Smith Hopen IP Weblog

USPTO Limits Daily Credit Cards to $50k

Government fees such as filing, search fees, issue and maintenance fees may be paid by AMEX, VISA and MasterCard at the United States Patent & Trademark Office.  Effective, June 20, 2012, the maximum daily limit per credit card will be reduced from $99,999.99 to $49,999.99.  USPTO Notice.

U.S. Inventors to Pay it Forward

The USPTO has set an admittedly aggressive budget plan to raise fees again in October.  Fee increases on October 1, 2012 are a common occurrence but not after a recent 15% surcharge fee schedule that was imposed ten days after the September 16, 2011 Patent Reform legislation signed into law by President Obama.

USPTO Director David Kappos (right) plans to introduce a new fee schedule the first quarter of 2013.  See full press release here.

Russian Patent Office Offers Inexpensive ISR for PCT Applicants

U.S. inventors and companies filing PCT patent applications may have a new opportunity to save money and obtain expanded search results for biotechnology.  Rospatent and the USPTO finally hammered out electronic document delivery issues and the long-awaited partnership between the two offices has finally gone online (USPTO Press Release).

See our full article and analysis here.

China Joins PPH

WASHINGTON – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu, announced the start of the Paris Route and PCT Patent Prosecution Highway (PPH) pilot programs beginning on December 1, 2011. 

PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country.  Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.

Full Press Release.

Electronic Terminal Disclaimer

The United States Patent and Trademark Office announced the beta release of eTerminal Disclaimer in EFS-Web which permits the automatic filing and grant of a terminal disclaimer in a patent application. The new eTerminal Disclaimer provides applicants with many advantages and promotes greater efficiency in the patent examination process. This web-based eTerminal Disclaimer can be filled out completely online through web-screens and no EFS-Web fillable forms are required. eTerminal Disclaimers are auto-processed and approved immediately upon submission if the request meets all of the requirements.

Fees must be paid immediately which will then provide users more financial flexibility. A paper filed Terminal Disclaimer requires a fee but does not guarantee a Terminal Disclaimer approval. Each eTerminal Disclaimer filed requires a single terminal disclaimer fee, but can include up to 50 “reference applications” and 50 "prior patents".

During the beta period, eTerminal Disclaimers cannot be filed to a patent application that has yet to be docketed to an examiner. Applicants can check the Transaction History Tab of Public or Private PAIR to determine if their application has been docketed to an examiner. To file a terminal disclaimer to an undocketed application, please complete form SB/25 or SB/26 and submit the forms for manual review.

The Quick Start Guide for eTerminal Disclaimer is available at:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp

For assistance with filing an eTerminal Disclaimer, or to suggest improvements, please call the Patent Electronic Business Center at (866) 217-9197 (toll free) or send an email to EBC@uspto.gov

Kevin Harrington Pitches for Young Inventors

Kevin Harrington, star of ABC's Shark Tank and Chairman of TVGoods shot a public service announcement for the USF Young Innovator Competition.  The program inspires young children to innovation and make their ideas become a reality.  Kevin is returning for a third year in a row to judge the competition.

Kevin Harrington is an amazing speaker….he does everything in a single take.

The competition was the brainchild of Anton Hopen, a patent attorney at Smith & Hopen, P.A. and his then nine (9) year old daughter.

LEDNovation® Technology Featured on MSN

Congratulations to LEDNovation and Israel Morejon. State of the art, green technology never looked so good.

Just a few samples of patents from LEDNovation:

• 7,922,355: Solid State Lighting Device Having Effective Light Mixing and Control
• 7,804,103: White lighting device having short wavelength semiconductor die and trichromatic wavelength conversion layers
• 7,960,872: Side illumination light emitting diode lighting device
• 7,923,741: Semiconductor lighting device with reflective remote wavelength conversion

For more information, see www.lednovation.com

June 2011 Supreme Court Patent Cases

The U.S. Supreme Court handed down a number of patent-related holdings and they’ve been well-summarized by AUTM, ABA, AIPLA, and NACUA and others. However, if you want only the relevant take-away, here is my extreme distillation for those of you with busy schedules:

1. Global-Tech – if you wholesale copy a competitor’s product….better see if they have a patent on it…you cannot stay “willfully blind” of the competitor’s IP in such a case. Full Decision
2. MS v. i4i – frustrated that the PTO would not reexamine i4i’s patents, MS tries to lower presumption of patent validity before jury. Supreme Court holds that patents maintain high presumption of validity in court...patent owners breath sigh of relief.  Full Decision
3. Stanford – Supreme Court….”sorry Stanford, ‘agree to assign’ is not immediately effective to transfer ownership of invention.” Companies and universities checking that employee agreements “hereby assign” rights to inventions rather than promise to do so in the future. Full Decision

New Test for Inequitable Conduct

The en banc Federal Circuit on May 25, 2011, held by a 6-1-4 vote that the materiality required to establish inequitable conduct is but-for materiality in most cases. Therasense Inc. v. Becton Dickinson and Co., Fed. Cir. en banc, No. 2008-1511, 5/25/2011. Unlike validity defenses, which are claim specific, see 35 U.S.C. § 288, inequitable conduct regarding any single claim renders the entire patent unenforceable. The remedy for inequitable conduct is the “atomic bomb” of patent law. Aventis Pharma S.A. v. Amphastar Pharm., Inc., 525 F.3d 1334, 1349 (Fed. Cir. 2008).  Judge Rader noted:

Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system. Because allegations of inequitable conduct are routinely brought on “the slenderest grounds,” Burlington Indus., 849 F.2d at 1422, patent prosecutors constantly confront the specter of inequitable conduct charges. With inequitable conduct casting the shadow of a hangman’s noose, it is unsurprising that patent prosecutors regularly bury PTO examiners with a deluge of prior art references, most of which have marginal value.

Non-disclosed prior art is but-for material if the patent examiner would not have allowed a claim had it been aware of the undisclosed prior art, according to the opinion rendered by Chief Judge Rader.

USPTO Budget Crunch Sidelines New Initiatives

USPTO Director Kappos noted Congress effectively cut $100 million from the USPTO budget.  As a result:

• Track One of the Three-Track program, which offers expedited patent examination and was scheduled to go into effect on May 4, 2011, is postponed;

• The opening of the planned Nationwide Workforce satellite office in Detroit, as well as consideration of other possible satellite office locations, is postponed;

• Hiring—both for new positions and backfills—is frozen;
• IT projects will be scaled back;
• Funding for Patent Cooperation Treaty (PCT) outsourcing will be substantially reduced;

• Employee training will be reduced;

• All overtime is suspended.

Trademarks is unaffected and will maintain normal operations.