12/12/2018

ROBERT FREDERICK WHITEHEAD 1920-1921

The son of a successful farmer and lawyer, Mr. Whitehead was born February 28, 1869, near Lovingston, Virginia. He attended the public schools and the University of Virginia, having by the year 1893 acquired a number of degrees at the latter institution. He taught school for a time, and then specialized in mathematics for two years at Johns Hopkins University.

12/10/2018

Time for a Midlife Makeover for the PCT
Will pending Trade Agreements give the necessary Push?

Markus Nolff

Will the patent provisions of the Trans-Pacific Partnership agreement (that are also incorporated into the Comprehensive and Progressive Agreement for Trans-Pacific Partnership agreement and which very likely will also part of any renegotiated NAFTA) which, inter alia, would further harmonize some areas of patent law and impose additional patentability & patent acquisition requirements, including cooperation and work sharing between patent offices, give the necessary push to expand the role and scope of PCT’s international phase, for example, by merging chapter I & II and introducing an International Certificate of Patentability.

12/03/2018

Tribal Sovereign Immunity at the Patent and Trademark Office

Brandon Andersen

The America Invents Act was at least partially designed to weed out invalid patents through administrative proceedings. One such proceeding, inter partes review, is popular among challengers but criticized by patent holders for its high invalidation rate. Some disgruntled patent holders have discovered an old doctrine as a potential new tool to avoid inter partes review: tribal sovereign immunity.

As sovereigns, Indian tribes are immune from suit unless Congress abrogates their immunity or a tribe waives it. If that immunity extends to inter partes review, a non-sovereign can avoid review by assigning his patent to an Indian tribe willing to license the patent back to him (for a fee). While beneficial to patent owners, this use of tribal sovereign immunity undermines the purpose of the America Invents Act, and Congress may respond by restricting tribes’ immunity.

11/28/2018

JAMES T. NEWTON 1917-1920

The chaotic condition of the rest of the world was reflected in the affairs of the Patent Office at the time when Mr. Newton became Commissioner. The personnel seemed to be leaving "en masse," some going directly into the military service, and others seeking transfers to the more remunerative positions in the war bureaus. Civil service registers were exhausted. For many months it became necessary to go into the highways and the byways to induce people to assume employment in the Patent Office at a salary less than the market price, so that the Office could somehow function, and in some way deliver service. This was the situation that confronted Commissioner Newton, a situation that arose from uncontrollable causes, external to the Office, and was precipitated without notice. It was his duty to make the best of this critical circumstance, and he did it with courage, unfailing purpose, and with exceptional poise and good nature.

11/26/2018

Should You Appeal? A Look at Success Rates Before the PTAB on an Individual Rejection Basis

Ryan Pool

Imagine an applicant faced with a final Office Action containing rejections with which they do not agree. They consider appealing the rejections, but only want to proceed to appeal if they feel they have a better than average chance of winning. Their application faces a rejection under 35 USC § 112 for Enablement and for lacking Written Description. Their application is also rejected under 35 USC § 102 and 103. This should be relatively easy to imagine as it is commonplace. From October 2016-October 2017, the Patent Trial and Appeal Board (PTAB) reported an intake of 11,796 appeals.

Deciding whether to appeal is a rather consequential decision, both in time (pendency remains around 18-24 months on average before a decision is rendered) and in money (government fees alone are almost $3,000 for large entities). Although every case is different and favorable facts make for favorable decisions, it remains helpful and informative to have a correct statistical perspective regarding likely outcomes before the PTAB.

11/21/2018

THOMAS EWING 1913-1917

The name Ewing has been connected with public life and governmental functions over a considerable period of years. Thomas Ewing, Commissioner Ewing's grandfather, was the first Secretary of the Interior Department, having been appointed by President Zachary Taylor in 1849 when the Department was formed. Secretary Ewing was an eminent lawyer and was twice in the Senate from Ohio, having been in that body at the time the Patent Act of 1836 was under consideration and when it was passed, and there is a family tradition that he was active in the preparation of the bill. Secretary Ewing was also Secretary of the Treasury during the administration of President William Henry Harrison.

11/19/2018

Three New Metrics for Patent Examiner Activity: Office Actions per Grant Ratio (OGR), Office Actions per Disposal Ratio (ODR), and Grant to Examiner Ratio (GER)

Shine Sean Tu

The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance / (total allowances + total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions / Total # of Grants), this study’s new metric for measuring patent examiner activity, captures not only pending cases, but also helps decipher which examiners are spending their time allowing cases or writing Office Actions. This new metric indirectly helps determine if specific examiners are prolonging prosecution compared with peers within their Art Unit, Workgroup and Technology Center. Using the OGR score, this study elucidates how examiners in certain art units and Workgroups behave- specifically, which examiners in certain art units are more likely to write office actions or allow cases. To calculate the OGR, this study captures 8,537,660 office actions, 2,812,177 granted patents and 1,255,552 abandonments from 9,535 examiners from January 1, 2001 to June 8, 2017.

11/15/2018

EDWARD BRUCE MOORE 1907-1913

Edward Bruce Moore was born at North Anson, Maine, December 25, 1851. At the age of fourteen he came to Washington, serving as a page in the Senate. In 1876 he became interested in newspaper work, becoming editor of the Washington Daily News and the Washington Daily Telegraph. He was admitted to the bar in 1881, and in 1883 entered the Patent Office as an Assistant Examiner in Division 1.

© 2000-2014, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy