America Invents Act - USPTO Guidance on First-Inventor-to-File - Videos & Slides

On March 15, 2013, the USPTO published videos and slides regarding the first-inventor-to-file system that help explain the extensive changes to 35 USC 102, especially with respect to the narrowing of the one-year grace period and the various activities that constitute prior art today. Understanding these topics is crucial in seeking a US patent. Here is the USPTO's guidance on the first-inventor-to-file system:

"The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system. The FITF provision includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a derived publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).

The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.

A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.

Prior public use or sale is no longer limited to the U.S.

For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.

Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.

In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.

The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications. 

 35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.

35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.

Examiner Training

• First-Inventor-to-File Follow up Video (March 2103)
• First-Inventor-to-File Follow up Video Slides (March 2013)
• First-Inventor-to-File Live Overview Training Slides (March 2013)
• First-Inventor-to-File Introductory Video (March 2013)
• First-Inventor-to-File Introductory Video Slides (March 2013)
• First-Inventor-to-File Statutory Framework

Final Rules and Guidance

• Public Forum (March 15, 2013)
  • Recorded Webcast
  • Presentation Materials
• First-Inventor-to-File Rules Correction (78 Fed. Reg. 16182, March 14, 2013)(corrected pages)
• First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013)
• First-Inventor-to-File Final Guidance (78 Fed. Reg. 11059, February 14, 2013)

Proposed Rules and Guidance

• Roundtable (September 6, 2012)
  • Recorded Webcast
  • Presentation Materials
• First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)
• First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 26, 2012)
• 18 Months Implementation Timeline

Frequently Asked Questions

• First-Inventor-to-File FAQs."

Copyright © 2013 Robert Moll. All rights reserved.

Microsoft v. Motorola - Judge Robart's FRAND Rate Setting Decision & Commentators

Last week Judge Robart of the US District Court for the Western District of Washington released Findings of Facts and Conclusions of Law setting the FRAND rate for Microsoft's infringement of two Motorola Mobility patents. The decision highlights the court's authority in setting FRAND royalty rates.

FOSS Patents and Groklaw have extensively commented on Judge Robart's 207-page findings: Mr. Mueller of FOSS Patents chortles Google lost: A closer look at the 207-page, landmark FRAND rate-setting decision in Microsoft v. Motorola. I don't share his joy, but agree Microsoft appears to have won given Motorola initially sought $4 billion and was awarded less than $1.8 million per year.

In a First, Seattle Judge Sets RAND Rate in MS v. Motorola, Groklaw denies the loss arguing that Judge Robart is in Microsoft's home court in Seattle and favors Microsoft in setting the RAND rate for a couple of Motorola SEPs, followed Motorola Mobility's methodology, and feels confident the decision will be appealed.

The detailed methodology will take time to study, but I will comment that in my observation Federal district court judges are more honorable than to simply rule in favor of the local company. And arguing the local party had the home court advantage when your company loses won't persuade many judges to reverse on appeal. A stronger argument may be the judge forced Motorola to accept rates in patent pools it hasn't joined instead of following the relevant standard's body negotiation structure.

Although I appreciate Groklaw's coverage of IP issues, its article stretches a long way in an attempt to rebut Florian Mueller stating it would take 7,000 years at this RAND rate for Google to recoup its price paid for the Motorola patents (Note the SEC papers do not break out the patents separate from the technology so talking about the price paid for the Motorola patents is fiction). Referring back to Groklaw, PJ notes: "Google isn't in the 'let's sue and get a lot of money from royalties on patents' business. That's more a Microsoft strategy. Probably because no one wants Microsoft's products. Google does make money, though, buckets of it, because people like Google's products. I believe that would indicate that Google knows how to make money. Nor did they, or anyone but Florian, ever imagine that they'd get repaid the purchase price by royalties on only two of the many patents that came with the Motorola purchase. That wasn't the plan. It was, from what I read, defensive in nature."

Sure Google makes great products and lots of money. And I agree that the fate of these two patents is not indicative of the strength of the Motorola portfolio, but no one wants Microsoft's products? Most everyone I know uses Apple, Google, and Microsoft products. Most have gotten value and had problems with each company's products at times. To say probably no one wants Microsoft products and suggest its strategy is to make up for it by licensing patents is not persuasive. How did Bill Gates gain and maintain his wealth? Was it by licensing patents or selling products? Beside this case is not about Microsoft's patent licensing; it's about Google's patent licensing effort.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - E-Office Action Delay on April 24-25

Today, the USPTO notified the e-Office Action program wasn't able to automatically send emails so was sending them manually. Still my experience with the Electronic Business Center is it has given great service.

