Tag Archives: Patent

The USPTO’s 2010 Performance and Accountability Report

The USPTO recently released its Performance and Accountability Report for Fiscal Year 2010. The Report provides a summary of program and financial results to assess the USPTO’s performance. This article will summarize some of the statistics that were provided in the Report.

At the end of fiscal year 2010, the USPTO work force included 9,507 federal employees. Of those 9,507 employees, 6,225 were patent examiners and 378 were trademark examining attorneys.

The Report provided statistics on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for (1) Patent Average First Action Pendency, which measured the average time in months from filing until an examiner’s initial determination on the patentability of an invention; and (2) Patent Average Total Pendency, which measured the average time in months from filing until the application is issued as a patent or abandoned by the applicant.
(1) Patent Average First Action Pendency (in months)
Fiscal Year - Target – Actual
2006 - 22.0 - 22.6
2007 - 23.7 - 25.3
2008 - 26.9 - 25.6
2009 - 27.5 - 25.8
2010 - 25.4 - 25.7

(2) Patent Average Total Pendency (in months)
Fiscal Year - Target – Actual
2006 - 31.3 - 31.1
2007 - 33.0 - 31.9
2008 - 34.7 - 32.2
2009 - 37.9 - 34.6
2010 - 34.8 - 35.3

The results from 2010 in the two categories above were slightly below target.

The Report also included statistics from fiscal year 2006 to fiscal year 2010 on the percentage of patent applications that were filed electronically. The number of patent applications filed electronically has continued to increase as follows:
Patent Applications Filed Electronically
Fiscal Year - Target – Actual
2006 - 10% - 14.2%
2007 - 40% - 49.3%
2008 - 69% - 71.7%
2009 - 80% - 82.4%
2010 - 90% - 89.5%

Similarly, the Report provided information on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for: (1) Trademark Average First Action Pendency, which measured the number of months from the date of application filing to the first office action; and (2) Trademark Average Total Pendency, which measured the average number of months from date of filing to notice of abandonment (unless a notice of allowance was issued), notice of allowance, or registration for applications based on use in that month.
(1) Trademark Average First Action Pendency (in months)
Fiscal Year - Target - Actual
2006 - 5.3 - 4.8
2007 - 3.7 - 2.9
2008 - 2.5 to 3.5 - 3.0
2009 - 2.5 to 3.5 - 2.7
2010 - 2.5 to 3.5 - 3.0

(2) Trademark Average Total Pendency (in months)

Fiscal Year - Target – Actual
2006 - 16.3 - 15.5
2007 - 14.8 - 13.4
2008 - 14.3 - 11.8
2009 - 13.0 - 11.2
2010 - 13.0 - *

* The average total pendency including suspended and inter partes cases was 13 months. Excluding applications that were suspended or delayed for inter partes proceedings, the average total pendency was 10.5 months. The above 2010 trademark targets were met.

The number of trademark applications filed electronically has also continued to increase:

Trademark Applications Processed Electronically

Fiscal Year - Target - Actual
2008 - Baseline
2009 - 62% - 62.0%
2010 - 65% - 68.1%

The data in the Report will be finalized and reported in the USPTO’s 2011 Performance and Accountability Report.

- Katie Cooper

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

Patent Term Adjustment Interim Procedure

The USPTO announced that it is providing patentees with a new interim procedure for requesting Patent Term Adjustment recalculation.   The new procedure allows for the request without a fee or petition that is usually required under 37 CFR 1.705(d).  This procedure is being put into place to comply with the Federal Circuit Decision in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir., Jan 7, 2010).  In order to qualify the request must meet the following:

(1)   be filed no later than 180 days from the issue date of the patent;

(2)   be filed prior to March 2, 2010; and

(3)   the alleged errors must be the ones specifically identified in Wyeth.

 

John C. Thomas III

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

Appeals on the Rise

It has been reported that the number of appeals filed in the U.S. Patent and Trademark Office from an Examiner’s rejection has increased by 70% from the previous year. The rise could be credited to the Supreme Court’s 2007 decision on KSR International Co. v. Teleflex which makes it easier for the Patent Office to establish that an invention is obvious, therefore making it not patentable during the application process.

The rise could also be due to impatience with the Patent Office over, what seems to be, its reluctance to approve Patent Applications for issuance. The Patent Office reported its pendency for average patent applications time to be 32.2 months in 2008 which is the highest it’s been since 2004 when it was 27.6 months.

Rather than filing continuing patent applications after rejection, attorneys are filing appeals and finding it to be a successful decision. With pressure mounting in the Patent Office to move applications along and overtime pay being suspended at least from June 21 through the end of the fiscal year (according to a U.S. Patent and Trademark Office internal memo posted on the blog of The Blog of Legal Times) many rejections are being made quickly and by Examiners with little experience, leaving an opening for attorneys to file solid appeals.

Clients are finding it more attractive to file expensive appeals in order to fight for the time and money they have already invested in a pending application rather than filing a new application.

University of Pittsburgh Prevails in Federal Circuit Patent Case

The University of Pittsburgh was recently involved in an inventorship dispute involving U.S. Patent No. 6,777,231 for “Adipose-Derived Stem Cells and Lattices” that issued August 17, 2004.  The United States Court of Appeals for the Federal Circuit decided on July 23, 2009 that two University of Pittsburgh researchers completed conception of the claimed invention before the appealing researchers contributed their efforts, and therefore are not joint inventors of the claimed invention.

