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).
Posts Tagged ‘AIPLA’
Teresa Rea Appointed Deputy Director of the USPTO
Monday, February 21st, 2011“Patent Reform Act Of 2011” – Reform Or Regression?
Thursday, January 20th, 2011
Starting from the premise that legislation can raise the quality of patents, Leahy/Hatch/Grassley are poised to introduce this year’s version of Patent Reform. The proposed reforms are extensive, and most have been debated at length. Although the Summary ends by listing supporters of the Act including BIO, IPO, AUTM , AIPLA and several big universities, I still worry that we are “going to Abilene.” In that fable, one member of a country family offhandedly suggests going on a long dusty drive into town on a hot Sunday. Although almost no one really wants to go, instead of just saying so, each one throws out a thought – we could go to a movie, or get ice cream, or visit old Aunt Ida – until, before they know it, they are all in the car and on the way to Abilene, a place no one really wanted to go in the first place.
The Summary of the Reform Act gives me that impression. If it passes, and it may well this time around, not only will patent applications be attackable during prosecution –anyone will be able to send in prior art and comment on it, but there will also be a nine-month period for opposition following issuance, as well as a streamlined inter partes opposition procedure that will be conducted by a panel of three administrative law judges and permit direct appeal to the Federal Circuit. Opposers must show a reasonable likelihood of success and will be estopped from relitigating issues that reasonably could have been raised during inter partes review that they instituted. Have such standards ever been articulated clearly? There will also be a ”supplemental examination process” to help applicants fix flawed patents. (I have not have time to read this, but isn’t this called reissue?) By the way, the PTO Director can set fees, but must start out by cutting fees paid by small entities and “micro-entities.”
However, even if an applicant operating under a first-to-file system (yes, Red Riding Hood, that Big Bad Wolf is back too) gets his/her “high quality patent” through an obstacle course that could be used on the show “Wipeout,” enforcement will not be a picnic. Courts are supposed to evaluate the “legal basis for specific damages theories,” willful infringement will be harder to prove, and enhanced damages harder to obtain. Well, I can’t wait to cuddle up on the sofa on a cold Saturday and start into this 99 page thriller!
KSR Panel at AIPLA Annual Meeting
Monday, October 25th, 2010Thanks to all of you who attended (or tried to attend) the panel presentations on KSR Tuesday morning at the AIPLA Annual Meeting. We apologize, but were pleasantly surprised, that the room was too small to accommodate all who wished to attend. Although it is available at the AIPLA website, I have attached the paper I submitted: “Adjusting the Rearview Mirror – Blocking Impermissible Hindsight Rejections.” It also touches on the state of “non-analogous art” and “picking and choosing.” I think that KSR unleashed/freed/encouraged Examiners to make obvious to try rejections which involve blatant picking and choosing from laundry lists of known elements, and that are only supported by the “common sense” or “ordinary creativity” of the POSA (read “the Examiner”). If I felt that anything was lacking in the panel, it might be the lack of a speaker on the importance of identifying prior art disclosures teaching away from the claimed invention.
Director Kappos “Chats” About PTO S.W.O.T.
Thursday, October 21st, 2010
Wednesday noon at the AIPLA 2010 Annual Meeting, USPTO Director David Kappos engaged in a “fireside chat” (actually podium-side chat) with AIPLA Executive Director and former PTO Director Q. Todd Dickinson about the Strengths, Weaknesses, Opportunities and Threats that he has experienced since becoming Director. Regarding the 710,000 application backlog, he stated that his goal was to reduce it to a manageable 325,000, which would provide sufficient work for the current Examining staff, and the 1,000 new Examiners he said he hopes to hire over the next year. Although he did not say when this level would be reached, he also endorsed a goal of 10 months to a first action and 20 months to disposal, with an average of 2, 1 actions per case (it is now about 3 per case).
While Director Kappos endorsed the various proposals and pilot programs for accelerated examination as “important to the applicant community,” Dickinson noted that they are scarcely used at this point. Kappos also endorsed three-tiered examination and felt that the ability to defer examination for 30 months would help reduce the backlog, since applicants would abandon applications without demonstrated value. He noted that the initial proposal to limit access to applications first filed abroad had hit a storm of criticism and that it would be withdrawn or greatly curtailed.
When asked to identify the most important part of the proposed patent reform legislation, he answered “first-to-file” and said that it was his opinion that this change would benefit small entities [ed. note: Even if they don't all seem to realize that yet]. All-in-all an engaging and quite candid “coffee talk” from this very hard-working Director.
