In existence for more than 200 years, the United States Patent and Trademark Office (USPTO) is the government agency responsible for processing patent and trademark applications and disseminating related information to the public. Patents are a type of constitutionally sanctioned property right granted to inventors for exclusive development and deployment of their discoveries. Located in the Department of Commerce, the agency has been fully fee-funded since 1991.
Not without its fair share of controversy, the USPTO has long been criticized for long waiting times, inefficiency, and granting patents for unjustifiably ridiculous “inventions.” Although the Office only grants patents and trademarks valid in the U.S., its issue of U.S.-company patents for genetic modifications of biotechnology in foreign countries makes it susceptible to criticism of facilitating biopiracy, and makes it part of a larger debate over international intellectual property.
After years of failed attempts in Congress to pass reform bills, the most comprehensive overhaul of the USPTO in decades occurred in September 2011 when Congress approved, and President Barack Obama signed, the Leahy-Smith America Invents Act (see History, below).
United States Patent and Trademark Office (USPTO) history spans more than 200 years. In 1790, President George Washington established the first Patent Act, under which the Secretary of State and Executive signed off on patents. The responsibility was soon transferred to clerks in the State Department, and in 1802 given to the newly created role of clerk in the Department of State, which became the first patent office. Trademark registration was added to the Office’s functions in 1881.
The USPTO has issued more than 8 million patents since the Patent Act of 1790, and generally receives more than 485,000 patent applications and around 300,000 trademark applications per year.
On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (pdf), which stands as the most significant reform of the U.S. patent system in nearly six decades. Legislation derived from a bill sponsored by Sen. Patrick Leahy (D-Vermont) and Rep. Lamar Smith (R-Texas), the Act altered the patent law from a “first to invent” to a “first to file” (FTF) system, revised opposition procedures, gave the USPTO its own fee-setting power, and eliminated interference proceedings (debates over simultaneous inventions). The FTF change affects applications filed on or after March 16, 2013. Opponents of the law fear that it will have the effect of favoring large corporations over smaller inventors, given such organizations’ greater resources to file quickly for every idea they conceive. This has been borne out, according to opponents, by the Canadian patent system, which adopted FTF in 1989 and has been seen to benefit large corporations over independent inventors and small companies.
Statutory Authority
15 U.S.C. 1051-1127 contains provisions of the Trademark Act of 1946 that govern the administration of the trademark registration system of the Patent and Trademark Office.
15 U.S.C. 1511 states that the Patent and Trademark Office is under the jurisdiction and supervision of the Department of Commerce.
35 U.S.C. contains basic authorities for administration of patent laws, derived from the Act of July 19, 1952, and subsequent enactment. Revenues from fees are available, to the extent provided for in appropriations acts, to the Commissioner to carry out the activities of the Office. The Patent and Trademark Office is authorized to charge international fees for activities undertaken pursuant to the Patent Cooperation Treaty. Deployment of automated search systems of the Office to the public is authorized.
44 U.S.C. 1337-1338 contains authority to print patents, trademarks, and other matters relating to the business of the Office.
History of the United States Patent Office: The Patent Office Pony: A History of the Early Patent Office (by Kenneth W. Dobyns)
A Brief History of the Patent Law of the United States (by Ladas & Parry LLP)
The Comprehensive Patent Reform of 2011: Navigating the Leahy-Smith America Invents Act (by John Villasenor, Brookings Institution)
Patents
Patents are a property right issued by the United States Patent and Trademark Office (USPTO) to inventors, defined as “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” it into the U.S. Patents are only applicable within the U.S., its territories, and possessions. The USPTO has three years to issue a patent, which usually lasts 20 years from the date of filing. Once issued, responsibility for enforcing the patent is with the recipient.
There are three types of patents issued by the USPTO:
- Utility patents are granted to one who “invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”
- Design patents are granted for a “new, original, and ornamental design for an article of manufacture.”
- Plant patents “may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.”
Other criteria for judging patentability require that it be “novel” and “nonobvious,” and the invention must be described beforehand in enough detail to enable use for its intended purpose.
Patent Laws
Article I, Section 8 of the Constitution gives Congress the power to regulate patent law: “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Patent law specifies the subject matter for which patents can be issued and conditions for patentability.
