(PRELIMINARILY ENJOINED ON OCTOBER 31, 2007) (PERMANENTLY ENJOINED ON APRIL 1, 2008)
A quiz for patent professionals (rev. 0.74i, 04/28/2008)
There are 36 questions. Question 36 is new for rev. 0.74. Questions concerning the Coalition for Patent Fairness start at 30. Many of the questions are based on the new Rules which were enjoined on October 31, 2007 and have not become effective (hypotheticals start at question 11). We are trying to figure out the new Rules just like you. Our answers do not constitute legal advice, and may be wrong. If you think they are, or if you have suggestions or ideas for other "interesting" questions, please e-mail us at comments27@nipra.org. Thank you.
Which of the following United States agencies is given a constitutional mandate to promote the progress of science and the useful arts?
National Endowment for the Arts (NEA)
National Science Foundation (NSF)
United States Patent and Trademark Office (USPTO)
Defense Advanced Research Projects Agency (DARPA)
In 1999, to address a shortcoming which became evident in the patent system, Congress amended 35 U.S.C. 3 to require that the following individuals have a "professional background and experience in patent or trademark law" before assuming their governmental positions:
Patent Examiners
Trademark Attorneys
Federal Judges at the Court of Appeals for the Federal Circuit
Director and Deputy Director of the United States Patent and Trademark Office
During the last 15 years, which Directors (or former Commissioners) of the United States Patent and Trademark Office have had a "professional background and experience in patent or trademark law" before coming to the USPTO, as is now required by 35 USC 3?
Bruce Lehman (1993-1998), Clinton Administration
Q. Todd Dickinson (1998-2000), Clinton Administration
James E. Rogan (2001-2003), Bush Administration
Jon W. Dudas (2004-2007), Bush Administration
What do you think having inexperienced and unqualified political appointees running the USPTO for 12 of the last 15 years has done to the operation of the agency?
The USPTO has been operating as a headless organization, unable to constructively address the problems which face it and the nation.
I think it has actually helped the patent system. The morale at the USPTO is high, examiner retention is very good, the public thinks the USPTO is doing a great job, and the customers are happy. Moreover, I just read the USPTO's own 2006 Performance and Accountability Report which says the patent allowance error rate is even lower than the target error rate of 4%. Given all this, what more could one possibly ask for?
I actually don't think it has harmed operations at all, and the present distress of the agency as described by the OIG, the GAO, the media, and the Examiner's Union is only coincidental to the unqualified leadership. Moreover, I actually haven't heard any complaints about patent quality or problems with the patent system.
Who's inexperienced? Director Dudas has brought back more funds to Alexandria than Ted Stevens has to Alaska, and if the new rules are just a bridge to nowhere, then it will have been good money spent nonetheless.
Currently Jon W. Dudas is the Director of the United States Patent and Trademark Office, and Margaret J. A. Peterlin is the Deputy Director. Between the two of them, how much "professional background and experience in patent or trademark law" do they have?
Well, Director Dudas has had several years of on the job training now, and Deputy Director Peterlin is getting her on the job training at this very moment.
Deputy Director Peterlin is a registered patent attorney
Director Dudas and Deputy Director Peterlin are both trademark attorneys.
Director Dudas and Deputy Director Peterlin both can recognize the trademarks belonging to McDonald's Corporation.
How could it be that Director Dudas and Deputy Director Peterlin were apparently both initially appointed to the Office contrary to law?
There was a misunderstanding at the Commerce Department about each one's professional background and experience.
We honestly don't know, especially since effective leadership is so vital for the effective and efficient operation of the USPTO.
No one in Washington was aware of the law, and therefore the appointments just fell through the cracks, so to speak.
Actually, Congress never intended for 35 USC 3 to be enforced. It's really just for political show.
On August 21, 2007, the USPTO announced final rules relating to continuations, claims, and prior art disclosure and analysis. These rule changes are slated to become effective on November 1, 2007 and will:
have no significant economic impact on the United States as indicated by OMB's review and approval of the final rules.
have become effective after notice and public comment as required by the APA.
be instrumental in making the USPTO more efficient in its operations.
be retroactive as to all patent applications in which a "first action on the merits" (FAOM) has not been issued before November 1, 2007, even if those applications were filed before the final rules were made public.
