Tagged: USPTO

USPTO to Expand Its Regional Office Program

On July 2, 2012, the United States Patent and Trademark Office announced that it will be expanding its regional office program to include Dallas, Texas, Denver, Colorado and San Jose, California. The first regional office, the Elijah J. McCoy United States Patent and Trademark Office, in Detroit, Michigan, is scheduled to open on July 13 of this year. Section 23 of the America Invents Act required the USPTO to establish at least 3 additional satellite offices by September 2014.

Following Kappos v. Hyatt, Supreme Court Denies Certiorari in Streck v. R&D Systems

The Supreme Court on Monday denied Research & Diagnostics Systems Inc.’s petition for a writ of certiorari to consider the degree of deference that should be afforded administrative decisions of the PTO on appeal to Federal District Court when new evidence is presented. Streck Inc. sued R&D Systems, a blood test technology company, for patent infringement in Federal District Court. A Nebraska jury held R&D Systems liable for infringement following a finding that it had failed to establish a claim of priority over the disputed patents. In a parallel interference proceeding, the PTO awarded priority to R&D Systems. Streck appealed the PTO ruling in District Court under 35 U.S.C. § 146, where a patent holder may appeal a PTO determination concerning priority made pursuant to an interference proceeding.

CAVEAT EMPTOR! – USPTO Issues Warning on Misleading Third Party Communications

The United States Patent and Trademark Office (“USPTO”) has issued a warning notice advising trademark owners to beware of third party communications that “mimic the look of official government documents” and request payment of fees. That notice was issued after a number of owners reported to the USPTO that they had made payments in response to such requests, believing that they were for official fees and then learned that they were not.

Supreme Court Affirms Kappos v. Hyatt, Paving the Way for New Evidence and Expansive Review of Patent Applications

Yesterday, in a unanimous decision, Kappos v. Hyatt, the Supreme Court affirmed a ruling of the Court of Appeals for the Federal Circuit holding that in a civil action under 35 U.S.C. § 145, a patent applicant has the right to present new evidence to the District Court regardless of whether that evidence previously was or could have been presented during the proceedings before the PTO. Further, when such new evidence is presented, the District Court must review any related factual conclusions affected by the new evidence de novo, without giving deference to any prior decision or finding of the PTO.

IP Law 2012: A Look Ahead . . . .

Coming off a year that included the Smith-Leahy “America Invents Act,” 2012 portends to have some significant developments in IP law. Decisions for IP practitioners and industry to watch for include: the Supreme Court’s decision in Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S, regarding “use codes” and section viii carve-outs under the Hatch-Waxman Act; the Supreme Court’s decision in Mayo v. Prometheus, regarding patentable subject matter, post-Bilski; and the Federal Circuit’s upcoming en banc decisions in McKesson and Akamai, regarding joint infringement liability.

Patent Reform Act of 2011 on the Horizon

On Tuesday, September 6, 2011, the Senate invoked cloture on H.R. 1249, also known as the America Invents Act, making it almost a done deal for passage of this Act. One reason that this bill has succeeded over its predecessors is that, with one major exception, there is little difference between the House and Senate versions. The passage of H.R. 1249 will mark the culmination of a 6-year process to pass patent reform legislation that started with H.R. 2795

Gibbons Institute Presents, “The Future of America’s Innovation Economy,” Event Featuring David Kappos & Q. Todd Dickinson – February 23, 2011

The Gibbons Institute of Law, Science & Technology, Seton Hall University School of Law, and New Jersey Intellectual Property Law Association present, “The Future of America’s Innovation Economy – Progress and Challenges at the USPTO,” event featuring David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Q. Todd Dickinson, Former Director of the USPTO and the current Executive Director of the AIPLA. This event will be held at Gibbons Newark office (One Gateway Center, 21st floor) on Wednesday, February 23, at 4:00 pm. CLE credits for New York and New Jersey will be offered, with pending approval for Pennsylvania credits. The cost to attend this event is $25 and includes CLE credits, food and beverage.

New Patent Quality Examination Metrics Attempt Greater Balance

On October 7, 2010, the U.S. Patent & Trademark Office (USPTO) issued a press release announcing the adoption of new procedures for measuring the quality of patent examination that will be implemented during the start of the 2011 fiscal year. After requesting public comment in both the Federal Register and Official Gazette and holding two round table discussions, a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force developed a new composite quality metric including seven factors, and an associated procedure for obtaining measurements, identifying systemic problems and providing remediation through examiner training.

Former Judge Paul Michel Discusses Proposed Changes to US Patent System

“Congress Needs to Act” is the first article published by Judge Paul R. Michel since his retirement from the Federal Circuit, where he served as the Chief Judge. Judge Michel’s below speech was given on July 21, 2010, at the Global Intellectual Property Center of the U.S. Chamber of Commerce, providing commentary on the current state of the nation’s patent system and how the system can be improved to bolster US economic growth.

USPTO Recognizes That One Size Does Not Fit All

The United States Patent and Trademark Office (USPTO), in an attempt to offer patent applicants more choices, recently proposed establishing a three-tiered examination system. Under the current system, with the exception of accelerated examination and those cases granted “special” status, all non-provisional patent applications go into the same queue for examination and are taken up in due course. Under the new proposal, an applicant would be able to choose either prioritized examination (Tier I), traditional examination (Tier II) or delayed examination (Tier III).