See: Laws & regulations , Patent Laws (pdf) and Patent Rules (pdf)
Existing law provides that anyone who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.” In this language “process” is legally defined as “a process, act or method,” including industrial or technical processes. This and the other classes of subject matter provided for (machine, manufacture, composition of matter) together are meant to cover most all man-made things and related processes. A major exception is made for inventions solely intended for “special nuclear material” or atomic weaponry, which are not patentable.
Patent law requires subject matter be “useful,” meaning it has a useful purpose including “operativeness” (an invention must perform its intended purpose in order to be patentable). Further, a complete description of the invention or manufacture is needed to warrant a patent.
Over time, court decisions have determined limits of the field of patentable subject matter, holding that laws of nature, physical phenomena and abstract ideas are not eligible. Raw natural products of nature are not patentable, but DNA and genetic modifications of natural phenomena become patentable when they have been isolated, purified, or modified to result in a unique form. Regulations regarding the patenting of gene technology are still extremely controversial and evolving. (See “Biotechnology, Intellectual Property and Supreme Court” in controversy section.)
Genetics and Patenting (Human Genome Project Information)
http://www.uspto.gov/web/patents/howtopat.htmBasic facts about patents
Registered patent attorneys & agents
Trademark or Servicemark
A trademark is a “word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others” that users register with the USPTO. A service mark is the same but identifies the source of a service rather than a product. Trademark rights can be used to prevent others from using a similar symbol (which can easily be confused by consumers) but not to prevent others from making or selling the same goods and services under a different mark—and can be used in interstate or foreign commerce.
Copyright
Copyrights are issued to protect authors of “‘original works of authorship’ including literary, dramatic, musical, artistic and certain other intellectual works, both published and unpublished.” A copyright protects the form of expression rather than its content. Under the 1976 Copyright Act, owners have the exclusive right to reproduce and distribute the protected work, to produce derivative work, and to publicly display or perform the work. Copyrights are registered by the Copyright Office of the Library of Congress.
The Role of the USPTO and IP Policy
Copyright Basics
A Copyright Refresher
Legislation
Intellectual Property Policy and Enforcement
Federal laws (USC) online
Federal regulations (CFR) online
Public comments
Regulations.gov
International
Geographical Indications
Global/International IP Protection
Links to Other IP Offices
Trilateral activities (U.S., Europe and Japan)
Help for Inventors
Lemelson-MIT Program Inventor’s Handbook
Inventor of the Week Archive-Consumer Products
Facts of Interest
- The X-Patents (the first 10,000 issued between 1790 and 1836) were destroyed by a fire in December 1836 and less than 3,000 of those have been recovered and re-issued.
- On July 31, 1790, the USPTO awarded its first patent to Samuel Hopkins for an improvement “in the making of Pot ash by a new Apparatus and Process.” This patent was signed by then-President George Washington.
- Legal fees for the preparation and filing of a U.S. Patent application can total more than $20,000, which is why a lot of inventors file their own patents.
- The USPTO rejects 83% of applications the first time they are filed.
From the Web Site of the U.S. Patent and Trademark Office
Intellectual Property Law and Policy
Journal Archive – Official Gazette
Stakeholders include all classes of inventors, pharmaceutical companies, multinational biotech companies, individuals and groups whose rights are infringed upon by the granting of United States Patent and Trademark Office (USPTO) patents (victims of biopiracy), agents, lawyers, and other middlemen, etc.
The USPTO spent $4.88 billion on more than 18,000 contractor transactions between 2002 and 2012, according to USAspending.com. The top five types of products or services paid for were printed matter ($1,023,542,618), IT and telecommunications systems development ($499,178,763) and facility operation ($468,789,030), administrative support ($494,511,603), and professional program management/support ($350,075,243).
The following are the top five recipients of USPTO contractor spending during that 10-year period, along with the dollar amounts paid and respective percentage of the total spent:
1. Reed Elsevier Group PLC $943,206,375 (19%)
2. MT Holdings, Inc. $269,494,681 (6%)
3. Computer Sciences Corporation $264,208,730 (5%)
4. NANA Regional Corporation, Inc. $231,213,010 (5%)
5. Raytheon Company $173,653,676 (4%)
Biotechnology, Intellectual Property and Supreme Court
The U.S. Supreme Court ruled unanimously in 2013 that human genes cannot be patented.
