Posts Tagged ‘pto’

Duty of Disclosure During Patent Prosecution and Supplementing the Disclosure

Friday, 03 February, 2012 14:01 Written by Mark Malek 0 Comments

By: Mark R. Malek

You may recall that I wrote an article recently which noted that there is a duty of disclosure when filing a patent application in the United States.  For the sake of a quick summary, in return for the exclusive right to exploit an invention, the government requires the Applicant to disclose all prior art known to them in order to ensure a more detailed examination of the patent application.  In other words – no hiding the ball on the Patent Office.

The process in which information is disclosed to the Patent Office is by filing an Information Disclosure Statement (IDS).  The IDS includes a list of all the prior art references that the Applicant believes are relevant to the invention, as defined by the claims in the patent application.  There is a lot of prior art out there, and the best that every Applicant can do is to disclose the prior art that they know about.

The big question is about the prior art that the Applicant discovers after filing the IDS.  Is all lost?  Has the Applicant now committed fraud on the Patent Office?  That depends on how this is handled.  If the Applicant does nothing about the prior art that is discovered, then the likelihood that the patent stands up to a challenge of validity is very, very slim.  In fact, if it can be shown that the Applicant later became aware of relevant prior art, and chose not to inform the Patent Office, it is almost a foregone conclusion that the patent will be found invalid.  Worse yet, the Applicant may be found to have engaged in inequitable conduct, which can lead to liability for attorneys’ fees.

So how does the Applicant avoid this?  By filing a supplemental IDS.  It is exactly what it sounds like.  It is another IDS that supplements the original.  This is simple enough, and a good way to ensure that the Applicant has fulfilled the duty of disclosure to the Patent Office.

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 4 Comments

By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

Commissioner for Patents Retires

Saturday, 05 November, 2011 23:20 Written by Mark Malek 0 Comments

By: Mark R. Malek

According to a press release http://www.uspto.gov/news/pr/2011/11-62.jsp issued by   the United States Patent and Trademark Office, the Commissioner for Patents, Robert   Stoll, has announced his intention to retire.  His retirement will be effective December 31, 2011.  Director Kappos has already announced his nomination for the vacancy, current Deputy Commissioner for Patents, Peggy Focarino.

Stoll served at the patent office for over 29 years.  He held numerous leadership positions, and was instrumental in reducing the patent backlog to just below 670,000 patents.  I know that doesn’t sound like good news, but remember that the patent backlog was well over 900,000 patents not too long ago.

“Having spent over 30 years in government, there has been no greater honor than helping to lead our nation’s innovation agency—the USPTO,” said Stoll. “The Office has made historic progress under Director Kappos. As the new Commissioner, I know that Peggy will provide extraordinary leadership that will ensure the continued improvement of patent operations and the successful implementation of the America Invents Act. I wish everyone at the USPTO the very best in your continuing efforts to assure that the United States leads the world in protecting and promoting intellectual property.”

All of us at Zies Widerman & Malek wish Commissioner Stoll all the best.

 

 

Patent Reform Bill Passes the Senate an on its way to the President

Friday, 09 September, 2011 09:14 Written by Mark Malek 2 Comments

By: Mark R. Malek

The United States Senate has now passed the American Invents Act by a vote of 89 to 9.  See Gene Quinn’s recent article on IPWatchdog.com for some great insight on how the vote went.  I do agree with Gene that this version of the patent reform bill is not a great one.  My biggest gripe is that the bill continues to divert fees away from the patent office.

There was a point during this process when I thought that fee diversion was finally over.  I wrote an article back in February when PTO Director David Kappos announced President Obama’s 2012 budget.  The great news during that announcement was that the budget provided $2.71 Billion for the PTO.  It is not a coincidence that the PTO was budgeted to raise $2.71 Billion in fees this year.  In other words, the PTO was pulling its own weight as far as the federal budget was concerned.  Tax payers did not feel any burden by the PTO.  As we all know, any thought that the PTO could keep the fees that it generated in order to enhance its efficiency was over quickly when the folks that we trust to run our country could not agree on a budget, and almost shut down the entire country.  Here’s my other article about that disaster, and about how the brilliance of DC cost the PTO a big cut in funding.  Aaron Thalwitzer also wrote a great article about how the budget crisis screwed some of the PTO improvements.

I just don’t get it.  What exactly has this patent reform accomplished?  I keep hearing that this will create jobs, but the only jobs that I can almost guarantee will be created is going to be for patent attorneys!  With the first to file system that is imminent, I plan on getting even busier with new patent filings.  Gone are the days when the inventor can give the market a quick test before filing.   Gone is the time to try to tweak your invention prior to filing the patent application.  Now is the time to file early and file often.

Let me ask this other question of Congress – how is it that innovation will grow and patents will get issued quicker if you have stripped the Patent Office of the funding it needs to hire more Examiners and enhance their technology?  If the fundamental problem of lengthy patent pendency remains, then how are more jobs going to be created?  Seriously, these folks just find a catch phrase and stick with it.  “Patent Reform with create jobs” is the most ridiculous one that I have heard to date.

 

Angry Birds Developer Latest Invitee to the Lodsys Patent Infringement Party

Wednesday, 27 July, 2011 09:34 Written by Mark Malek 0 Comments

By: Mark R. Malek

This story hits a little close to home because of my love for the Angry Birds game.  I don’t think it is the game that gets me so much as it is the noises that the birds make as they are rocketed from a sling shot to perform all manner of acrobats while destroying a structure in hopes of making a green blob explode.  It doesn’t hurt that the games are generally free through the Android Marketplace or the App Store.

We are so confused by this Patent Troll

Going past the free levels, however, is where the problem allegedly lies.  Although many of the levels are free, there are some additional levels that are available for purchase by users.  According to this story on Benzinga, which sites another story on The Telegraph, the Lodsys patent allegedly includes claims that cover a method for allowing players to purchase new levels inside its mobile application.  (See also this story on CBR)

Of course, the common theme that I have been seeing in many of these stories is that there is a problem with allowing patents on software – let the comments begin.  I, of course, do not see any problem with patents on software.  Many software developers disagree, but I do not believe that they are applying U.S. patent law when making their arguments.  In short, a U.S. patent, and patents in general, are meant to provide protection on the functionality of an invention.  So what is wrong with protecting the functionality of a piece of software?  The software field is so crowded, that any allowable software patent application is generally focused on a very specific function, and the manner in which that function is carried out.  We got a bit (a very little bit) of direction from the United States Supreme Court in their Bilski decision a little over a year ago (see my story on Bilski here), and with that, we were presented with the “machine or transformation” test, but were also told that this test was not the only test out there.  I guess we will have to wait and see what other tests there are, but we know that “machine or transformation” does not stand alone.

I was pleased to read the article regarding this matter by my good friend Gene Quinn, founder of IPWatchDog.com, and one of the teachers of the patent bar review course presented by PLI.  Gene points out what I believe is the bigger issue – the patent troll.  Gene notes that a patent troll generally gets the process started by finding an attorney willing to take a patent infringement case on contingency, and filing a complaint riddled with broad allegations.  That is part of the reason why the story’s regarding this Angry Birds infringement matter are a bit vague.  We are not too sure what aspect of the Angry Birds game is allegedly infringing.

We will have to wait and see how this, and the other Lodsys suits, turns out.  It will be interesting to see if Apple keeps out of this somehow.

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