 Drs. Katz and Llull are researchers at the University of Pittsburgh studying adipose (fat) tissue in humans.  In March 2000, the University of Pittsburgh filed an international patent application listing seven named inventors, which issued as U.S. Patent No. 6,777,231.  In October 2004, the University of Pittsburgh filed this action seeking removal of the other five inventors, including Marc H. Hedrick, a REBAR researcher. 

 The district court held a hearing to construe the patent claims.  The term “adipose-derived” was among the constructions disputed.  The REBAR researchers argued that the construction should be limited, while Katz and Llull argued for a plain meaning.  The district court determined that the specification supported the plain meaning.  The district court then found that Katz and Llull had conceived the claimed invention as construed prior to Hedrick’s arrival at the University of Pittsburgh.  The REBAR researchers appealed the construction of “adipose-derived” and the conclusion that they were not joint inventors of the claimed invention.  

  • The inventors named in an issued patent are presumed to be correct.  A party alleging misjoinder of inventors must prove its case by clear and convincing evidence.  The movant must show that the persons to be removed did not contribute to the invention of any of the allowed claims. 

 

  • Conception is the formation in the mind of an inventor of a definite and permanent idea of the complete and operative invention.  The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.  For conception to be complete, an inventor does not have to know that his invention will work.  He must only show that he had the complete mental picture and could describe it with particularity.  (Discovering that the invention actually works is part of its reduction to practice.)  In a joint invention, each inventor must contribute to the joint arrival at a definite and permanent idea of the invention. 

See University of Pittsburgh v. Hedrick et al., No. 2008-1468 (Fed. Cir. July 23, 2009).

 The district court held, and the Federal Circuit affirmed, that clear and convincing evidence existed to show that Katz and Llull conceived of each claim of the invention before the arrival of Hedrick.

Michael Jackson’s Patented Move

Patent figure

The United States Patent and Trademark Office is hosting an exhibit displaying material from Michael Jackson’s Patent and Trademark Applications.

The exhibit will include Jackson’s U.S. Patent No. 5,255,452 for a “system for allowing a shoe wearer to lean forwardly beyond his center of gravity by virtue of wearing a specially designed pair of shoes which will engage with a hitch member movably projectable through a stage surface” which he used in his “Smooth Criminal” music video. Jackson is listed as a co-inventor on the Patent. The display also shows an original signature by Jackson on the Application.

Jackson also had various Trademarks Registrations including U.S. Registration No. 1,908,209 for the mark “MICHAEL JACKSON” for use on “sound recordings; namely, pre-recorded phonograph records, audio tapes, compact discs, videotapes, and motion picture films featuring music and entertainment.” In addition to Registrations there are several Trademark Applications which include Serial Nos. 77/480,301 and 77/480,413 for “THRILLER 25 THE WORLD’S BIGGEST SELLING ALBUM OF ALL TIME,” both of which are still pending.

The exhibit opened on July 15, 2009 and will run through Labor Day of this year. It is free and open to the public.

Jackson’s manager, Frank DiLeo, is from Pittsburgh, Pennsylvania (Point Breeze) and went to Central Catholic High School.

Bayer Patent Suit

On Wednesday, July 1, 2009, counsel for Bayer Schering Pharma AG, Bayer Healthcare Pharmaceuticals, Inc. and Schering Corporation filed a complaint in the United States District Court for the District of Delaware against Teva Pharmaceutical Industries, Ltd. and Teva Pharmaceuticals USA, Inc.  In the complaint Bayer claims that Teva has infringed their Patent No. 6,362,178 for “2-Phenyl Substituted Imidazotriazinones As Phosphodiesterase Inhibitors” also known as LEVITRA, a drug approved by the U.S. Food and Drug Administration for the treatment of erectile dysfunction.  Schering Corporation currently has exclusive rights through a license to market and sell LEVITRA across the United States. 

 According to the complaint, Teva notified Bayer of their knowledge of Patent ‘178 through a letter dated May 19, 2009, and that they did not believe it to be a valid and enforceable patent though a reason was not provided.  The letter also notified Bayer that Teva filed an Abbreviated New Drug Application with the U.S. Food and Drug Administration for Vardenafil Hydrochloride Tablets, a generic version of LEVITRA, which uses the same active ingredient, vardenafil HCl.

 Bayer claims that Teva had prior knowledge of Patent ‘178 before filing for approval from the U.S. Food and Drug Administration to manufacture and sell the generic version and because vardenafil HCl is contained in the generic version, this action infringes Patent ‘178.  Bayer is seeking a judgment ordering that the effective date of any FDA approval for Teva to make, use, offer for sale, sell, market, distribute, or import Teva’s product be no earlier than the expiration date of Patent ‘178; a judgment declaring that making, using, selling, offering for sale, marketing, distributing, or importing Teva’s product prior to the expiration date of Patent ‘178 will infringe Patent ‘178; and an award of attorneys’ fees and Plaintiffs’ costs and expenses in this action.

 Counsel for Teva has not yet filed a response.