Per this press release at the USPTO today:
Procedure to Comply with the Federal Circuit Decision in Wyeth v. Kappos Regarding the Overlapping Delay Provision of 35 U.S.C.154(b)(2)(A)
WASHINGTON – The Commerce Department’s United States Patent and Trademark Office (USPTO) is providing patentees with the ability to request a recalculation of their patent term adjustment without a fee or petition as is normally required pending completion of necessary modifications to the USPTO’s computer program for calculating patent term adjustments. The agency expects to complete by March 2, 2010, the software modification necessary to comply with the U.S. Court of Appeals for the Federal Circuit’s recent decision in Wyeth v. Kappos regarding the overlapping delay provision of 35 USC 154(b)(2)(A). In the meantime, the USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date. This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth. A copy of the notice submitted to the Federal Register for publication and the form for patentees to use in requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.
“The USPTO is working to modify its computer program to comply with the Federal Circuit’s decision as soon as possible,” said Commissioner for Patents Robert Stoll. “Until then, this interim procedure will enable patentees to request a recalculation quickly and at no charge.”
An applicant is entitled, subject to certain conditions and limitations, to patent term adjustment if (1) the USPTO fails to take certain actions during the examination and issue process within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; and (3) for delays due to interference, secrecy order, or successful appellate review.
Per this post at the IPWatchdog last week, patent law blogger Gene Quinn is being sued by Invention Submission Corporation (ISC), an invention promotion company that currently does business as “InventHelp®”. A copy of the complaint may be downloaded here.
IPWatchdog has long been a vocal critic of invention promotion companies, and for good reason. As most patent attorneys and agents will attest, invention promotion companies do not directly compete with patent law firms. Rather, many invention promotion companies provide dubious invention marketing services (and patent services by referral) at a very high cost to clients. Indeed, horror stories from clients who have been victimized by invention promotion companies abound at most patent law firms.
But Gene is not alone in trying to spread the word about unscrupulous invention promotion companies. The U.S. Patent and Trademark Office (USPTO) and the Federal Trade Commission (FTC) have been highly critical of invention promoters. The USPTO maintains a list of published complaints against invention promotion companies here, and goes as far as providing a downloadable form that may be completed and submitted to the USPTO for such complaints. The USPTO also publishes a good brochure on scam prevention that details the various “hooks” that are used by invention promotion companies to lure inventors into scams.
The FTC further provides general facts for consumers, with good advice on what to look out for when dealing with an invention promotion company. With respect to ISC, in particular, this frequently requested record with a list of ISC complaints from the FTC web site is informative.
In summary, all inventors should be wary of becoming involved with any invention promotion company. At the very least, inventors should exercise all due care in investigating whomever they are considering engaging to handle their patent matters.
JW Note: This is not the first time that ISC has sued based on warnings to the public about invention promotion companies. See this 2004 post at the PatentlyO patent law blog, detailing ISC’s failed attempt to petition the SCOTUS after its lawsuit against the USPTO, which had conducted an advertising compaign warning the public of invention promotion scams, was dismissed at district court and the 4th Circuit Court of Appeals.
CLE Event: Legal Off-shoring and In-shoring in the field of Intellectual Property – February 3, 2010.
The Toledo Intellectual Property Law Association (TIPLA) is proudly presenting a program titled: Legal Off-shoring and In-shoring in the field of Intellectual Property.
The program will be held at the University of Toledo College of Law on February 3, 2010, from 9:00AM – 12:00AM. Three (3) hours of CLE credit are being sought for all attendee states.
Indira Saladi, Senior Intellectual Property Counsel, Motorola, Inc.
Ms. Saladi will present on Motorola’s development of in-house IP resources in India.
Frank Landgraff, Senior Intellectual Property Counsel, GE Energy
Mr. Landgraff will present on how U.S. firms can position themselves as “low overhead cost environments.”
