NAPP eNews™ for May 2017
Dear NAPP Members and followers,
I hope this find you well, and your practices are thriving. If you are reading this as a new member, or are simply new to the patent profession, my goal is to provide updates on current patent issues important to patent practitioners.
List of US Patents Initially Receiving 101 Rejections
NAPP is working on a “List of Patent Issued After July 2014 and after a 101 Rejection as of April 17, 2017” that mention the word “abstract” or “Alice”. 338 patents were retrieved with thanks to algorithms used by Anaqua IP, Mike Caldwell, and his son Chris Caldwell, and we plan to make the list available on the NAPP website and to all NAPP members in a short time after we have reviewed the list in order to provide helpful comments and make it easier for members to find relevant cases. For example, some patents issuing after July 2014 had 101 rejections prior to July 2014 that were based on 101 statutory double patenting; others had a 101 rejection made prior to 2014 under the old “ machine or transformation test." They came up in the search results only because the word “abstract” was used in a 102 or 103 rejection. We hope to have the list out this week with these helpful comments. As you might imagine it will take time go through the list.
US Patent Office Hiring Freeze
Perhaps most of you are aware of this. Recently a letter was sent to President Trump asking that the hiring freeze on the USPTO, as well as fee diversion away from the USPTO, be ended. The letter and a summary of the companies and individuals that signed the letter (including notably the IEEE - USA) may be accessed at the following link, which first appeared in the Patent Docs blog on April 17 in a post by Donald Zuhn: Signatories Ask President to Exempt USPTO from Hiring Freeze
Whether or not the hiring freeze is lifted (I doubt fee diversion will ever be stopped – the patent bar has argued against it for at least 30 years) I am wondering if patent practitioners have seen a slow-down in receiving office actions. I have noticed a slow-down in at least one art unit that I regularly prosecute in.
The PTAB and Moon Rocks
I read a story recently about the widow of a NASA engineer, a grandmother who had come on hard times, and who tried to make some money by selling a rice-grain-shaped moon rock embedded in a glass paperweight, and other mementos supposedly given to her husband as gifts by Neil Armstrong for her husband’s work during the Apollo program. Government agents, upon learning of this, set up a sting operation and wound up interrogating her in a Denny’s parking lot. She is now suing the government for violation of her civil rights. In some ways I thought this represents the present state of affairs of inventors toiling for years to invent something, preparing, filing, and prosecuting a patent application, being awarded with a US patent probably much narrower than they thought they would receive, and then, upon trying to sell the patent or enforce it, having those rights taken away in a PTAB post-grant proceeding. PTAB proceedings were advertised to be a faster, less expensive alternative to court trials. Conversely, there is no parallel “fast” court for patent infringement. Yes, there is the ITC, but that requires items coming into the US from outside the US; and there is no precedent in these administrative courts (PTAB or ITC) unless they specifically stamp it so. There are “patent-friendly” rocket-docket jurisdictions, for example the Eastern District of Texas, Western District of WI, and Eastern District of Virginia, but rules of patent venue will no doubt be returned soon to the way they were about 29 years ago (prior to the 1988 amendments to the general venue statute", leaving these avenues closed.
Perhaps the next best chance for patent owners will be to argue their civil and constitutional rights have been violated by the USPTO/PTAB.
Board Elections
NAPP has 9 board members. Each year 3 come up for re-election during the Annual Meeting & Conference (AMC). This is termed a “staggered board”, which many organizations have. Under NAPP Bylaws, the newly formed board meets, usually shortly after the Annual meeting during which elections are held, and the board elects the NAPP officers (president, VP, treasurer, and secretary). I have touched based with several members encouraging them to run for the board. Even if you do not win this year, by going through the process we will know you better, and you can run again.
Annual Meeting and Conference
Please consider attending the 2017 AMC in San Jose July 27-29, 2017. The theme will be “Uncharted Frontiers”, reflecting that we are under the new Trump administration, as well as 35 USC 101, 112, and the written description requirement, especially for design patents. Thanks to Lisa Adelson and her Committee for their work thus far. Speakers are being contacted and the hotel has been selected (Marriott San Jose downtown). Registration is open!
If you have non-member or former member friends, we offer a 1-day option for $295. This is meant for new practitioners to try-out NAPP, and for former members to renew interest in NAPP. This includes all meals and social activities held that day. Member students and faculty members pay $75 for the full conference, while non-member students and faculty may register for $95. For full details, including hotel, airports, cancellation policy, and more, click here: http://www.napp.org/AMCSanJose.
If you have interest in being an Annual Meeting & Conference Sponsor/Exhibitor, please go to AMC San Jose Exhibitor site.
Events Calendar
NAPP member and former VP Diane Gardner asked that we remind everyone of the NAPP Events Calendar. A sample screen shot is attached. Diane puts in a lot of work keeping this calendar up to date, so I encourage everyone to use it.
We hope you enjoy this and future editions of NAPP eNews! If you have content you would like share, such as interesting patents, inventors, and other matters of general interest, especially patenting tips, please forward them to our Executive Director John Meidl at [email protected], or the board at [email protected].
Respectfully,
Jeffrey L. Wendt
President
EVENT CALENDAR - May 2017
