Archive for the ‘USPTO Practice and Policy’ Category

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Report From Bio – Everyone Into The Pool!

Thursday, June 30th, 2011

I have been hearing about “patent pools” for biotech patents for years, but Kristen Neuman made it much more real at a Break-Out Session on Diagnostics and Personalized Medicine at the BIO International Convention in DC today (6/29/11). The session was chaired by Jennifer Gordon of BaketBotts but the star was Ms. Neuman of Proskauer who appeared on the panel representing Libreasse, a program sponsored by MPEG-LA, the group that settled the MPEG-2 patent disputes by setting up a patent pool where electronics’ manufacturers could license the patent rights they needed to develop say, iPods, by paying a single royalty.

Ms. Neuman proposed a similar model for patents directed to biomarkers and their use in diagnostic/predictive assays that are the foundation of personalized medicine – such as the Myraid patents. She said that the group had studied patents relating to diagnosing Lynch Syndrome, a condition involving colorectal cancer and endometrial cancer and had found at least 12 patents relating to gene mutations associated with this disorder owned by 12 institutions and private companies. As a model, she proposed that these rights owners would form a patent pool.  Any entity wishing to develop a clinical assay for this syndrome would be able to cut through this patent thicket by pulling their cart through the resultant patent “supermarket” online and obtaining non-exclusive, field-of-use limited licentiates to the patents they needed to proceed. She identified other patent thickets as associated with hereditary hearing loss, CV disease, and schizophrenia.

The audience was not totally receptive to the concept, and pointed out the exclusionary value of such “companion diagnostic” patents in innovator labeling (read Caraco for background) and in business models that depend on developing marketable assays from just a small group of the patents. Both admissions criteria and enforcement issues were also raised as concerns. Still, this was an inspiring proposal for those who believe that patent thickets pose a real danger to innovation. I am not quite ready to shop at this patent boutique but, given that draconian remedies such as exempting certain diagnostic assays from liability for infringement have been proposed in Congress, this proposal deserves our attention.

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No USPTO Shutdown For Now

Thursday, April 7th, 2011

A Message from Director David Kappos
           
Dear Colleagues, 
           
As you know, the Administration is working diligently with Congress to ensure that the federal government remains open and continues to do its work on behalf of the American people. However, I wanted to personally inform you that even in the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual, for a fixed period, with all USPTO staff continuing to work and being paid.
           
Because the USPTO maintains sufficient funding not linked to the current fiscal year, the USPTO can and will stay open for business. We have enough available reserves to remain in operation for six business days and intend to do so. During that time we will continue to process the patent and trademark applications that drive our country’s innovative economy. Should a shutdown continue longer than the six-day period, a small staff will continue to work to accept new applications and maintain IT infrastructure, among other functions. 
           
I know this news may prompt some additional questions. As soon as any new information comes to light, we will make sure to inform you thoroughly and promptly. Your respective business unit managers will also be reaching out to you to provide further clarification if needed. 

Thank you for your hard work and your continued public service. 
           
Sincerely,
David Kappos

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PTO Issues Final Rule to Implement Prioritized Examination Track (Track I)

Wednesday, April 6th, 2011

The following is from the Schwegman, Lundberg & Woessner Newsletter, April 6, 2011.

The Patent and Trademark Office on April 4, 2011, issued a final rule to implement prioritized examination upon an applicant’s request and payment of a $4,000 request fee and other filing fees.  76 Fed. Reg. 18399.

Under the new rule, 37 C.F.R. 1.102(e), prioritization is available only for an original and complete utility or plant nonprovisional application that contains or is amended to contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.  The goal is to provide a final disposition (notice of allowanc e, final office action, notice of appeal, declaration of interference, or RCE) within twelve months of an application’s receiving prioritized status.

The effective date of the new rule is May 4, 2011, and requests for prioritization may be submitted on or after that date for new applications filed on or after May 4, 2011. The request must be submitted with the application being filed along with the request fee and other normal filing fees. Time periods for response are not shortened, but filing of a petition for extension of time during prosecution will result in termination of prioritized examination. Note that prioritized examination does not change the odds of obtaining a patent. 

The Federal Register notice states that the Office is limiting requests to a maximum of 10,000 applications during the remainder of fiscal year 2011. The notice also states that the Office lacks statutory authority to extend the small entity fee to examination prioritization, but points out that such authority is contained in the patent reform legislation passed by the Senate (S. 23) and pending in the House (H.R. 1249).

To read the Federal Register notice, click here.

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Teresa Rea Appointed Deputy Director of the USPTO

Monday, February 21st, 2011

Teresa Stanek Rea has been appointed Deputy Director of the Patent Office and will report directly to Director Kappos. I don’t remember when I haven’t known Terry, as she has been active in the AIPLA for years. She has been a Board member and then, from serving as Secretary, worked her way up the “officer track” to become President two years ago. She has a chem background, has done both prosecution and opinion work, and brings a skilled and seasoned legal and political background to the Office. Congratulations, Terry, and I await even more proposed examination guidelines and attempts to grade the bumpy patent prosecution highway(s).

USPTO Press Release – 02/17

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