Here's the USPTO notice describing the problem and interim remedy:

Due to a system issue, the e-Office Action process is currently experiencing a problem with sending emails to external email addresses. Automatic Email notifications have been delayed for e-Office Action participants on 4/24 and 4/25 – emails are currently being sent manually. We are working to resolve this problem and anticipate the e-Office Action program will be working again shortly. In the meantime, please go to the Outgoing Correspondence tab in Private PAIR to check if you have new correspondence from the Office. We will keep you informed with follow-up announcements. We apologize for the inconvenience.

Here are the step-by-step instructions to access your new correspondence:

1. Log into Private PAIR

2. Under the Search for Customer Number section, select the View Outgoing Correspondence radio button, select “7 days” from the “for the past” drop-down list

3. Leave the selection for Select Customer Number drop-down list at the default option, “All”

4. A list of new Office correspondence will be available for the last 7 days, including today's [sic, today]

Updated on April 26: The USPTO says e-Office Action problem is resolved.

Copyright © 2013 Robert Moll. All rights reserved.

FTC - Public Comments on Patent Assertion Entity Activities Workshop

The FTC has published 63 public comments on patent assertion entities: Public Comments of the FTC's Patent Assertion Entity Activities Workshop. Some interesting comments and lots of "patent troll slinging."

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - Public Comments on Improving Patent Applications

On January 15, 2013, the USPTO published a Request for Comments on Preparation of Patent Applications seeking public comments with regard to the Partnership for Enhancement of Quality of Software-Related Patents by March 15, 2013. Later the USPTO extended the deadline to April 15, 2013.

Public Comments on Preparation of Patent Applications

Copyright © 2013 Robert Moll. All rights reserved.

America Invents Act - Diversion of USPTO Fees Again?

Politics can be a revolving door of jargon. This year sequestration popped out the door. What's that you ask? It refers to the mandatory 5% federal budget cuts being implemented this fiscal year.

Now sequestration is at the PTO's door. In Welcome Back Fee Diversion: USPTO Likely to Begin Sending Collected Fees Back to Treasury and USPTO Budget Cuts Professor Dennis Crouch reports the USPTO says it faces "substantial budget uncertainty" in sequestration. Based on this and statements by the head of the USPTO employee union, Professor Crouch says "reading between the lines, the answer is: yes, the PTO will be cutting its spending and turning-over user-fees to the treasury rather than using that money to examine patents or trademarks."

However, it's unclear how sequestration leads to Congress diverting PTO fee to unrelated programs. 35 USC 42 of the America Invents Act (AIA) states any collected fees may only be used for expenses of the Office relating to the processing of patent applications and to cover administrative costs. It also requires if fee collections exceed the amount appropriated to the Office in a given fiscal year, the excess fees shall be deposited in the Patent and Trademark Fee Reserve Fund. Beside the language of 35 USC 42, Congress would have a tricky PR job if it diverts PTO user fees, while stating it supports the patent system. This makes fee diversion seem unlikely while the USPTO implements budget cuts.

Even if sequestration leads to fee diversion, it is unclear it will impact the operation of the USPTO. Professor Crouch notes sequestration is a miniscule part of the USPTO's budget (e.g, $2B in FY 2010 to $3B in FY 2013). Small impact or big, sequestration should not open the door to fee diversion.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO in Silicon Valley - Sunnyvale, San Jose, Santa Clara, or Mountain View?

Joshua Sisco updates on the progress of the U.S. Patent and Trademark Office in Silicon Valley: Patent Lawyers Have High Hopes for PTO's Valley Branch

Copyright © 2013 Robert Moll. All rights reserved.

Micron Suspends Hiring Students at University of Illinois To Teach Your University Can't Sue Us!

In December 2011, the University of Illinois at Urbana-Champaign (UIUC) filed a patent infringement suit against Micron. You might think this is typical news, but this case has taken a strange twist. Apparently, Micron's hiring coordinator decided that she had enough of this lawsuit (after all 16 months is a long time) and wrote the following to UIUC:

Because Micron remains a defendant in a patent infringement lawsuit that UIUC filed against Micron in Federal court in Illinois on December 5, 2011, effective immediately, Micron will no longer recruit UIUC students for open positions at any of Micron's world-wide facilities.

