the money "to support the processing of patents and other activities, services, and materials relating to patents" if the office's director certifies to Congress the use of funds "is reasonably necessary to avoid furloughs or a reduction-in-force." The borrowed money would have to be put back in the trademark basket no later than Sept. 30, 2011.

Read"Leahy Offers Patent Office Bailout Bill" (link)

See also "U.S. patent office shortfall worsens"(link)