The case concerned patents held by Myriad Genetics, a Utah company, on genes that correlate with an increased risk of hereditary breast and ovarian cancer. Scientists challenged the patents because they were prevented from doing research to find new ways to detect genetic mutations, and doctors said they were stymied in their attempts to help patients because of the sky-high cost of the patented tests.
The decision was expected to reduce the price of genetic testing for some breast and ovarian cancer risks. (The Myriad test for the BRCA1 and BRCA2 genes cost more than $3,000—out of reach for many patients; it was the kind of genetic testing Angelina Jolie had before her preventative double mastectomy in 2013.)
After the ruling, at least three companies and two university labs said that they would begin offering genetic testing in the field of breast and ovarian cancers.
“Myriad did not create anything,” Justice Clarence Thomas wrote for the court. “To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.”
Human Genome Project Information
A patent challenge for human embryonic stem cell research: A scientist describes how she decided that a legal fight would advance science (by Jeanne Loring, Nature Reports, Stem Cells)
Justices, 9-0, Bar Patenting Human Genes (by Adam Liptak, New York Times)
You Can’t Patent Human Genes. So Why Are Genetic Testing Companies Getting Sued? (by Timothy Lee, Washington Post)
Immunity for Banks Using Patented Check Imagery Process
Several of the nation’s largest banks, including Bank of America and Wells Fargo, sought immunity protection from the federal government in 2008 to keep from having to pay a small Texas company billions of dollars in damages for infringing on its patents.
Introduced by Sen. Jeff Sessions (R-Alabama), the legislation would prevent DataTreasury from collecting damages from banks for infringing on its patented method for digitally scanning, sending, and archiving checks. The U.S. Patent and Trademark Office (USPTO) upheld the patents after they were contested.
The Senate bill represented a rare attempt by Congress to intervene in litigation that had gone on for six years, though it would not invalidate DataTreasury’s patents. Instead, the proposal would spare the banks from paying for infringing them if the courts backed DataTreasury’s claims.
Support for the plan wavered once the Congressional Budget Office said the federal government would have to pay $1 billion to DataTreasury over 10 years as compensation for taking its property under the legislation.
So the patent infringement battle continued against dozens of banks. In 2010, a federal jury awarded DataTreasury $27 million in an action against U.S. Bancorp and others, and settlements were reached with Wells Fargo, Bank of America and several other banks.
Lawmakers Move to Grant Banks Immunity Against Patent Lawsuit (by Jeffrey H. Birnbaum, Washington Post)
Advisory: DataTreasury Patent Infringement (Cox Smith Attorneys)
DataTreasury (Wikipedia)
DataTreasury, U.S. Bancorp Settle Image-Capture Patent Dispute (by Jackie Stewart, American Banker)
Corporations as Patent Kings
Critics of the Leahy-Smith America Invents Act, the legislation that overhauled the U.S. patent process in 2011, claim that the newly enacted reforms will, among other things, give an edge to major corporations over the little guy in protecting inventions and ideas. However, according to statistics compiled by IFI Claims Patent Services in January 2011, high-profile corporations already have the edge, filling the top-10 list of applicants who are granted the most patents.
Here is the list of companies that were awarded the most patents in 2010, and the respective number of patents granted to them by the USPTO that year:
- IBM 5,896
- Samsung Electronics 4,551
- Microsoft 3,094
- Canon 2,552
- Panasonic 2,482
- Toshiba 2,246
- Sony Corp. 2,150
- Intel 1,653
- LG Electronics 1,490
- Hewlett-Packard 1,480
Major corporations are also at the forefront of the patent litigation battleground. They include Apple, Google, Motorola, Sony, Samsung, Kodak, Nokia, and Microsoft. Perhaps exercising the greatest foresight is IBM, which applied for a patent for a “computerized patent management system.”
IBM, Samsung Lead 31% Record Jump in New U.S. Patents in 2010 (by Susan Decker, Bloomberg)
Invalid Appointments
A law professor sent shockwaves through the patent world in 2007, not to mention the business world, when he discovered a serious flaw in how patent judges were appointed, which could potentially invalidate thousands of patents involving billions of dollars.
