According to AIPLA the Patent and Trademark Office announced October 8, 2009, that it will rescind the claiming and continuations rules package that have been the subject of litigation in Tafas v. Kappos. GlaxoSmithKline and the USPTO, parties to the litigation, have agreed to request the Federal Circuit to dismiss the appeal in that case and to vacate the district court decision below.
This is excellent news and shows that Director Kappos is listening to the patent community. These rules would have been disastrous for independent inventors and start-up companies. They also would have increased the pendency time for patent applications. Hopefully this is a further sign that Director Kappos intends to undue the reprehensible damage Director Dudas did the USPTO.
The goal of this post is to describe how to prepare an Intellectual Property (IP) strategy document that shows your company is an IP expert. According to the book The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property, IP is the most important “sustainable competitive advantage.” There are numerous types of intellectual property, but this post is going to focus mainly on patents and trade secrets, because these types of intellectual property protect a company’s innovation. Innovation is the most important method of creating a sustainable competitive advantage. Innovating without protecting the innovation with patents or trade secrets is charity according to the authors of The Invisible Edge. Read more »
The first step in build a market dominating patent portfolio is to undertake a survey of the patent landscape in your marketplace. For more information on how to perform a prior art survey please see Competitive Analysis and Patent Portfolios . This analysis will show you where there are gaps in the prior art that can be exploited and also help stimulate your thinking about design options. Gary Boone, the inventor of the microcontroller, explains the advantage of surveying the prior art this way. “Most engineering design groups do not feel there is much to learn by reading patents. I feel that’s unfortunate, because there is a huge amount to learn from the accumulated five million issued patents, just picking up the U.S. patents alone.” Read more »
The only asset that technology start-up companies have is their intellectual property. Creating a strong patent portfolio and understanding the competitive landscape are critical to maximizing the market value of technology companies. A strong patent portfolio is also the company’s best barrier to entry. Read more »
Most companies that generate enough patents to justify an in-house patent counsel have a Patent Review Committee. The Patent Review Committee determines if an invention described in an “Invention Disclosure Form” is worthy of obtaining patent protection. The committee is usually made up of a business/marketing person, one or more technical people, and one or more patent attorneys. An inventor usually makes a short presentation to the committee based on the Invention Disclosure Form. Here are the top five reasons why Patent Review Committees result in second rate patent portfolios, hurt innovation, and increase legal costs. Read more »
Gary Locke, the U.S. Commerce Secretary, in an article in Journal Sentinel stated that the time it takes to issue patents is unacceptable. The article also points out the problem of patent office policy forcing examiners to reject applications at unprecedented rate. Secretary Locke also acknowledged that these problems have hurt the American economy. This is great news for inventors.
The only potentially bad news in the article is the statement that the patent office faces severe financial problems. This may mean higher fees in the future. Please read the full article at http://www.jsonline.com/business/54199852.html
This comment was posted by an Patent Examiner at Patent Prospector. The Examiner explains why he thinks the allowance rates are so low and his explanation is consistent with my post, Patent Allowance Rate Falls to 42%.
I believe that the allowance rate is artificially low, although not due to churning…at least not exactly.
I am a current examiner. Under Dudas, the PTO pursued a policy of “increased patent quality”. The way that the PTO enforced this quality initiative was by reviewing office actions. Not reviewing all office actions, mind you, but only reviewing allowances.
Unfortunately, the PTO failed to see the problem that they were setting up. An examiner is then left with two choices:
1) An examiner could generate rejections without ever incurring quality review, or
2) An examiner could generate an allowance that would be scrutinized by quality review and possibly find themselves assessed a quality review error.
So, it has been safer for an examiner to always reject…at least until very recently. There has been some loosening of the allowance quality review rules in recent weeks as it appears that “reduced pendency” is the new key motivation under Obama.
According to the AIPLA (American Intellectual Property Association) the allowance rate for patent applications in the U.S. fell to 42% in the first quarter of 2009.
This continues the trend of falling allowance rates that started in 2002. Why has the allowance rate changed so dramatically in the last six years? Sometime early in this decade, the USPTO started to define the “quality” of examinations by the allowance rate. The USPTO tracks the allowance rate of every examiner and grades the quality of their examinations by their allowance rate. If one examiner’s allowance rate is higher than the average allowance rate of the group they work in, their examination of applications will be considered to be of lower quality. If an examiner never allows any patent applications, they will be considered to have the highest quality examinations. This has created a perverse incentive for examiners.
For an update on the allowance rate click here.
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