USPTO Announces Pilot for Responses After Final Rejection

The United States Patent & Trademark Office (USPTO) announced a new test program for handling applicant response filed after a final rejection. Under current law, an applicant does not have the right to amend a patent application, including the claims, after a final rejection. Under current practice, an amendment submitted after final rejection will not be entered unless the Examiner determines that the amendment puts all claims in condition for allowance or places the claims in better condition for appeal. Despite the fact that an amendment after final could be entered, the fact is that almost all such amendments are not entered with the most common reason being that the amendment cannot be examined without further searching. For that reason, an applicant wanting to amend an application in order to obtain allowance from the Examiner without the delay and expense of an appeal must file a Request for Continued Examination (RCE).

The End of False-Marking Trolls

The recent passage of the America Invents Act (AIA) has taken the steam out of the recent frenzy of patent false-marking suits by eliminating any risk for leaving expired patent numbers on covered products. (See the text of 35 USC § 292 below). It is still a violation to falsely mark a product as patented, but the high standard for proving intent to deceive the public remains. Furthermore, so-called false-marking trolls cannot take advantage of the statute because only the United States or a party that has suffered "competitive injury" as a result of false marking can bring suit.

New PTO Director Must Change the Agency’s Culture

David Kappos’ biggest challenge as the new Director of the United States Patent and Trademark Office may be to change what has been called a “culture of fear” among patent examiners into a “culture of cooperation” with the patent community.

Heritage Foundation on Patent Reform

The Heritage Foundation, a leader is conservative thought, recently issued an open policy-memo to President Obama on patent reform (link below). The recurring theme of the memo is that patent reform should serve to reinforce patent rights and certainty in the strength of patent rights in general rather than weaken the entire system to address a few narrow, limited problems. Heritage proposes that all proposed reforms should be measured by “whether they are likely to increase or decrease investments in industries that rely on patent protections to foster innovation.”