Tag Archives: Patent Law

USPTO Data Visualization Center and Patents Dashboard

In early September, David Kappos posted an article on his blog introducing the USPTO Data Visualization Center and Patents Dashboard. To help meet his goals of reducing the backlog of unexamined patent applications and driving patent pendency down, he will be making USPTO data easily accessible to the public through the Data Visualization Center and Patents Dashboard. He explained that traditionally the USPTO measured patent pendency at two points in the process: (1) measuring the average time from filing to the First Office Action; and (2) measuring the average time from filing to allowance or abandonment of the application. He stated that “these measures do not provide complete data about pendency across the USPTO. We therefore will now measure pendency in several additional ways to ensure we have a more complete picture, and will make the data available to the public.”

The patents dashboard provides USPTO performance indicators such as the number of applications in the backlog, production, actions per disposal, and staffing levels. The traditional “Total Pendency” measure stopped the clock with the filing of an RCE. A new measure, “Traditional Total Pendency Including RCEs” looks at pendency of applications from filing of the original application to ultimate disposal of that same application, including additional time attributable to RCE filings. Similar measures are provided for divisional applications and other types of continuation applications. The dashboard also provides information about pendency for applications in appeal. Some of the improvements the USPTO has made over the past year include a drop in the number of actions per disposal. One of the USPTO’s stated goals is to reduce first action pendency to an average of 10 months by 2015.
The August 2010 dashboard statistics at a glance are as follows:

1. First Office Action Pendency – 26.2 months;
2. Traditional Total Pendency – 35.4 months;
3. Patent Application Backlog – 728,055;
4. Average Actions Per Disposal – 2.4; and
5. Patent Examiners on Staff – 6,038.

The dashboard will be updated monthly. For those interested in more details about a particular statistic, a more detailed spreadsheet will be available for each measure with available data. Mr. Kappos has set up a mailbox for feedback from the public.

- Katie Cooper

USPTO Launches Patents Ombudsman Pilot Program

The USPTO announced in an April 6, 2010 Federal Register Notice that it is launching the Patents Ombudsman Pilot Program for a period of one year.

The Program is intended to provide patent applicants, attorneys and agents with assistance with application-processing issues regarding concerns with advancement of prosecution. Applicants, attorneys or agents who have application-processing concerns, and haven’t been able to get the assistance they need through normal channels in the Technology Center (TC), can contact the ombudsman representative for the TC through the USPTO website (www.uspto.gov). The applicant is expected tol receive a phone call within one business day for a discussion of the specifics of the issue. From there, the ombudsman representative will work with TC staff to address the concerns expressed by the applicant and try to get the application back on track.

“This program is a direct response to feedback we’ve received from members of the patent community who have told us that they need a dedicated resource they can turn to when they have concerns about the prosecution of their application,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We are always striving for ways to improve the quality and efficiency of patent examinations, and we believe this initiative is an important step forward on both these fronts.”

After the one-year period the USPTO may extend the pilot program with appropriate modifications based on the feedback from participants, the effectiveness of the pilot program, and the availability of resources.

- Katie Cooper

USPTO Proposes Change to the Provisional Patent Application Period

In an April 2, 2010 Press Release, the USPTO proposed a change that would effectively provide a 12-month extension to the provisional patent application period. The proposed change would “give applicants greater flexibility, reduce costs, and conserve agency resources.”

The change would be implemented through the missing parts practice in nonprovisional applications. The proposed change is expected to benefit the USPTO and the public by adding publications to the body of prior art and by removing nonprovisional applications for which applicants have decided not to pursue examination from the USPTO’s workload.

The proposed change would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application. Applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application is filed, pay the basic filing fee, and submit an executed oath or declaration. The nonprovisional would need to be in a condition for publication and the applicant would not be able to file a nonpublication request.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said he learned at roundtables that were held with inventors across the country that additional time flexibility during the provisional period would greatly benefit them “because the existing 12-month provisional period may provide too little time for inventors to test the marketplace.”