John F. Duffy, who teaches at the George Washington University Law School, found a constitutional flaw in the appointment process over the previous eight years for judges who decided patent appeals and disputes.
He claimed a 1999 law that changed the way administrative patent judges were appointed, substituting the director of the Patent and Trademark Office for the secretary of commerce, was unconstitutional.
Other legal experts agreed with Duffy, whose argument threatened the appointments of 46 judges. If those judges were found to be improperly seated, then all of their decisions could be rendered moot.
The Justice Department seemed to agree with Duffy, but warned the impact of his discovery could be cataclysmic for the patent world. Indeed, Translogic Technology, which had a patent rejected by the USPTO appeals judges, took the case to the Supreme Court in 2008, but the court refused to hear it. And that year, President George W. Bush signed into law a bill that supposedly fixed the problem by transferring the appointment of patent judges back to the Secretary of Commerce and allowing the Secretary to retroactively approve the judges in question.
In One Flaw, Questions on Validity of 46 Judges (by Adam Liptak, New York Times)
When is a Patent Office Appointee Qualified? Judge Says Always. (by Stephen Jenei, Patent Baristas)
High Court Rejects Patent Board Appointments Case (by Julie Zeveloff, Law 360)
Questions Linger Over Patent Judge Appointments (by Jacqueline Bell, Law 360)
Patenting Business Methods
Since the 1998 Federal Circuit court State Street Bank decision ruled that business methods could qualify as patentable subject matter, the agency has been inundated with such applications, especially for software. Objections to patenting of business methods range from arguments of unconstitutionality to the evident poor quality of many patents issued for business methods.
In a March 2008 interview, USPTO head John Doll commented that, “Probably in the last three years, of all the (business method patent) applications that have come in the door, the office has said 85 percent of these are not allowable. The patent system, I believe, is working very well... We’re starting to get a higher percentage of business method patents being approved, probably in the 20 percent range.”
USPTO Patent Business Methods Page
The Continuing Controversy Over Business Methods Patents (by Lois Matelan, Fordham Law, academic paper) (pdf)
End of an era? Patentability of business method patents (by Matt Wermager, BLIP)
Suit Challenging Margaret Peterlin
The USPTO deputy director during the George W. Bush administration faced a legal challenge in 2007: the claim was that she was unqualified for office.
Four inventors and patent attorneys filed a lawsuit alleging Margaret Peterlin did not possess “a professional background and experience in patent or trademark law” as required under federal law.
But a federal judge threw out the case, saying the requirements as defined in 35 USC § 3(b) were too vague for the courts to determine whether Peterlin was qualified for the job.
Opponents of Peterlin didn’t have to wait much longer to be rid of her after the failure of the litigation. She announced that she would resign in the latter half of 2008.
USPTO Deputy Director’s Qualifications Backed; Lawsuit Could Return (by Steven Seidenberg, Intellectual Property Watch)
IP Expertise Of Senior USPTO Official Challenged (by Steven Seidenberg, Intellectual Property Watch)
When is a Patent Office Appointee Qualified? Judge Says Always. (by Stephen Jenei, Patent Baristas)
Deputy Director Peterlin Announces Resignation (by Kevin Noonan, Patent Docs)
Bad and Ridiculous Patents
The U.S. Patent and Trademark Office has come under criticism in recent years for giving out patents to people with frivolous ideas, which slows down the already-overburdened office.
Example 1: U.S. Patent No. 6,004,596, which protects a specific way of preparing a peanut butter and jelly sandwich.
Example 2: U.S. Patent No. 6,080,436, which is for a “bread refreshing method” more commonly known as toast.
Patent No. 5,443,036 protects a “method of exercising a cat” that involves using a laser pointer to amuse one’s feline or other “animals with the chase instinct.”
Still another questionable patent (No. 6,368,227) was given to five-year-old Steven Olson, the son of a patent attorney, for his “invention” that describes a new way to swing on a swing, which is to alternately pull on the chains so that it swings side to side rather than forward and backward.
