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New Pilot Project: Pre-First Action Interview as of Right

USPTOThe USPTO announced that it is launching a program to allow an Examiner interview before first action. Here’s the process. First the applicant requests a first-action interview. The examiner conducts a prior art search and provides the applicant a pre-interview communication. This is a condensed preview of objections or rejections proposed against the claims. Then, within 30 days, the applicant must either elect (1) not to have a first action interview with the Examiner, or (2) to schedule the interview and file a proposed amendment and/or remarks.

The pilot only applies to applications classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and applications in Class 707 (data processing: database and file management or data structures.

In all other cases, MPEP 713.02 applies to allow pre-examination interviews at the descretion of the Examiner.

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Manufacturing on Demand: Resources for Inventors and Small Business

Ponoko logoA relatively new service called Ponoko provides manufacturing on demand. The user uploads a design and can order that as few as one copy be created and delivered. Ponoko laser cuts the design out of any of the following materials: Acrylic, PETG, Styrene, Hardboard, MDF, Plywood, Veneer MDF, and Whiteboard. The product is shipped as a package of interlocking pieces that are assembled on delivery.

Ponoko may be a resource for inventors. However, an inventor should not disclose an invention before a patent application is filed, or in the absences of an application, a confidentiality agreement from those to whom the invention is disclosed. The Ponoko website does to address whether a submitters design will remain confidential. In fact, Ponoko allows a user to post their design on the Ponoko website for others to purchase.

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Federal Circuit on Tour

The U.S. Court of Appeals for the Federal Circuit will hold oral argument in Silicon Valley in November:

 The Court of Appeals for the Federal Circuit will hold hearings in several locations in Silicon Valley, California during the week of November 3, 2008. Santa Clara University School of Law, Stanford University School of Law and the United States District Courts in San Francisco and San Jose will each host a panel of judges for oral argument during that week.

[Link]

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Locks on Microchips Could Deter Hardware Piracy

519722_key_lock.jpgComputer engineers at the University of Michigan and Rice University developed a way to deter hardware piracy. [link] Its a technique they call Ending Piracy of Integrated Circuits (EPIC).

Each chip is protected by the EPIC has a unique lock and key. The chip securely communicates with the chip’s patent holder to obtain a key to unlock itself. The chips only operate after being unlocked.

The EPIC technique uses established cryptography methods and introduces small changes in the chip design process. However, the chips’ performance or power consumption is reportedly not affected.

EPIC is not related to Electronic Privacy Information Center, and not enough information is provided to determine whether this technique raises privacy concerns.

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AIPLA Suggests Improvements at the USPTO

I previously reported on the patent prosecution costs disclosed by Alan Kasper’s testimony [PDF] to Congress as the First Vice-President of the American Intellectual Property Law Association (AIPLA). In that testimony, Alan suggested the following improvements at the USPTO:

  • Develop a culture within the USPTO to encourage Examiners to propose claim amendments that would, at least in the examiner’s view, distinguish the claimed invention over the prior art. This would eliminate applicant guessing as to what a Examiner considers allowable and permit the applicant to forgo the cost of filing further amendments, RCEs, continuations, or appeals, by accepting the Examiner’s proposal.
  • Encourage the Examiners to resolve the applicant’s technical formality errors (e.g. an incorrectly designated a claim in an Amendment as, for example, “currently amended”) by informal communication and Examiner’s amendment rather than, for example, issuing a “Notice of Non-Compliant Amendment.”
  • Modify “Pre-Appeal Submission” process to avoid having both the Examiner and the Examiner’s Supervisor—both of whom are presumably against finding any error in the Examiner’s action—on the three member panel that evaluates the reasonableness of the Examiner’s position. At least two senior examiners not involved in prosecution of the application should be on the panel. Having both the Examiner and the Examiner’s Supervisor sets up a 2 to 1 panel position against the applicant at the start.
  • Improve Examiner retention through improvements in the diversity and quality of opportunities for professional development.
  • Increase monitoring of Examiner’s work to ensure quality, by for example, triggering an investigation when an application has more than three Office Actions on the merits.
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“End Software Patents” Group Lanches and Sparks Debate

