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USPTO proposes change to examiner count system

By Timothy J. Maier on October 5, 2009 3:05 PM | No Comments | No TrackBacks
As part of the United States Patent Office's plans to improve pendency, decrease rework, and rebalance incentives for examiners, the USPTO has proposed changes to its count system.

Under the proposed changes, first actions on the merits will receive 1.25 counts, more than an RCE presently receives, while Requests for Continued Examination will receive fewer counts than at present. Subsequent RCEs will receive even fewer counts, while a Final Office Action will receive 0.25 counts. By favoring counts earlier in the prosecution, such a count system will incentivize compact prosecution and reduce pendency to a first action. Click through to read the USPTO's entire proposal (PDF). 


For more information, please visit www.maierandmaier.com.

Accelerated Examination petitions rise in 2008-2009

By Christopher J. Maier on October 1, 2009 11:57 AM | No Comments | No TrackBacks
In response to the backlog at the United States Patent Office, increased numbers of corporations and patent law firms are opting for accelerated examination when filing a patent application. The average number of accelerated examination petitions filed per month between May 2008 and May 2009 rose 61% compared to the previous 12 months, peaking at 241 in August 2008. 

Some more statistics from the USPTO, as of May 2009: 

  • Fastest patent issued under an accelerated application in 2008 was completed in 76 days (US Patent No. 7408364) 
  • Average time from filing to completed prosecution: 197 days; Minimum time: 18 days 
  • Average number of days from filing to issue: 296 
  • Applications allowed since the program started in Aug 2006: 914+
  • Allowance rate in FY09: 80.3%; FY08: 69.7% (an increase of over 10%)

David Kappos outlines objectives and challenges for the USPTO in 2010 and beyond

By Timothy J. Maier on September 22, 2009 3:09 PM | No Comments | No TrackBacks

On September 14, 2009, USPTO Director David Kappos delivered the opening remarks to the patent attorneys and others attending the IPO Annual Conference. Mr. Kappos outlined several initiatives presently underway at the Patent and Trademark Office, as well as the challenges facing the Office.


Among the initiatives mentioned by Mr. Kappos were several programs to cut pendency, such as one allowing applicants to advance an application in the examining queue in exchange for withdrawing an application from the queue, thereby allowing applicants and examiners to focus on the applications that are important to applicants. Another initiative involved reexamining the current count system and achieving a system that would minimize the amount of Requests for Continued Examination in the patent prosecution process. Mr. Kappos also stated a commitment to increasing participation in worksharing projects such as the Patent Prosecution Highway as well as active participation in patent reform discussions in Congress. 


Mr. Kappos described funding as the largest challenge to the operations of the USPTO. Following the economic downturn, the Patent and Trademark Office experienced a $200M shortfall due to a decrease in filings, issuances and maintenance payments. Consequently, the USPTO has suspended hiring for fiscal year 2010. In order to implement improvements to the funding process, the USPTO has established certain objectives, including: first action pendency to 10 months and overall pendency to 20 months; decreasing the backlog to ~300,000 cases; reducing appeals pendency to 3 months; and reducing reexamination pendency to 1 year. Other objectives included improving PCT processing and implementing a robust IT system for fully electronic processing of applications.


The full text of Mr. Kappos's speech is available on the USPTO website.

Should you foreign file your patent application?

By Christopher J. Maier on April 1, 2009 4:42 PM | No Comments | No TrackBacks
In another installment of our intellectual property video series, Timothy Maier discusses the time and cost considerations that inventors should consider when trying to protect their invention or patent in foreign countries. Additionally, Timothy Maier discusses the differences between Patent Cooperation Treaty applications and Paris Convention filings, and offers some tips for delaying major foreign filing costs for about two and half years.

Top Ten Pitfalls Inventors and Small Companies Should Avoid When Protecting Their Intellectual Property

By Christopher J. Maier on March 31, 2009 4:23 PM | No Comments | No TrackBacks

Eret C. McNichols
Maier & Maier, PLLC

Real World v. Patent World

Legend has it that long ago King Hiero II was given a golden crown that was made by a local goldsmith. The King was leery of the goldsmith's honesty and tasked Archimedes to determine the authenticity of the golden crown. Archimedes had to accomplish this task without damaging the crown in any way. He was fraught with anxiety on how to determine the authenticity with out damaging the King's new gift. To ease his nerves one night, Archimedes took a hot bath. As he stepped into the tub he noticed the water level rise, spilling some on the floor. Instantly, he realized that the water rose by an amount that was equal to the volume of his body. Archimedes knew that without damaging the crown he could use the volume and the weight of the crown to determine what whether it was a fake and made of mere silver or authentic and made of pure gold. He was so excited he ran through the streets, dripping wet and naked, shouting "Eureka!" which means "I have found it!"

