Archive for the ‘USPTO Practice and Policy’ Category


Friday, June 27th, 2014

The deadline for Myriad-Mayo comments has been extended by a month.

Info on the USPTO website and can be found here.


Top Ten IP Stories from 2013

Monday, December 16th, 2013

I admit it, I like lists, even completely subjective ones like this one, that is tilted toward patent law and prep/pros. So in no particular order, except for number one, here we go:


  1. Myriad [Add your pun title here!]. No story can top a unanimous Supreme Court opinion (Thomas writing even!) holding that a discrete chemical molecule is really a data storage device made for us all by Mother Nature, and so is a “natural product”. More troubling, I fear, are Judge Lourie’s two opinions below, holding that the broadly-claimed diagnostic methods were patent-ineligible as “abstract ideas.” Combine this with Mayo and PerkinElmer v. Intema and you get caught in a perfect storm that can sink almost any claim to a diagnostic method.
  2. CLS Bank v. Alice. A big story indeed, as commentators tried, with little success, to unravel the threads in multiple opinions issued by the Fed. Cir. judges. Now the Supreme Court will try to define an abstract idea. Is C =pi(D) carved into a brick concrete enough for you?
  3. Inequitable Conduct goes into IP hospice. While we still have a duty of candor and good faith in dealing with the PTO, Rule 1.56(b) is gone. A simple failure to submit even “material” information will seldom, if ever, lead to an IC holding. In 1st Media v Electronic Arts, Sony, a defendant in the suit, petitioned for cert., playing the “rigid test” card, but the Supreme Court stood pat and denied the petition. In Network Signatures v. State Farm, Judge Newman suggested that facially false petitions would not amount to “egregious misconduct” unless they involved statutory standards of patentability, as opposed to formal PTO filings. However, the Supreme Court also denied cert.  in Apotex v. Cephalon, in which the Cephalon attorney and scientist obtained a patent on an invention made by their supplier – both the D.C. and the Fed. Cir found IC. And where are the final PTO rules? (more…)

Michelle Lee becomes (Acting) Under Secretary of Commerce for Intellectual Property

Thursday, December 12th, 2013

Michelle Lee joined the USPTO as Director of the Silicon Valley Patent Office in 2012 (and apparently got her Reg. No. that year), after working as Deputy General Counsel of Google, and at Fenwick & West and Keker & Van Nest. She has a deep technical (EE) and legal background that involves PTO operations insofar as she has also served on the Public Advisory Committee.

Her experience with “Patent Trolls” at Google has caused her to paint herself into an anti-patent position in recent years. I hope she will come to realize that not all NPE’s are extortionists (See links below for reports and comments from forums she has attended.)

Interestingly, she was nominated by Peggy Focarino, the PTO Commissioner  of Patents, to the Secretary of Commerce, who then appointed Michelle to be Deputy Undersecretary of  Commerce for IP. Since there is no Director of the USPTO (as well as no Deputy Director), Michelle will effectively be the Acting Director of the USPTO (I guess)—until a new Director is nominated and confirmed by the Senate. That could be a while, to say the least.

Here are some quotes from Michelle Lee regarding the patent system:





Teresa Stanek Rea Announces Her Departure From the PTO

Thursday, September 12th, 2013

Acting USPTO Director Teresa “Terry” Rea has announced that she will leave the PTO after a new Director is selected. She will probably complete two years in the position, which has been affected by the sequestration of funding, a backlog of applications that is still daunting, and the need for even more Examiners capable of applying ever-changing standards of patentability to evolving technologies. Terry has served the IP community capably for years, particularly in her various roles in the AIPLA, where she became the first woman with a background in life sciences patent law to serve as President. Apart from wondering who would want her current job, I certainly wish her well, and am curious to see what the future will bring her way.