The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

Sharon Barner

Sharon Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.

While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.

Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.”  The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days.  While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained.  I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded.  It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

Because of sufficient funding not linked to the current fiscal year, the United States Patent and Trademark Office will remain open for business and will continue to operate as usual through the close of business on Monday, April 18, 2011 even in the event of a government shutdown. The USPTO has enough reserves to operate for 6 business days even in the event of a government shutdown, and should a shutdown occur and continue longer than 6 days the USPTO anticipates that limited staff would still be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.  Thus, USPTO employees are not in any immediate risk of a furlough due to the ongoing fiscal year 2011 budget battle being waged between Speaker of the House John Boehner, Senate Majority Leader Harry Reid and President Barack Obama.

As you might be able to imagine, I get quite a bit of e-mail.  Much of the e-mail I get is from inventors and small businesses who are looking for representation, or from those who are seeking to ask some questions to help point them in the right direction.  Over the years the one thing that has probably amazed me most is that those who contact me for assistance or advice frequently ask the same questions and present with the same stories, although not the same inventions or technologies.  So I thought it might be worthwhile to write about the most common misconceptions in the inventor community.

Class matters.  Technology class, that is.  In some of the more rapidly growing areas of our economy, like Social Networking and Mobile Phone Apps, it looks like you can almost double patent allowance rate by making sure your patent application is classified in the more technological patent office art units.  For entrepreneurs, a faster allowance rate and earlier acquisition of patents can directly translate into better fund raising, more secure commercialization and more profitable licensing.  For large corporations, it means substantially reduced patent costs.  And with some forethought you can probably influence which class your application is placed in while at the same time creating a more comprehensive patent application.

International trademark activity recovered during 2010, according to the World Intellectual Property Organization (WIPO), which received 39,687 applications under the 85-member Madrid System for the International Registration of Trademarks (“the Madrid system”). This increase in application from 2009 to 2010 represents a 12.8% rate of growth. Growth was the largest for the Republic of Korea (+42.2%), China (+42%), Italy (+38.7%), United States of America (+29.6%), European Union (+26.9%) and Japan (+20.2%).

Washington– The United States Patent and Trademark Office (USPTO) announced today plans for the agency to begin accepting requests for prioritized examination of patent applications – allowing inventors and businesses to have their patents processed within 12 months. It currently takes nearly three years to process the average patent. The program, called Track One, launches May 4, 2011, and is part of a new Three-Track system, which will provide applicants with greater control over when their applications are examined and promote greater efficiency in the patent examination process.

USPTO Deputy Director Terry Rea

I recently had an opportunity to sit down with Terry Rea for an interview in her office on the campus of the USPTO in Alexandria, Virginia.  Among other things, in part 1 of my interview with the newly minted Deputy Director Rea we discussed Obama Administration interest in harmonizing patent laws, but standing firm on patent eligibility remaining very broad in the United States.  In part 2 of the interview we discuss the energizer bunny, known better as USPTO Director David Kappos.  We also discuss what skills she has brought from a private law practice that she feels will help her most at the Patent and Trademark Office.  Finally, we discussed initiatives the USPTO is pursuing to assist women entrepreneurs and the inevitable questions about where we stand with patent reform.

Unfortunately, due to a tight schedule we were not able to get to some of the familiar fun questions that give us a look at Terry Rea the person, such as favorite author, favorite movie and that sort of thing.  She has agreed to go back on the record, so that will be forthcoming at a date and time yet to be determined.

On March 8, 2011, the United States Senate passed S. 23, the Senate version of patent reform, by an overwhelming vote of 95 to 5.  Just about three weeks later the House Judiciary Committee unveiled the House version of patent reform.  While the framework of the House bill is largely the same as the framework of the bill that achieved overwhelming bipartisan support in the Senate, there are some non-trivial deviations that place the likelihood of achieving patent reform squarely in doubt.  The two big ticket items being kicked around as differences that threaten the entirety of patent reform are inter partes review and prior user rights.  These two issues could cause a splintering of stakeholders and place us back in the limbo we have been in for the past 6 years, which would be tragic because Congress is finally poised to adequately fund the United States Patent and Trademark Office.

The World Intellectual Property Organization (WIPO) recently announced that the number of cybersquatting cases has reached an all time high. In 2010, trademark holders filed 2,696 cybersquatting cases relating to some 4,370 domain names with the WIPO Arbitration and Mediation Center (WIPO Center) under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This spike in the number of domain name disputes caused by cybersquatting represents an increase of 28% over the 2009 level and of 16% over the previous record year, 2008.

Cybersquatting is the act of registering a popular Internet address, such as a company name or the name of a famous individual, with the intent of selling it to who the real world would perceive to be the “rightful” owner of that address or using the name to unlawfully collect traffic and do business off the name of the company or famous individual. Thanks to the Trademark Cyberpiracy Prevention Act, which was passed as part of the Consolidated Appropriations Act of 2000, cybersquatting is specifically prohibited by statute in the United States. The TCPA is codified primarily at 15 USC 1125(d) and 15 USC 1129(b). Notwithstanding, it continues to be a major problem, as you can see from the case filing statistics below.

As part of the White House’s Startup America initiative, on April 6, 2011, senior Obama Administration officials will visit St. Paul, Minnesota to meet with entrepreneurs and hear directly from them on ideas and suggestions for reducing barriers and improving regulations to build a more supportive environment for entrepreneurship and innovation.

Using the input from the roundtables and broader public participation, the Obama Administration hopes to put together a list of the best ideas to streamline and simplify unnecessary barriers to America’s entrepreneurs and innovators. The Administration says these ideas will be incorporated into the agencies’ responses to the President’s Executive Order instructing federal agencies to identify and take steps to eliminate or reduce regulations that are outdated or overly burdensome to entrepreneurs.