  • The group “End Software Patents” was born recently and asserted that (1) software patent lawsuits result in $11.26 billion in costs; (2) non-software companies are increasingly targeted for software patent infringement suits; and (3) the USPTO and the US Supreme Court [link] do not support software patentability. [Report]
  • Joff Wild of IAM questions the 11.26 billion dollar figure and asserts the underlying data on “total cost” includes both legal costs as well as costs to the business from lost market share, management distraction, etc–not simply litigation costs.
  • Ben Klemens, Executive Director of End Software Patents defends his numbers and responds to Joff here. Joff responds to Ben’s defense here.
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Patent Prosection Costs

Peter Zura’s 271 Patent Blog reports on the Congressional testimony [PDF] of the First Vice-President of the American Intellectual Property Law Association (AIPLA) concerning the average cost to prosecute and obtain a patent.

The Average Cost of Preparing a Patent Application:

  • To prepare and file an original application of minimal complexity (10 page specification, 10 claims) by a firm the size of Sughrue Mion, PLLC (an IP boutique with over 100 IP professionals) $8,548.00
  • Mechanical cases (relatively complex) $11,482.00
  • Electrical/computer cases (relatively complex) $13,684
  • Biotechnology/chemical cases (relatively complex) $15,398.00

The Average Cost of Filing an Amendment:

  • Minimal complexity $2,244.00
  • Mechanical case (relatively complex) $3,506.00
  • Electrical/computer case (relatively complex) $3,910.00
  • Biotechnology/chemical case (relatively complex) $4,448.00

The government fees for those filings are $1,030.00 (unless the Applicant is a small entity).

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GAO: USPTO Hiring Won’t Reduce Backlog

Wednesday the Government Accountability Office released a report [Summary] [Full Report] that found “it is unlikely that the [Patent Office] will be able to reduce the growing backlog simply through its hiring efforts.” The report provided, “The agency has also estimated that if it were able to hire 2,000 patent examiners per year in fiscal year 2007 and each of the next 5 years, the backlog would continue to increase by about 260,000 applications, to 953,643 at the end of fiscal year 2011.” Therefore the report stated, “Despite its recent increases in hiring, the agency has acknowledged that it cannot hire its way out of the backlog and is now focused on slowing the growth of the backlog instead of reducing it.”

ptoattrition.jpg

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Software and Information Industry Association Questions State Immunity

siia.jpgThe Software and Information Industry Association (SIIA) filed an amici curiae brief asking U.S. Supreme Court to hear a case where State sovereign immunity for patent infringement is at issue. The issue is whether a State waives its Eleventh Amendment immunity in patent infringement actions by regularly and voluntarily nvoking federal jurisdiction to enforce its own patent rights. The SIIA asserts that it is equitable for States to have immunity from damages for patent infringement while they are free to sue private sector organizations for violations of State held intellectual property rights. The SIIA joined the U.S. Camber of Commerce in filing the brief.

BMPG v. Calf Dept of Health Services, No. 07-956 [Docket Link] [SIIA Brief] [SIIA Press Release].

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Intellectual Property Resources

European Patent Attorney Ralph Beier has compiled a massive list of links to intellectual property related websites worldwide. [link]

As of today he lists:

  • Intellectual Property Offices (110)
  • Intellectual Property Organizations (103)
  • IP Database Providers (22)
  • Official Registers and Databases (114)
  • Official Examination Guidelines and Publications (14)
  • IP Classifications Standards (4)
  • Official Gazettes (24)
  • Courts (58)
  • Texts of Legal Regulations (13)
  • Case Law Databases (11)

Ralph’s list is a great resource worthy of a place in any intellectual property attorney’s bookmark list.