. . . . [T]he Micron Foundation has endowed chairs at the College of Engineering and has sponsored student scholarship and professor research. However, because UIUC's suit imposes costs and risks on Micron that are inconsistent with collaborative relationships among Micron, UIUC, and its students, Micron must regrettably indefinitely suspend its recruitment of UIUC students and likewise suspend participation in other joint activities.

Professor Dennis Crouch of Patently-O focuses on UIUC's attempt to enjoin Micron in the following article: Although "without tact", Micron's retaliatory decision to stop hiring University of Illinois Graduates is not Illegal. Professor Crouch relates Micron's behavior to his own experience: "I have a policy that I don't hire anyone who sues me. I think [sic, I] would actually take that personally. So does Micron." But the students did not sue Micron so I am uncertain how Professor Crouch's policy is relevant here. Is eliminating a career opportunity for all students at University of Illinois being used to coerce the University to drop the lawsuit? If so, it is surprising and the loss of talent and PR costs may be greater than the benefits of pushing this patent lawsuit to a settlement.

Copyright © 2013 Robert Moll. All rights reserved.

Sara Jeruss, Robin Feldman, and Thomas Ewing - The America Invents Act 500 Expanded: Effects of Patent Monetization Entities

Today, Robin Feldman, Professor of Law at UC Hastings Law School, informed me that she and co-authors, Sara Jeruss and Thomas Ewing, released an expanded study on patent monetizers: The America Invents Act 500 Expanded: Effects of Patent Monetization Entities. One interesting finding is patent monetizers filed 56% of patent infringement lawsuits in 2012. I am still reading it but want to pass it along now. Here is a reformatted version of their abstract of the study:

"Public attention is increasingly focused on patent monetization entities. Known colloquially as “patent trolls” or more neutrally as “NPEs,” these entities derive income from licensing or litigating, rather than producing a product.

In 2011, Congress directed the nonpartisan GAO to study the consequences of patent litigation by NPEs. We provided data for that study, producing and coding a random sample consisting of 100 of cases filed each year over five years from 2007-2011. 500 cases is a small sample. Thus, we have expanded that study to examine all patent litigations filed across four years, 2007-2008 and 2011-2012. This involved analyzing 13,000 cases and 30,000 patents asserted.

We also traced the transfer history of the patents. Our analysis confirms what we saw in the smaller sample: patent infringement litigation by patent monetization entities has risen dramatically. Most striking, as of 2012, litigation by patent monetization entities now represents a majority of the patent litigations filed in the United States. This is a sharp rise from 2007, when patent monetization entities filed only 24%. In addition, of the parties who filed the greatest number of patent litigations in the years we studied, 9 out of 10 are patent monetization entities, and only one is an operating company.

Among other interesting results, our analysis revealed another problem previously unrecognized. Mechanisms for notifying the public when patents have been asserted in litigation are woefully inadequate. Despite federal legislation, the system was not operative for more than two-thirds of the patents asserted."

Also see: Press release and a video of Professor Feldman summarizing the study

Copyright © 2013 Robert Moll. All rights reserved.

America Invents Act - USPTO Rules of Professional Conduct Effective May 3, 2013

Today, the Federal Register published the Rules of Professional Conduct for practice before the USPTO, which will be effective on May 3, 2013. See the Rules and related commentary (here).

The USPTO said it's: "Designed to make life easier for the more than 41,000 practitioners who interact with our agency, they are based upon the American Bar Association’s Model Rules of Professional Conduct. The ethics rules are the first major update since 1985 and reflect the rules in place in 49 states and the District of Columbia. We spent a great deal of time reaching out to stakeholders in the IP community to balance the need of applicants as well as practitioners. Additionally, I am proud to say that the latest rulemaking eliminated the annual practitioner maintenance fee."

Note if you are practicing in California, it has not adopted the Model Rules. See California's Professional Rules of Conduct here.

Copyright © 2013 Robert Moll. All rights reserved.

Microsoft Lists All Patents on the Web - The Knowledge Trap

On March 28, 2013, Brad Smith, Microsoft's GC and Executive VP, Legal and Corporate Affairs, mentioned in Enhancing Transparency: Putting Microsoft's Patents on the Web that Microsoft has published information (e.g., patent number, title, and country) regarding all Microsoft owned patents on the Web. The actual content of the patent will be available through the US patent databases (e.g., USPTO, Google Patent Search, and Free Patents Online).

From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.

We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.

We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."

Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and  increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.

Copyright © 2013 Robert Moll. All rights reserved.