Patent Boss Admits That The Patent Office Keeps Getting Flooded By More And More Bad Patents (Techdirt.com)
Patent Protection Gone Awry (by Hal R. Varian, New York Times)
Patent No. 6,004,596: Peanut Butter and Jelly Sandwich (by Sara Schaefer Muñoz, Wall Street Journal)
Patents; The Patent Office faces huge backlogs, extremely technical inventions, and absurd ones (by Teresa Riordan, New York Times)
RiceTec Patents Indian Rice
By granting patent rights to biotech companies for genetic modifications of traditional agricultural varieties in developing countries, the USPTO has landed itself in the middle of an international biopiracy controversy.
In 1997 the USPTO granted U.S. biotech firm RiceTec a patent that included five individual claims for three “novel” rice lines derived from Indian Basmati rice. As in other cases involving the debate between biotechnology and biodiversity and the patenting of gene technology in developing countries (see Monsanto’s patenting of other traditional Indian agricultural products and the country’s controversial adoption of the TRIPS treaty), attention turned toward issues of India’s national sovereignty and the dynamics of intellectual property in an international trade environment dominated by multinationals.
Critics accused the Indian government of negligence for allowing a situation that could threaten the country’s export business, and a global grass-roots opposition campaign mounted against RiceTec’s biopiracy of Basmati. After India formally requested that the USPTO re-examine 3 of an original 20 claims made by the company, only 5 were upheld by the agency. Among the claims dismissed were titular reference and RiceTec’s dubious assertions that it had invented breeding methods and traits (including plant height, grain length, aroma) naturally found in traditionally cultivated Basmati varieties.
Some viewed the USPTO’s revocation of a major section of the RiceTec patent as a major victory for India, but others claimed it was a superficial one, allowing the company to produce and market a genetically modified version of Basmati as “superior Basmati rice” under a different name. The decision amounts to a sanctioning of RiceTec’s claims that its modifications are not known in “prior art” and have unique genetic characteristics, and are therefore patentable. While public discussion considered whether the patent USPTO granted RiceTec adhered to current patenting norms and the effects on India’s economic export business, the question of whether and how derivative “rice lines” from traditional varieties in the developing world should be patentable by foreign corporations—under the authority of foreign government agencies—was largely ignored in mainstream debate.
Biotech companies like RiceTec, then, are given the go-ahead to profit from thousands of years of evolved, communal growing and cultivation techniques—as in the case of Basmati rice—without having to pay for them. Many critics argue that these stolen technologies cannot be protected as property of any single agent (less a foreign one) and are not patentable. Under this system, the U.S. government provides protection for RiceTec for a technology it is accused of pirating from farmers in developing economies. This same protection is not afforded to the farmers who created and developed the source product.
Wheat Biopiracy: The Real Issues the Government is Avoiding (by Vandana Shiva, ZNET)
The Basmati Battle And its Implications for Biopiracy and Trips (by Vandana Shiva, Center for Research on Globalization)
Basmati patent -- Going against the grain (by Devinder Sharma, Business Line)
RiceTec: Profiting from Derived Knowledge (by C.P. Chandrasekhar, Macroscan)
First Action Interview
The U.S. Patent and Trademark Office (USPTO) announced in 2008 a six-month pilot program called First Action Interview intended to improve the quality and speed of patents.
The test program allowed applicants to interview with examiners before the USPTO took action on the merits of an application. The pilot was limited to electrical computers, digital processing systems, and data processing.
The USPTO hoped the program would expedite the patent application procedure by improving communication and giving applicants a chance to resolve issues one-on-one early in the process.
Three years later, the USPTO decided First Action Interview was successful enough to make it a full-fledged, though not-yet-permanent program. More than one-third of the patent applications examined this way have been allowed to proceed.
Officials renewed the program’s mandate again in 2013 to keep it going for the foreseeable future.