The USPTO is seeking public comment on the proposed change.

- Katie Cooper

Google Chrome Lawsuit

An Israeli corporation filed suit against Google Inc. for patent infringement relating to Google’s new browser, Google Chrome, in the United States District Court for the District of Massachusetts on October 26, 2009. The patent at issue, U.S. Patent No. 6,546,552, entitled “Difference Extraction Between Two Versions of Data-Tables Containing Intra-References” is owned by Red Bend Ltd. Red Bend Software is the exclusive licensee within the United States of the ‘552 Patent. (“Red Bend Ltd.” and “Red Bend Software” will be collectively referred to as “Red Bend.”)

Red Bend alleges that Google has “manufactured products and provided instructions regarding the use of those products that constitute or effect contributory and/or induced infringement of the ‘552 Patent.”

Red Bend provided two examples of Google’s alleged infringement:

1. Google’s implementation of its differential compression algorithm for making Google Chrome updates significantly smaller, used by Google and others under the direction and control of Google, infringes one or more claims of the ‘552 Patent; and

2. Google’s publication and distribution of the source code for the algorithm induces others’ infringement of one or more claims of the ‘552 Patent.

Red Bend has requested compensation including a reasonable royalty, lost profits and lost future profits, plus interest. Google has not yet filed an Answer.

University of Pittsburgh Files Notice of Appeal to the Federal Circuit

pittThe University of Pittsburgh has been in a patent litigation suit with Varian Medical Systems, Inc. since the University of Pittsburgh filed a patent infringement suit in the U.S. District Court for the Western District of Pennsylvania on April 13, 2007. The University of Pittsburgh owns two patents pertaining to image-guided radiation therapy technology: U.S. Patent No. 5,727,554 entitled “Apparatus responsive to movement of a patient during treatment/diagnosis” and U.S. Patent No. 5,784,431 entitled “Apparatus for matching X-ray images with reference images.”

On September 1, 2009, the Court entered a judgment in favor of the Defendant.

The University of Pittsburgh filed a Notice of Appeal to the United States Court of Appeals for the Federal Circuit on October 28, 2009.

- Katie Cooper

API Technologies Settles Data Network Patent Infringement Case Against Facebook et al

data systemAPI Technologies, LLC owns U.S. Patent No. 6,859,699 entitled “Network-Based Method and System for Distributing Data.” On May 12, 2009, API Technologies filed suit in the United States District Court for the Eastern District of Texas alleging patent infringement against Facebook, Inc.; Amazon.com, Inc.; Amazon Web Services LLC; AOL LLC; Mapquest, Inc.; Bebo, Inc.; Truveo, Inc.; Best Buy Co. Inc.; CBS Corporation; CBS Interactive Inc.; CBS Interactive Media Inc.; CNET Investments, Inc.; CNET Networks, 2 Inc.; Last.FM Limited; The Dun & Bradstreet Corporation; Hoover’s, Inc.; Google Inc.; Android, Inc.; Thomson Reuters Corporation; Thomson Reuters PLC; Thomson Reuters U.S. Inc.; Thomson Reuters U.S.A. Inc.; Reuters America, LLC; and Yahoo! Inc.

API claimed that defendants infringed the ‘699 Patent “by, among other things, making, using, selling and/or offering for sale systems and/or methods for providing data using a data transmission network covered by one or more claims of the ‘699 Patent.”

API provided the example that:

Facebook provides users with systems or methods, including Application Programming Interfaces, for providing user interfaces for soliciting selections of desired data. Facebook then uses the data transmission network to receive an input signal representing a selection of desired data, and retrieves and transmits that data. Facebook then generates license codes with embedded information that is related to a valid product code associated with a specific device or system. Facebook requires the use of such license codes to access the desired data.

Several defendants filed answers to the complaint. On October 13, 2009, an order granted a motion to dismiss the case subject to the terms of a confidential settlement agreement dated September 22, 2009.