Ray Meiers, TIPLA Secretary/Treasurer, Patent Attorney at MacMillan, Sobanski & Todd
Mr. Meiers will present on ethical considerations relevant to offshoring.
Cost: $30 for students; $60 for TIPLA members, $120 for all others.
Interested persons should email the TIPLA Officers at ToledoIPLA@gmail.com to register and receive the payment address for the event.
JW Note: As many of our readers know, I have been involved with TIPLA for a few years now, and this is just one of the great programs they have lined up for 2010. Vince Garlock from AIPLA will also be speaking at their regular meeting in February, and they are expecting Gene Quinn of IPWatchdog fame for their regular meeting in April! A videoconference at the Toledo College of Law with Mr. William LaMarca, Associate Solicitor at the USPTO, is also being planned for March. Check it out.
Via the Just-n-Patent Examiner blog, which in turn was relaying an earlier message from Greg Aharonian of the Internet Patent News Service concerning a note that a frustrated attorney had sent to Director Kappos.
Dear Mr. Kappos,
I have been practicing before the USPTO for 12 years now and have seen a lot of ridiculous stuff, but this takes the cake. Note the attached “Notice of Non-Compliant Amendment” and the grounds therefore — the period at the end of claim 1 was accidentally caught in the underline of the word processing selection when indicating the amended language.
Why did I receive this ridiculous response rather than the examiner merely noting it in a substantive response or making an examiner’s amendment to correct it? Because the examiner was apparently unable to prepare a substantive response and wanted to get it off his docket in the required window for his response before incurring PTA and probably a demerit in his performance numbers. (The notice was mailed 3 months and 4 days after our timely filed response.).
What is the impact of such manipulation of the internal system and this type of gamesmanship? Upset customers. My client is upset at the delay and added cost. I am upset at the inanity and the waste of my time – especially when the examiner has his own typographical error in the continuation sheet of the notice: the sentence ends with two periods. But do I have any recourse regarding the examiner’s poor grammar? No. Nor would I want to waste my time doing so. But here I am.
My request: instill some common sense and customer service attributes in the examining corp.
The saga continued, however. Apparently, Greg Aharonian received some emails from an examiner the next day, the text of which follows:
I am guilty as charged. I had to move the case under time pressures and didn’t have the time because I had other things to work on — what I did under the rules is completely legit though I would have wasted a count and thrown away money by the system the PTO set up, not me. Would the lawyer complaining work for free and do pro bono work for one or two cases? I doubt it. I had my counts for end of fiscal yr and didn’t want to waste this one … every count extra to the bonus amount handed at end of fiscal year is wasted money to examiners (but of course, the complaining lawyer has no clue or cares about the whys of it).
She (yes I know her name – the attny) can cry the blues all she wants and criticize my writing and two periods. But I’ve been working at the office for many years and I know exactly who this lawyer is, Ms. Complainer, I know its you. This really upsets me because I thought her a nice person — no more. You know, if I am such a bad guy why didn’t she check her own claims before she sent out the claims without periods. Nope, easy to blame the examiner and cry to the commissioner. I actually helped this woman as much as I could to try and get many applications allowed in many interviews with her (she represents a law firm out of Dallas TX) and a lot of their applications are pretty damn close to [---] patents and I helped her to the fullest I could.
This is so petty and she contacts David Kappos! I am not happy about that at all and thank you for helping me find out something I did not know. I am very pissed off about this now.
I definitely feel like she stabbed me in the back and I was very polite and helpful over the years to her to help her get cases in condition for allowance. I’ll keep that in mind when I examine her cases in the future.
She’s not going to get much any more help from me so her ass is going to be twisting in the wind from now on. I’m also going to email and let her know I’m pissed off about her bringing this up with Kappos. She just jumped off a cliff in my eyes. You know, if she just called me and talked to me I [could] explain exactly what I did that – too late for that lady, you are going to wish you did not do that, believe me, you are going to regret it. She can also forget about an after final interviews — thats at the discretion of the examiner and my discretion from now on will be — no interview.
