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New Patent Fees Coming

The US Patent and Trademark Office issued a proposed fee adjustment today. The large-entity fees are going up.

That, of course, impacts the small- and micro-entity fees, since those fees are expressed as a percentage of the large-entity fees (50% reduction for small entities, 75% reduction for micro entities). The Notice of Proposed Rulemaking won’t be officially published until Monday, 3 October, but the unofficial version is available now. The increases (and, of course, the fee adjustments are mostly increases) aren’t big, but they are there. It’s important for the patent applicant to be aware of them.

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USPTO Patent Examination and Procedure Training Coming Up

From the US Patent and Trademark Office:

The USPTO will host a three day training course on examination practice and procedure for members of the public as part of the Stakeholder Training on Examination Practice and Procedure (STEPP) program. The training will be held November 15 – 17 on the USPTO’s Alexandria, Virginia campus.  

This training is intended for those who have recently passed the Patent Bar for the purpose of practicing before the USPTO. The training will make use of statutes, rules, and guidelines relevant to practicing before the USPTO. The course is led by USPTO trainers and is based on material developed for training patent examiners and other employees. More information and a proposed upcoming course schedule is available on the USPTO STEPP program web page

 STEPP falls under the Excellence in Customer Service pillar of the USPTO Enhanced Patent Quality Initiative (EPQI), which ensures that the agency continues to issue high-quality patents well into the future. EPQI is a set of initiatives with goals toward strengthening work products, processes, services, and how the USPTO measures patent quality at all stages of the patent process.
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Cuozzo v. Lee, 579 US ____ (2016)

I was present in the Courtroom for the announcement of the Cuozzo decision by SCOTUS. This decision makes it clear that inter partes review by the USPTO is not appealable, and that the USPTO can institute such review sua sponte (by its own initiative). It’s an interesting decision.

35 USC §314(d) says that the “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” (Emphasis added.)

35 USC §312 says that petitions must be pleaded “with particularity.” Those words, in its view, mean that the petition should have specifically said that claims 10 and 14 are also obvious in light of this same prior art. Garmin’s petition, the Government replies, need not have mentioned claims 10 and 14 separately, for claims 10, 14, and 17 are all logically linked; the claims “rise and fall together,” and a petition need not simply repeat the same argument expressly when it is so obviously implied.

The “No Appeal” provision’s language must, at the least, forbid an appeal that attacks a “determination . . . whether to institute” review by raising this kind of legal question and little more. §314(d).

Moreover, a contrary holding would undercut the Patent Office’s significant power to revisit and revise earlier patent grants. Congress would not likely have granted the Patent Office this reexam authority if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review. Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d). SCOTUS’s conclusion that courts may not revisit this initial determination gives effect to this statutory command.

However, the Court limits its green-lighting of the USPTO’s unappealable reviews: “… we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.”” The Court does not “…categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, [or] enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review.”

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USPTO’s New STEPP Program

From the USPTO’s website:

“The Stakeholder Training on Examination Practice and Procedure (STEPP) program is administered by the Office of Patent Training (OPT) under the third pillar (Pillar 3, Excellence in Customer Service), of the  Enhanced Patent Quality Initiative (EPQI) and is a new and important part of the USPTO’s mission to deliver intellectual property information and education to external stakeholders.

Training delivered through STEPP is designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.  

Currently, it is anticipated that courses provided through STEPP will be free to attend.  In addition, the USPTO is in the process of determining the applicability of providing CLE credits for attending STEPP courses; however, CLE credit cannot be earned for the first scheduled training session.”

The first scheduled training session is July 12-14 at the USPTO’s campus in Alexandria, VA.

For more information, see the USPTO’s website.

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Patent Maintenance Fee Storefront Now Available from the USPTO

From the USPTO:

“The new Patent Maintenance Fees Storefront is now available. Customers can look up and pay patent maintenance fees using the patent number and patent application number, as in the retired system. We recommend reviewing the information here and on the Fee Payment Transition Resources page to learn more about the Patent Maintenance Fees Storefront’s enhanced features.”