I hear all the time from inventors that they don’t understand why I want to know about various alternatives and optional features that could be a part of their invention. After all, the invention they have created is one of a kind excellent and no one in their right mind would want to change it one bit! OK — you keep thinking that if you like, but it is that thinking that leads inventors to get unnecessarily narrow patents.

There is nothing inherently wrong with a narrow patent, as long as you know that is what you are getting, but if there is more that could be available to you why would you ever settle for a narrow patent? Why would you settle for a patent that might not be narrow but which is more narrow than could have been obtained? If narrow is all that is available and you accept that, fine. But in most cases when inventors represent themselves or settle for the extreme discount patents sold online by dubious patent mills there is far more available than obtained, and that is a tragedy.

USPTO Deputy Director Terry Rea

On February 17, 2011, Teresa Stanek Rea was announced as the new Deputy Director at the USPTO. Rea, who is known both inside and outside the Office as “Terry,” took the mantle of U.S. government employee with the longest title; Rea’s full title being Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. I recently had an opportunity to sit down with Terry for an interview in her office on the campus of the USPTO in Alexandria, Virginia.

Terry is no stranger to the intellectual property world. She is a former President of the American Intellectual Property Law Association (AIPLA), and a long time patent practitioner.  As you will read in the interview she started her legal career in 1980 and obtained her Registration No. in 1982, which has temporarily taken away given she cannot represent others now that she is Deputy Director of the USPTO.

I found Terry to be extremely knowledgeable and very easy to talk to, which should probably read that I perceive her to be a patent geek just like me. A geek in a good way, of course. Those patent attorneys and agents reading know what I mean. We so enjoy what we do and so infrequently get to talk to anyone about it with anyone who really cares, so when we do the conversation is a blast. Terry Rea has been immersed in everything patents, from prosecution to opinions to interferences and litigation, and I get the sense that she loves patents and innovation. I thoroughly enjoyed my conversation with her.

Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood released the following statement on the introduction of the America Invents Act, H.R. 1249, in the U.S. House of Representatives:

BIO praises House Judiciary Committee Chairman Lamar Smith (R-TX) for his introduction of a comprehensive patent reform bill similar to the bill adopted by the U.S. Senate earlier this month by a nearly unanimous vote.

The America Invents Act is a clear improvement over prior House versions of patent reform legislation. We are pleased that the legislation will end, once and for all, the diversion of fees collected by the U.S. Patent and Trademark Office, allowing the agency to use all of its fees to hire more examiners, reduce the backlog of pending applications, and make other improvements to its operations. We also commend the inclusion in the bill of many other reforms that will improve the patent system and enhance patent quality, including transition to a “first-to-file” system, the elimination of other subjective elements of patent law, and a new supplemental examination proceeding for use by patent owners.

The United States Patent and Trademark Office announced today that they would be automating the filing of and decision making process for eight patent- related petition types through a  new e-Petition system.  The eight patent related petition types cover approximately one-third of the work of the Petitions Office and join two other types of patent petitions that are already decided electronically – petitions to make special on the basis of age and petitions to accept unintentionally delayed payment of the maintenance fee.

Congressman Bob Goodlatte (R-VA), Chair of House IP Subcommittee

Today the House Subcommittee on Intellectual Property, Competition and the Internet, which is a subcommittee of the House Committee on the Judiciary, held a hearing on the America Invents Act, the House version of patent reform. While the House and Senate bills are largely identical, there is one striking difference between the two, and that difference relates to prior user rights. In the United States we have a very limited prior user rights defense today that relates to business methods only, but the House bill would extend a prior user rights defense to all inventions and patents except those that created through funding by the U.S. federal government or those funded solely by Universities.  According to Congressman Jim Sensenbrenner (R-WI) the inclusion of prior user rights might just be the poison pill that kills patent reform.

Personally speaking, I am sick and tired of legislative carve outs. If prior user rights are such a great idea then have them apply across the board. Of course, prior user rights are decidedly not a good idea and the bill could never pass if there were not an exception for Universities. That should tell you something right there!  Unfortunately, the House will be urged to retain prior user rights defenses and some of the arguments in favor at the hearing are flat wrong, disingenuous and border on wanton misrepresentation.

The Innovation Alliance is disappointed that the America Invents Act as introduced today in the House of Representatives does not include some important safeguards against the potential for abuse of the post-grant review procedures at the U.S. Patent and Trademark Office (USPTO). In particular, the bill includes a weak threshold for ‘second window’ inter partes review proceedings, one that will allow virtually all challenges to proceed to a trial-like hearing before an administrative patent judge. We believe a higher threshold is needed to enable the USPTO to manage the increased workload of the new administrative review system fairly and efficiently by screening out meritless or unsubstantiated petitions.

I write often about brand building, marketing and social media for start-up companies and businesses of every size, shape and industry.   However, today I focus on the basics of marketing and brand building for attorneys. Whether you are an individual attorney or part of a rather large firm, it is imperative to remember that when preparing your marketing strategy you are not simply trying to sell your services, but are, in fact, building your own brand.

Brand building seems like a rather easy task for companies that offer tangible products, but as attorneys, all you have to sell is your time, so things can be a little bit different.  You need to also factor in that in many, if not most, instances clients feel they are represented by an individual.  Sure, the firm identity is important, but the relationship is with the individual.  Thus, for attorneys it is especially important to always keep in mind that You Are Your Brand!  As with any industry, you cannot simply create some ads, a website and some social media profile pages and expect people to come to you. Rather, clear goals need to be outlined and a strategy for reaching those goals should be mapped out.