Good luck writing your future appeal briefs lady and your three year wait from the BPAI. You really should have thought long and hard about sending that to Kappos and not contacting me first.
[Greg note: after sending me the above, the examiner then emailed me:]
I may even email Kappos myself since she sent pushed me under the bus. I am going to let him know that I’ve helped her come to patentable subject matter for years and for her to cry over this is beyond petty and a waste of this busy man’s time.
She’s upset about the “added cost” yet she was the one who made the freaking mistake not putting in periods. Now that is where her mistake should be “pro bono” right — she forgot the periods not me! NO examiner, you dumb ass, its always your fault slave. Any questions?
[Greg note: at this point, I emailed the examiner, and explained to the examiner that he was victim of a coincidence, that the complaining lawyer was not female and not working in Texas, that apparently this type of typographical error resolved via Office Action is common. I asked not to take any action against the lawyer he mistakenly thought to have contacted Kappos. He was glad to do so, and emailed me the following:]
Ok Greg. I’m sorry but I had something exactly to what occured and did the same with the quayle and I often put in two periods by accident just before end of our fiscal yr 09. These attorneys need to realize that its not “all about them”.
Often times its our management here that can be more our adversary than the lawyers and we do our best to expedite and nobody wants to go to the BPAI if we can help it. But if examiners are thrown under the bus, making an examiner your enemy is not a good idea. We can make time more the enemy than we’d ever be and something that could get allowed quickly might take another 3 years or more, who knows. Esp if you stop suggesting what to do.
I’ve had other attorneys go up often to Doll/Dudas and they are usually the “angry kooks” and most management here knows who they are. I recall this one guy you could just feel the anger and seething over the phone, like this guy has got issues. A rare occurence but just like there are weird examiners, there are strange attorneys as well.
Attorneys have to understand that mgmt here will nickel and dime us to death with all sorts of demerits/minus pts even when they are not deserved or you actually did the case on time and unless you watch them you’ll get minus pts hurting your rating and your bonus. That is alot of pressure/stress for examiners.
Every case handed in excess over the set amount for bonus (say 110,120,130) its money thrown down the drain for the examiner. Attorneys get paid by the hour mostly, we do not. If they paid us a set fee for every case, I know this would not happen but often examiners have 40 cases on their amended docket and need to move it somehow. Its not intentional to upset the attorney but if they worked here for a long enough time they would understand its not to spite them but just an examiner in a world of trouble trying to move alot of amendeds. Examiners like to get paid for each case they do and the way the system is set up I totally [understand] the actions of that examiner.
Some excellent commentary on this entire, ridiculous exchange may be read at Just-n-Patent Examiner blog. Check it out!
JW Update: Also covered at Zura’s 271 Patent Blog here.
JW Note: Wow. Disturbing.
U.S. Pat. No. 6,045,281: Writing implement attachment.
What is claimed is:
1. A premanufactured accessory for a premanufactured writing implement, the premanufactured writing implement comprising at least one member selected from the group consisting of a complete pen having a casing handle, an ink supply and an ink-providing tip, and a complete pencil having a lead and a handle casing around the lead, the premanufactured writing implement having a longitudinal length, said premanufactured accessory comprising:
a premanufactured body comprising a substantially two-dimensional surface;
said surface comprising at least one dimension selected from the group consisting of a diameter, a length, and a width, said dimension being at least one-half the longitudinal length of the premanufactured writing implement; and
an attachment for attaching said premanufactured body to the premanufactured writing implement on the upper portion of the premanufactured writing implement.
Section 154(b)’s language is clear, unambiguous, and intolerant of the PTO’s suggested interpretation.
(Fed. Cir. 2010, 09-1120)
The CAFC affirmed summary judgment for Wyeth, holding that the USPTO has been calculating patent term adjustments (PTA) under 35 U.S.C. § 154 incorrectly.
