Competition Is Good…Even For Government Service Providers

The United States Patent and Trademark Office (USPTO) has FINALLY expanded the vendor pool to meet its patent production requirements. The agency believes that the added competition will lower prices. Those lower prices may save the agency an estimated $150 million over the next ten years. Who knows? Maybe some of that savings will dribble down to the inventors who use the agency to receive patent protection.

Lower prices engendered by competition may save the USPTO an estimated $150 million over the next ten years. 

The protection of intellectual property is the main goal of the USPTO. They are responsible for examining, issuing and maintaining the registrations of patents and trademarks in the United States. Sadly, they as a government agency have been … ahem … a bit lagging in encouraging free-market competition. They are historically not good at encouraging free market competition amongst their own providers.

Delain Law Office, PLLC is a boutique law firm that concentrates in helping inventors, authors and businesses navigate the intellectual property landscape. Thus, the USPTO’s use of only one vendor for any of its mission-critical work is a concern.

For the last 50 years, the USPTO knew of only one vendor capable of meeting the specified requirements for capturing patent data. After a thorough and exhaustive competition process and the execution of a new contract, the USPTO now says they are “…confident that the addition of a new vendor will provide USPTO with the added support it needs to continue to meet or exceed the quality and quantity requirements while also removing the risk of a single point of failure for mission critical work.”

This transition from a single vendor to a dual vendor environment, the USPTO claims, will result in agency cost savings per patent, thus allowing them to advance their work throughout the agency to better serve stakeholders. 

The USPTO claims they encourage competition in business. And, slowly, they are moving toward putting their money where their mouth is. This addition of a competing vendor for patent data capture is one small step; I’d like to see more vendors admitted to the Club.

And I can point to at least one other instance where the USPTO favored one private company to the exclusion of all others, in violation of any government encouragement of free-market competition I’ve ever heard of. Specifically, when they first started their online portal for patent document filing, they REQUIRED a Windows interface on the client (user … my) end. This went on for several years. I, however, was and remain a Mac shop. I therefore was REQUIRED to go out and get a Windows machine (Windows running on Mac did NOT work for this) so I could file patent documents. You better believe I complained about the government favoring one private enterprise over another … and, lo and behold, the USPTO now allows both Windows and Mac to talk to the patent filing system. I do not know whether they allow any other operating system to talk to their filing system; I hope they do.

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.

AIA Changes Who Is Entitled to the Title of “Applicant” in US National Applications Under the PCT

On September 16, 2012, the America Invents Act is slated to change who is entitled to the title of “applicant” in U.S. national patent applications, removing the requirement that inventors be named as applicants solely for the purposes of US designation. This impacts applicants who have filed under the Patent Cooperation Treaty (PCT) and brings the US patent system further into alignment with those of the rest of the PCT signatory nations.

America Invents Act

America Invents Act Presentation

I can’t do a better job of dissecting this complex new patent legislation, the first overhaul of the patent code since the early 1950s, than does Professor Jeff Hawley, who teaches at my alma mater, the former Franklin Pierce Law Center (now University of New Hampshire School of Law). His video and presentation slides are definitely worth a look.

Star Trek Technology is Swedish

Star Trek influences many aspects of our society; flip phones, for example, came from Captain Kirk’s flippy communicator. Now, it seems, the Romulans are getting in on the 21st Century act. A Swedish company, BAE Systems, has conjured up a cloaking device. See Bae Systems’ cloaking device.

I love it when sci fi isn’t so fi anymore.

Millions of Patents

Factoid: The USPTO has issued millions of patents. Number 8,000,000 will issue in 2011.

The USA is a very, very inventive country. At 8,000,000 patents in just under 200 years, we’ve come a long way since the verdict was issued that “everything that can be invented has already been invented.” We’ll keep on inventing … and inventing … and inventing. That’s how progress is made.

China to issue the most patents in 2011

Now isn’t this interesting. China, whose ancient and noble culture does not include much respect for intellectual property, believes that it will be the leader in the world for issuing patents in 2011, outgunning the USPTO, the European Patent Office, and Japan. They say that both number and quality of patents have increased steadily to the point where the Chinese Patent Office will issue the greatest number of patents in 2011.

I never knew it was a race. Patents are good within the geographic boundaries of the sovereign nation that issues the patent during the term of the patent. Therefore, patent offices don’t compete with each other the same way that, say, a car dealership competes with the dealership down the road. You can — and often should — obtain patent protection in more than one country. China cannot grant patent protection in the United States or in Japan or in the European Union or in any other country; the patents issuing in China may well also issue in other countries. Other patent offices might consider hunkering down and getting ready for a blitz of applications based on the number of Chinese patents whose owners may seek foreign protection.

I am delighted, however, to see that China’s Patent Office is so very busy. That says to me that Chinese law recognizes the intellectual property rights of others; the culture, then, should follow suit, though perhaps the culture will move more slowly than does the law in this instance. The fact that they are signatory to the Patent Cooperation Treaty (they entered the treaty on 1 January 1994) says that the laws governing this culture are changing, which will eventually change the culture’s respect for intellectual property.

So, bravo for China!

PCT Signs 140th Member Country

Chile is that long, thin sliver on the western edge of South America

WIPO-Administered Treaties.

It hasn’t even been added to the list on the internet as of this writing, but Chile has deposited its instrument of accession to the Patent Cooperation Treaty (PCT) with the World Intellectual Property Organization (WIPO), the administrator of the PCT, and will become the 140th PCT Contracting State. The PCT will enter into force in Chile on June 2, 2009.

Welcome, Chile, to the Wonderful World of the PCT!

The map, btw, is from GOOGLE Maps. Chile is that long, narrow strip of a country along the western shore of South America. Just west of Argentina. Argentina, btw, is currently in the process of signing the PCT, but has not yet deposited its instrument of accession with WIPO.