USPTO Launches Pilot To Expedite Patents: The First Action Interview pilot program will allow certain patent applicants a chance to resolve issues one-on-one early in the process (by K.C. Jones, InformationWeek)
USPTO Extends First Action Interview Pilot Program (by Norman Van Treeck, Astronomy and Law)
USPTO Announces Full First Action Interview Pilot Program (U.S. Patent and Trademark Office)
Rule Changes
In recent years, the USPTO introduced a number of substantive rules that would have resulted in significant changes to the patent application process. Proposed changes mainly aimed at tightening application restrictions and cleaning up a bureaucratic backlog. In FY 2007, the agency received upward of 467,000 patent applications, ending with a backlog of 760,000. To catch up, it hired more new patent examiners over the next few years, bringing the total to 6,128 by late 2010 and 6,865 by April 2012. Before leaving office in 2009, then-agency head Jon Dudas put the problem in perspective by estimating that it would take 7,500 examiners to get wait times for applications down to 18 months within a few years,
Help wanted: PTO seeks 1,500 patent examiners (by Michael Neibauer, Washington Business Journal)
Continued Applications
So-called “continued applications” are those refiled, typically after a rejection. Observers cite widespread abuse of the system by patent-seekers who file continuations in an effort to expand the scope of an existing patent to cover new technologies. The agency claims it is inundated with a backlog of continued applications, which prevent it from reviewing new ones. Proposed changes in order to cut the backlog have included stricter limits for continued applications, shifting the burden of proof to the applicant, and a limit to the number of “claims” that can be filed in a particular patent application, unless accompanied by an “Examination Document.”
Critics claimed the rules would have adversely impinged on innovators’ rights. Legal challenges brought against the agency resulted in the U.S. District Court decision striking down the USPTO’s rulemaking because the Office had overstepped its statutory authority. The USPTO eventually rescinded its rules proposal. (See the Debate section.)
By 2012, though, the backlog had been significantly reduced. Lowering standards for acceptance helped to more quickly approve applications that might otherwise have been turned down. Compared to 2009, the allowance rate in 2012 was about 20% higher.
Federal Register Notices - previous and current USPTO listings
Patent-Related Notices - pre-OG, OG & Federal Register
Proposed Rule Changes to Focus the Patent Process in the 21st Century
Public comments
Trademark-related rulemaking and notices
Regulations.gov - find, review and submit comments online for all proposed Federal regulations
US Election, Patent Reform Could Decide Fate of Voided USPTO Rules (by William New, Intellectual Property Watch)
U.S. Patent and Trademark Office Reforms: Regulatory Impacts Upon Innovation and Competition (CRS Report for Congress)
Study suggests patent office lowered standards to cope with backlog (by Timothy Lee, Ars Technica)
Public Examination of Patent Applications
The USPTO decided in 2007 to try open sourcing by getting behind an online site that encouraged citizens to assess and, if necessary challenge, the validity of a few hundred selected patent applications.
The Peer-to-Patent community was largely formed as a result of the work of New York Law School Professor Beth Simone Noveck, whose Institute for Information Law and Policy established an advisory board for the creation of a Community Patent Review project.
Under the first pilot program (2007 to 2009), patent applications would be published online, and individuals (“citizen experts” in science and technology) could serve as reviewers and help the applicants with prior art (previously published information on the subject, documentation, articles).
The initial pilot program showed potential and a second one, expanding the number of applications and topics considered for inclusion, was begun in 2010.
US Patent Office to Try “Open Source” Approach (by Scott M. Fulton, III, BetaNews)
Peer Review Pilot FY 2011 (USPTO.gov)
America Invents Act Changes Patent Litigation
The America Invents Act of 2011 represented the first substantive reform of the U.S. patent system in nearly 60 years.
Among its many provisions and changes, the new law was expected to end the problem of “false marking.”
Prior to this recent patent reform, federal statute 35 U.S.C. § 292(a) allowed any individual to bring a qui tam action (that allows a private party to bring a lawsuit on behalf of the United States) based on products that are mismarked as covered by a patent. The statute provided for fines of $500 “per offense,” which could result in hundreds of millions of dollars for popular consumer products.
But thanks to the America Invents Act, only the U.S. government can now sue for statutory damages for false marking. Private parties will be entitled only to compensatory damages based on “competitive injury” flowing from the false marking.
Until this reform, the USPTO had tried for several years to issue new rules that would have helped relieve its backlog. Giant drug company GlaxoSmithKline (and others) brought suit against the USPTO in 2007 to prevent some regulations from taking effect—the companies claimed limitations dictated by the guidelines wouldn’t allow them to sufficiently protect their inventions. A federal court threw out those measures in 2008, saying that the USPTO overstepped its bounds because it didn’t have the authority to make substantive changes regarding patents and trademarks.
How The America Invents Act Will Change Patent Litigation (Parsons, Ouverson, Stark & Guest, P.A.)