112(f) Comparison

USPTO Has Trained Its Examiners in a “Plain Meaning of Terms” Initiative

The USPTO has updated the training it gives its patent examiners this spring to clarify the terms used in the prosecution of a patent. The guidelines explain that “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean.” The goal of the new initiative is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Under MPEP § 2111, “During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” ” Because the applicant can amend the claims during prosecution, giving a claim its broadest reasonable interpretation reduces the possibility that the courts, the patentee, or others may interpret it more broadly than is justified. However, “[t]he broadest reasonable interpretation of the claims must … be consistent with the interpretation that those skilled in the art would reach.”

Against that backdrop, we have MPEP 2111.01, which tells us that “Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.” Thus, the plain meaning of any term may be redefined by the patentee within the four corners of the patent application, and the examiner must interpret the term as that term is interpreted by the patentee.

Including a glossary in your application is good practice that patent applicants often fail to do. By including a glossary in your application as part of the specification, you become your own lexicographer and define terms, even terms whose plain meaning is otherwise clear, in the way in which you want those terms to be interpreted by the USPTO and by the courts.

A “broadest reasonable interpretation” may be limited under 35 USC 112(f), which states, “Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The plain-meaning vs. means-plus-function claim interpretation is only one of the reasons why you don’t want to write a patent application yourself.

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USPTO Assignment Database How-To Webinar Announcement

From the US Patent & Trademark Office (“USPTO”):

“The USPTO is pleased to announce a webinar on Thursday, January 22, 2015 from noon to 1 pm Eastern Time about how to locate ownership information for U.S. patents and patent applications in the USPTO’s newly revamped Assignment Database. The webinar is free and will include ample time for Q&As.

The USPTO Assignment Database houses ownership information for U.S. patents and patent applications voluntarily submitted by owners over the past 35 years. The USPTO recently changed the user interface for this database to make it easier to use as well as to include enhanced search functionalities. At the webinar, the USPTO will showcase how to harness these new search functionalities to locate ownership information by working through a number of example fact patterns.

Attend the webinar to learn how the Assignment Database can help you tackle the often difficult ownership search using an improved USPTO tool!

WEBINAR ACCESS INFORMATION:

Video
Event number: 647 626 273
Event password: 12345

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USPTO and Politically Correct Speech

The US Patent & Trademark Office issued a ruling that the name of the Washington, DC NFL football team is derogatory and offensive toward Native Americans. They cancelled the trademark.

The Washington team has had its name since 1933. They started out in Boston as the Boston Braves in 1932, becoming the Boston Redskins when they moved to Fenway Park in 1933. Boston, in colonial times, had a friendly relationship with the surrounding Native American nation; the Native Americans and their new neighbors coexisted peacefully (for the most part) and helped each other out. The team’s founder respected that history when he named his team after the proud Native American.

The football team moved to DC in 1937 and was, from that day til this, known as the Washington Redskins. Their logo is a very handsome Native American brave, who signifies very well a tough and successful football team.

Evidently the USPTO is falling for the current trend toward politically correct speech, something a government agency has no business doing. This mark is almost 100 years old. It is a famous mark. And it will now cost the Redskins franchise $millions to rebrand. That, of course, will be reflected in an increase in ticket prices, which deleteriously affects the public. This is all for something I have trouble comprehending. I would think that naming a successful football franchise after the proud people who originally found this continent and helped their neighbors through tough times would be something that honors the Native American, not something that denigrates them.

A line needs to be drawn somewhere on all this political correctness; canceling an old and famous mark that honors the Native American by naming an NFL franchise after them goes, in my book, more than a little overboard.

All this politically correct speech has me flummoxed. I give up. I shall continue to simply call a spade a spade; if you find that to be offensive or politically incorrect, you’re welcome to call me whatever politically incorrect term for a white Anglo-Saxon Protestant you can come up with — the two I know of are a WASP and a honkey (a term that I find hilarious because it is actually accurate). I won’t get mad over noises.