The final rules announced on August 21, 2007 have two major effects which the USPTO says are designed to help focus examination for those applications which place an "extensive burden" on the Office. First, applications in which an Examination Support Document (ESD) has not been filed before the first Office action on the merits will be limited to five (5) independent claims and twenty-five (25) total claims. Secondly, all applications will be limited to two (2) continuations (including CIPs and voluntary divisionals) and one (1) request for continued examination (RCE).
The National Inventors Hall of Fame (http://www.invent.org) lists fifty-three U.S. Patents that have been issued to its inductees since 1970. Of those 53 patents, what percentage would run afoul of the new claims and continuations rules (if the patents were newly pending on November 1, 2007) and would therefore have been considered to place an "extensive burden" on the Office (considering the total number of continuations and the number of claims in the patent) by the present USPTO leadership?
None, these patents represent America at its best, and the USPTO exists to process and issue patents like these. No one would ever consider them a "burden"!
9%
22%
32%
Considering again the situation with the National Inventors Hall of Fame patents, why do you think so many patents from as early as 1970 (the earliest year we analyzed) through the mid-1990s violated the new rules which the USPTO management has indicated are intended to produce "more effective and efficient examination for the typical applicant without any additional work on the part of most applicants" and to reduce the "extensive burden" of such applications on the agency?
Because the USPTO management believes that anything more than a simple patent application is, in fact, an "extensive burden". It wants to encourage and receive only simple patent applications. It does not want to receive complex patent applications, especially those which might represent the best of the American inventive spirit.
Because these Hall of Fame inventors from every major discipline and industry have been abusing the U.S. patent system (and the USPTO) for almost four decades now.
Because the patent attorneys for these inventors have been abusing the patent system (and the USPTO) for almost four decades now.
Because someone other than the USPTO has made a mistake or done something wrong, or failed to do what they should have, or otherwise erred.... It's not the USPTO's fault!
Let's leave the National Inventor Hall of Fame and turn our attention to the National Inventor of the Year Awards.
Every year since 1974, the IPO (Intellectual Property Owners Association) has nominated U.S. patentees for the National Inventor of the Year Award. Criteria used to judge the winning nomination include, among other things, the display by the inventor of the American traditions of technological leadership and Yankee ingenuity, as well as the societal benefits and commercial success of the invention.
Since 1975, there have been approximately 60 U.S. Patents which have been the bases for all the National Inventor of the Year Awards. Of these 60 patents, what percentage do you think would run afoul of the new claims and continuations rules and would have thus been considered to place an "extensive burden" on the Office (again, considering the total number of continuations and the number of claims in the patent) by the present USPTO leadership?
0%. The USPTO can recognize important patent applications before they issue and would never hinder the progress of the useful arts by issuing regulations which work against "good" patents. The USPTO management is merely trying to protect the public from the "bad" patents that it has heretofore issued.
15.8%
31.7%
63.5%
Now we'll move on to a few hypotheticals regarding the new rules. The new rules were preliminarily enjoined by the U.S. District Court (E.D.Va.) on October 31, 2007 and have NOT become effective on November 1, 2007.
Two fierce competitors, Q and R, filed patent applications in May of 2006 directed toward almost identical inventions. Each application contained 5 independent claims and 20 dependent claims, and the scope of the claims in each application overlapped with the scope of the claims in the other. The filing date of Q's application was May 9, 2006 while the filing date of R's application was May 16, 2006.
Solely based on administrative delay, R receives a FAOM on October 26, 2007, while Q receives a FAOM on November 21, 2007.
Simultaneously with the FAOM in Q's application, the Examiner declares an interference between the applications of Q and R, and five counts are established. R, having received his FAOM prior to November 1, 2007, is under no claim limitations imposed by new Rule 75(b) in his application filed on May 16, 2006 and may therefore copy the counts. Q, on the other hand, received his FAOM after November 1, 2007, and is therefore subject to the 5/25 claim threshold set by new Rule 75(b)(1) in his application filed on May 9, 2006.
Therefore, as a result of new Rule 75(b), Q cannot now copy the counts for the interference unless he divests himself of his original 25 claims. If he does not divest himself of his original 25 claims and copy the counts, he risks disclaiming priority to the invention under 37 CFR 41.202(c) and MPEP 706.03(u). Note too Q cannot file a continuation for his original 25 claims, since his claims in the continuation will likely count against the 5/25 limit in his interfering application under new Rule 75(b)(4).
The reason that the new Rules will treat these two identically situated patent applicants Q and R with such inequality is:
Q has been penalized for the administrative delay of the USPTO.