According to BusinessWeek, API Technologies, LLC provides software solutions to the gaming, law enforcement and security industries.

- Katie Cooper

Google Design Patent

googleOn March 7, 2006 Google Inc. filed for a design patent for its home page.  The patent issued on September 1, 2009 as U.S. Pat. No. D599,732.   There are ten (10) listed inventors on the patent. 

A design patent protects the ornamental design of an article of manufacture.  Google’s patent covers the ornamental design for a graphical user interface for a display screen of a communications terminal.   The U.S. Patent Office must have considered this design new and nonobvious over the prior art.

- John C. Thomas III

Patent Application Data Sheet vs. Oath or Declaration

In a recent conversation with a Pittsburgh patent lawyer, we discussed the difference between submitting information for a patent application using an application data sheet (ADS) versus submitting information using an oath or declaration.      

An application data sheet is a sheet or sheets that may be voluntarily submitted in either provisional or nonprovisional applications, which contains bibliographic data.  MPEP § 601.05.    

MPEP § 601 states the following:

If an application data sheet is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of  each inventor must be provided in the oath or declaration even if this information  is provided in the application data sheet.

If there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors. 

If you use an application data sheet, it must be arranged in the format specified by the United States Patent and Trademark Office.

- Katie Cooper

Kennametal Files Patent Infringement Suit

patKennametal Inc. filed a patent infringement suit against Sandvik, Inc., Seco Tools Inc., and Walter USA, Inc. on June 29, 2009 in the United States District Court for the Western District of Pennsylvania.

The complaint alleges that defendants infringed U.S. Patent No. 5,722,803 (“Cutting Tool and Method of Making the Cutting Tool”) and U.S. Patent No. 7,530,772 B2 (“Drill, Such as a Twist Drill”) through their manufacture, use, sale, offer for sale, and/or importation of coated cutting tools and drills.  The defendants’ Answers are due September 8, 2009. 

Kennametal is a company located just outside of Pittsburgh, Pennsylvania in Latrobe. According to Kennametal’s website, Kennametal is a leading global supplier of tooling, engineered components, and advanced materials that are consumed in production processes. Kennametal applies powder metallurgy, materials science and mechanical engineering technologies to cemented tungsten carbides, high-speed steels, ceramics, industrial diamonds, and other material compositions to produce products that have resistance to heat, impact, corrosion, pressure and wear. Kennametal’s annual sales are approximately $2 billion, with 12,000 employees worldwide and operations in over 60 countries.

- Katie Cooper

Expiration of the 12 month priority period falls on a Saturday for a PCT Application

When filing a PCT application for a Pittsburgh Company the 12 month priority period fell on August 15, 2009 which is a Saturday.  The PCT application had already been filed on August 14, 2009 but the inventor wanted to add some additional information and contacted us at 6:00 PM on August 15, 2009.  The additional matter would have required re-filing the application.  The inventor wanted to sleep on the decisions of re-filing to include the additional information.

This raised the issue of whether or not the priority period expired on August 15, 2009 or was extended to August 17, 2009 because August 15, 2009 was a Saturday.  PCT Rules 2.4 and 80.5 govern this situation and state as follows:

Rule 2.4 – “Priority Period”

(a) Whenever the term “priority period” is used in relation to a priority claim, it shall be construed as meaning the period of 12 months from the filing date of the earlier application whose priority is so claimed. The day of filing of the earlier application shall not be included in that period; and

(b) Rule 80.5 shall apply mutatis mutandis to the priority period; and

Rule 80.5 – “Expiration on a Non-Working Day or Official Holiday”

If the expiration of any period during which any document or fee must reach a national   Office or intergovernmental organization falls on a day:

  (i)  on which such Office or organization is not open to the public for the purposes of the transaction of official business;

the period shall expire on the next subsequent day on which none of the said four circumstances exists.

The U.S. Patent Office’s normal operation of business days are Monday through Friday. 


- John Thomas