This anecdote teaches us that conception is the foundation of innovation. Nearly every free thinking person that has both an imagination and an inquisitive mind has conceived of at least one idea. Conception is that "eureka moment" when the solution to a problem becomes instantly clear.

As any inventor knows, the real world and the patent world are mutually exclusive. For example, an inventor may invent a widget that does something or makes a task easier. That inventor may build and use the widget to improve her own way of life. In such an example, her widget is so useful that her neighbors want one for themselves, so being the good neighbor she builds each of them one. As the idea catches on and the orders come in, our inventor realizes that she could sell these widgets to offset her time spent building them, which she does. But a person in the next county begins building the widgets at a faster pace and selling them for a lower price. Naturally, our inventor cries "no fair."

The moment an inventor desires to profit off of their idea or prevent others from making it, they enter the patent world. This is a world full of mundane details, antiquated language and strict timelines. The line between an inventor maintaining their rights in their invention and losing them is as this as a knife's edge.

There are many important steps that inventors and small companies must know to successfully maintain their rights in their invention. Below is a Top Ten Pitfalls list of the most common mistakes every inventor or small company should avoid during the patent process.

Continue reading Top Ten Pitfalls Inventors and Small Companies Should Avoid When Protecting Their Intellectual Property.

The Pitfalls of Provisional Patent Applications

By Christopher J. Maier on March 18, 2009 4:09 PM | No Comments | No TrackBacks
In another episode of our ongoing intellectual property and patent law video series, Timothy Maier describes the differences between provisional and non-provisional patent applications,  and how the applicant can protect him or herself from the risks and pitfalls of provisional applications.

Ex parte Chuang: DNA anticipates protein

By Christopher J. Maier on February 5, 2009 12:55 PM | No Comments | No TrackBacks
In a recent non-precedential opinion, the Board of Patent Appeals and Interferences rejected claims directed towards an isolated protein based on prior art references directed towards mouse cDNA sequences. The prior art disclosed the amino acid sequence encoded by the cDNA; however, it did not produce the resulting protein nor identify it's biological function.

The Board stated: "While we recognize that the prior art did not physically create the claimed proteins, the Federal Circuit in Donohue addressed this issue, noting "[it is not, however, necessary that an invention disclosed in a publication shall have actually been made in order to satisfy the enablement requirement." In re Donohue, 766 F.2d 53 1, 533 (Fed. Cir. 1985). See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) ("[Anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabling to one of skill in the art"). *** The burden rests with the Appellants to establish that the prior art is not enabling." For further developments, stay tuned to www.maierandmaier.com

Petition for certiorari filed in Bilski case

By Christopher J. Maier on February 2, 2009 11:58 AM | No Comments | No TrackBacks
A petition for a writ of certiorari has recently been filed with the Supreme Court regarding the Federal Circuit's decision in In re Bilski. The petition presents the questions of whether the Federal Circuit erred in holding that a process must be tied to a particular machine or apparatus or transform an article into a different state or thing, and whether that "machine-or-transformation" test contradicts Congressional intent that patents protect methods of doing business. Further briefs, including amici briefs are expected in the coming months. There is a modest chance that certiorari will be granted; if so the case would be heard during the next Term of Court. For further developments, stay tuned to maierandmaier.com

Center for Patent Innovations starts post-grant review of patents

By Christopher J. Maier on January 30, 2009 11:23 AM | No Comments | No TrackBacks
The Center for Patent Innovations at the New York Law School has recently begun a post-grant review project that seeks to harness the public community via the Center's peer-to-patent project. The post-grant review project invites all parties to request posting of patents on the website for peer review by the public. Certain firms have also posted bounties for finding prior art that may invalidate particular patents. Stay tuned for further developments at www.maierandmaier.com

BPAI applies Bilski, holds machine claim unpatentable

By Timothy J. Maier on January 16, 2009 3:30 PM | No Comments | No TrackBacks
In Ex parte Cornea-Hasegan, the Board of Patent Appeals and Interferences has found that a method for predicting results of floating point mathematical operations and calculating the results using software--when the result is too small to be accurately calculated via floating-point hardware--is not patentable subject matter in light of In re Bilski, 545 F.3d 943 (Fed. Cir. 2008).

While the claim recited a "processor", the BPAI stated that the recitation did not impose any limits on the claim's scope, nor did it tie the process steps to a particular machine. Furthermore, while claimed "floating-point hardware" may have been a particular machine, the BPAI saw it as "insignificant extra-solution activity" that is not sufficient to transform an unpatentable principle into a patentable process.

Regarding claims directed to "computer readable media", the BPAI held that such limitations do not add any practical limitations to the claim scope, as eligibility under Section 101 could not be circumvented by attempting to limit the use of the formula to a particular technological environment.

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