Copy of the U.S. District Court Decision (pdf)
Bush Administration Speaks Against Patent Overhaul (by Grant Gross, IDG News Service)
Feds may appeal biotech patent ruling (by Amy Coombs, Sacramento Business Journal)
Administration softens position on patent reform: Damages still at issue, but push for quality praised (by Rick Merritt, EE Times)
Court rejects new USPTO rules meant to kill patent backlog (by Ryan Paul, Ars Technnica)
Court rejects Patent Office's new rules (by Diane Bartz, Reuters)
Can the USPTO set its own rules?
Responding to a backlog of patent applications, cramped resources, and alleged abuse of the system, the United States Patent and Trademark Office (USPTO) introduced a new set of rules to the patent application process in 2007. (See Suggested Reforms section.) While the agency claimed the rules would prevent abuse and allow for a more effective review process, critics countered that they would unfairly inhibit innovators seeking patents. In August 2007 an inventor sued the agency, claiming that the agency’s proposed rules regarding continued applications (those refiled after a rejection) would cause him to lose potential right to inventions that result from his original work. The case was later joined by pharmaceutical giant GlaxoSmithKline.
In the October 31, 2007, Tafas v. Dudas decision, the U.S. District Court for the Eastern District of Virginia ruled in the plaintiffs’ favor, issuing a preliminary injunction against the USPTO. Then in late March 2008, the court threw out the USPTO rules, saying it had overstepped its authority.
The central issue at hand in Tafas was whether the USPTO is legally authorized to make substantive changes to the patent application. As a federal agency with a statutory mandate, there was some discrepancy as to how far it could go in deciding the nature and limitations of its own operations. The U.S. District Court’s decision established that the agency’s rule making was substantive and not procedural, and that it had therefore overstepped its statutory authority. The decision marked a major blow for the agency, and a huge victory for patent lawyers and the biotech industry—arguably one of the biggest beneficiaries of the current system.
USPTO Director Jon Dudas filed an appeal in October 2008, and in March 2009 the Federal Circuit Court of Appeals ruled that USPTO’s continuation rules were invalid, but also reversed the District Court’s ruling that the claim limitation rules were also invalid, and it ordered additional briefings. Then, four months later, both parties requested a stay pending confirmation of Director Dudas’s replacement, David Kappos, on the possibility that he would rescind the rules at issue, thereby making the entire case moot. Indeed, that is exactly what happened in a decision made by Director Kappos in September of that year. Had the controversial rules been put into effect, they would have limited the number of patent claims per application, and the number of continuing applications that could be filed.
Con (Against USPTO Rulemaking):
The patent process for the biotech industry is inherently different from others, argue its proponents, because the discovery and development process require a different time frame: Drugs can’t be changed after an application is submitted, but information—as from clinical trials—may be added along the way to provide supporting evidence. Applications are usually approved, then, based on lab data. For competitive reasons, the biotech industry will often submit applications before the completion of clinical trials, which “prove” the drug’s curative powers and ensure its approval. In the years it takes to complete most clinical trials, competitors can move in on the discovery. Unlimited claims and continuations have allowed drug companies to protect discoveries and secure patents for a wide range of clinical applications for the same drug.
Pro (For USPTO Rulemaking):
The USPTO had maintained that the proposed changes would prevent abuses of the system and help address the massive backlog. (The agency reportedly received more than 467,000 applications in 2008, about 30% of which were continuations—ending in a backlog of about 760,000 applications. See Suggested Reforms section.) Legal scholars have argued that pharmaceutical companies take advantage of the system, submitting applications before drugs have been thoroughly researched in order to hold competitors at bay.
John Doll (2009)
Jon W. Dudas (2004-2009)
Former USPTO Director Jon Dudas Joins Foley & Lardner’s Intellectual Property Department (Foley & Lardner)
Biography (Wikipedia)
James E. Rogan (2001-2004)
Letter by Jeb Bush in Trademark Fight Followed Donation (by Thomas B. Edsall, Washington Post)
Q. Todd Dickinson
Biography (Wikipedia)
- Table of Contents
- Overview
- History
- What it Does
- Where Does the Money Go
- Controversies
- Suggested Reforms
- Comments
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