Prior to June 8, 1995, patents were enforceable for 17 years from the date of issuance. As of June 8, 1995, the patent term was changed to 20 years from the filing date. To mitigate any negative impact on patentees, Congress formulated a number of patent term “guarantees” that results in PTA. The guarantees are codified as 35 U.S.C. 154(b)(1)(A-C), namely:
(A) Guarantee of prompt Patent and Trademark Office responses;
(B) Guarantee of no more than 3-year application pendency; and
(C) Gurantee or adjustments for delays due to interferences, secrecy orders, and appeals.
Under its interpretation of the PTA rules, the USPTO had been calculating PTA such that the patentee received the longer of the (A) adjustment or the (B) adjustment under the statute. Wyeth contended, and the CAFC agreed, that an applicant deserves both the (A) adjustment and the (B) adjustment, minus any time that the adjustments overlap. In view of the PTA rules, as clarified by the CAFC, Wyeth is entitled to an extra 294 days adjustment for U.S. Pat. No. 7,179,892, and an extra 386 days adjustment for U.S. Pat. No. 7,189,819.
In response to the CAFC decision, the USPTO has issued the following announcement.
On January 7, 2010, the Federal Circuit issued a decision in Wyeth v. Kappos, No. 2009-1120, regarding the calculation of patent term adjustments under 35 U.S.C. 154(b). The Federal Circuit’s decision rejects the USPTO’s interpretation of the “overlap” limitation in Section 154(b)(2)(A). The Solicitor General will determine whether to seek further review of this decision. Pending that determination, the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision.
Applicants and Patent Owners dissatisfied with a patent term adjustment determination by the agency are reminded of the requirement to seek review of that determination within 180 days of patent issuance and the time periods set in the implementing regulations. See 35 USC 154(b)(4) and 37 CFR 1.705.
JW Note: All applicants with allowed applications that have been pending more than three years, as well as any patentee whose patent has issued in the last six months, should carefully check any PTA identified by the USPTO against the rules clarified by this decision. Pertinent PTA calculation rules, and the regulations identified by the USPTO in the above announcement for seeking review of PTA, follow for our readers’ convenience.
In case you were not aware, The North Face, a company selling high-end “outdoor” apparel, sued a teenager in Missouri for, among other things, trademark infringement. The teenager, being of strong entrepreneur mind and spirit, started selling clothes under his own mark, The South Butt. Apparently the young gentlemen wanted to generate social commentary on the absurdity of spending an inordinate amount of money on The North Face clothes by his classmates.
As trademark infringement, boiled down to its essence, is about deceiving, confusing, or otherwise misleading the public, it is hard to imagine The North Face will succeed in its lawsuit. This also ignores well established fair use law that allows for parodies of trademarks. In the end (pun intended), one surely can see the parody of The South Butt in the face of (pun intended) The North Face. Let’s hope the courts can get it right.
If you want to support The South Butt LLC, you can visit their online store and purchase a shirt.
For more background information about the case, see what ABC news had to say here in October 2009.
For those interested in the court filings, we recommend reading the Answer filed by The South Butt LLC. It is one of the more humorous Answers you will ever read.
The following quote is from as set of prepared remarks made yesterday afternoon byPresident Obama at the Opening Session of the Forum on Modernizing Government, held at the Eisenhower Executive Office Building in Washington, DC.
Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system. This is one of the reasons why the average processing time for a patent is roughly three years. Imminently solvable; hasn’t been solved yet.
The President was referring to the USPTO as one example where the Federal Government has failed to timely update or replace outdated technology, and how it adversely affects efficiency.
However, even if this statement about the USPTO is true (and Gene Quinn at IPWatchdog points out that it really isn’t), is it really a fair example? Certainly, most practitioners recognize that the USPTO has a severe problem with patent pendency, which should be an embarrassment in and of itself. But wouldn’t any rescanning that occurs just minimally affect pendency, especially relative to all the other factors that impact pendency of an application, such as the quota-based count system, Examiner retention and training, etc., to name just a few?
Any thoughts from our readership?