Deputy Director of USPTO Discusses Changes To Eliminate Patent Application Backlog

Ms. Theresa Stanek Rea and event organizer Dr. Laura Lloyd

of Sheldon Mak & Anderson, co-chair of the Pasadena Bar

Technology Section

Ms. Theresa Stanek Rea, Deputy Under Secretary of Commerce for Intellectual Property & Deputy Director of the United States Patent and Trademark Office (USPTO), spoke exclusively to the Technology Section of the Pasadena Bar Association on August 11, 2011.  Fifty inventors, attorneys and guests attended the luncheon event held at Noor in the Paseo Colorado in Pasadena.

Ms. Rea discussed many current and pending changes at the USPTO.  Many of these changes are directed towards eliminating the backlog of pending patent applications and increasing the quality of the resulting patents.  Currently, there are 695,086 patent applications pending in the USPTO.  Ms. Rea stated that it is Director Kappos’ belief that allowing claims in patents increases innovation and creates jobs that stimulates the economy. 

The Board of Patent Appeals and Interferences will be renamed the Patent Trial and Appeal Board.  Currently, there are 102 Administrative Patent Judges (APJ).  By the end of this year, there will be 150 APJs, and that number will double by the end of 2012. 

If the current patent reform bill before Congress passes, the number of patent examiners will increase by 1500 examiners in 2011, and another 1500 examiners will be added in 2012.  Three campuses will be added, one in Detroit, Michigan and the others in an as yet undetermined location, because the USPTO campus in Alexandria is not large enough to hold the increased number of examiners.  Along with adding physical locations, the USPTO has begun a telework initiative that allows examiners to work anywhere.  In cases where an in person interview is requested, Ms. Rea stated that Director Kappos has mandated that the examiners will be flown to the USPTO for the interview.  However, new technology currently being reviewed by the USPTO should allow for applicants and examiners to video conference with each other, cutting down on the time and expense of in person meetings. 

The USPTO is expanding the First Action Interview Pilot Program to all utility art areas.  The program allows the applicant or their representative to discuss the application with the examiner before issuance of the first office action.  Ms. Rea reported that the program is going well, and has resulted in a 33% first office action allowance rate. 

Ms. Rea also discussed the Patent Prosecution Highway (PPH) program.  In the PPH program, an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF.  Applications in the PPH result in a 91% allowance rate in the OSF.

Ms. Rea’s presentation was very informative, and it was refreshing to hear that the USPTO is taking a look at and changing their procedures to make them more efficient when necessary.  Changing the way patents are being handled from start to finish with the end result of producing high quality patents and decreasing the pendency of patent applications is great news for both patent practitioners and their clients. 

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Patent No. 8,000,000

The U.S. Patent office just issued patent number 8,000,000 to three Southern California inventors.  The patent is directed to a visual prosthesis comprising a camera for capturing a video image, a video processing unit configured to convert the video image to stimulation patterns, and a retinal stimulation system.  

Patent No. 8,000,000

It has only been five years since Patent number 7,000,000 issued.  It took thirty years to get from patent 4,000,000 to 7,000,000.  Clearly the rate at which patents are being issued is accelerating.

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California Regional Inventor’s Conference

 

The United States Patent and Trademark Office is holding a West Coast regional conference at Pasadena City College on August 12-13, 2011.  Senior Patent Office officials, successful inventors, including National Inventor Hall of Fame inductee Dr. Gary Michelson, and intellectual property experts will be on hand to provide practical advice and information for novice and seasoned inventors.

If you are interested in attending, register at:

http://www.uspto.gov/inventors/independent/eye/201108/pasadena.jsp

The price is reasonable at $120.00 and includes all sessions and presentations, morning and afternoon refreshment breaks, lunch both days and a networking reception.

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Sheldon Mak & Anderson Is Pleased To Announce...

Through personal contacts, we were able to arrange for the Deputy Commissioner of Patents to speak at a Pasadena Bar Association event about Patent Office operations.  See the below notice.

An Exclusive Pasadena Bar Association

Technology Section Event

Theresa Stanek Rea

Deputy Under Secretary of Commerce for Intellectual Property & Deputy Director of the United States Patent and Trademark Office

UPCOMING CHANGES AT THE BOARD OF PATENT APPEALS AND INTERFERENCES

Thursday, August 11, 2011 at 12:00 p.m. at

Noor, 260 E. Colorado Blvd., Pasadena, CA 91101

Cost: $25 members ~ $35 non-members

 

Please RSVP to Laura Lloyd, Ph.D., J.D., Specializing in Intellectual Property Law, Technology Section Chair

626-356-1238 or laura.lloyd@usip.com

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DO YOU HAVE IDEAS FOR IMPROVING THE OPERATION OF THE PATENT OFFICE?

There is some good news at the Patent Office.  The Commissioner, David Kappos, and his Deputy Commissioner, Teresa Rea, want to hear from the public how to improve the operation of the Patent Office.  Both of them used to work as patent attorneys, and they understand that making the job of patent practitioners easier can also help the Patent Office.

So if you have any ideas for improving the operations of the Patent Office, feel free to contact one of the attorneys at Sheldon Mak & Anderson through www.usip.com.

Our firm has already recommended changes in the current system that requires us to submit copies of documents, such as office actions and applicant responses, which the Patent Office already has in its files, all because of a questionable Federal Circuit decision.  Why not just let us identify the document rather than submitting a copy of a document that the PTO already has in its own electronic records? 

We will let you know how that recommendation turns out.

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INEQUITABLE CONDUCT – GOOD NEWS FOR PATENT OWNERS

A Federal Circuit decision has made it more difficult for patent infringers to escape liability.  When legal action is taken to enforce patent rights, the infringer often strikes back by trying to neutralize the patent itself by getting a court to declare that the patent is “unenforceable”.  Now it is more difficult for infringers to do this because evidence of a patent owner’s fraud is harder to obtain. 

If a patent is obtained unfairly, such as by failing to cite to the Patent Office an important reference, or submitting a false declaration, the patent can be held unenforceable due to inequitable conduct.  Allegations of inequitable conduct are common as a defense against a charge of patent infringement. 

It has long been the law that an alleged infringer must show by clear and convincing evidence that what the patentee did wrong both was “material” and that the patent owner withheld this “material” evidence with the specific intent to deceive the Patent Office. 

The Federal Circuit has tightened up the standard for proving inequitable conduct, to the delight of patent owners. 

In Therasense v. Becton, Dickinson the Court adopted a “but for” test for materiality.   Inequitable conduct requires that at least one claim would not have issued if the Patent Office knew of the reference or the true facts.  The one exception is if the patentee engaged in affirmative acts of egregious misconduct.

How will this play out?  Will there be fewer charges of inequitable conduct?  Will patent applicants submit fewer references to the Patent Office?  Only time will tell.  In the cases that Jeff Sheldon of our office was an expert for the alleged infringer re inequitable conduct, the “but for” test was satisfied.  So there would not have been a change there.  The change in law is most likely to make a difference in charges of inequitable conduct for such mistakes as paying small entity fees instead of large entity fees, and other similar missteps.

This may not be the end of the saga.  We understand that a petition to the Supreme Court to hear the matter has or will be filed.

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Supreme Court Rules on Standard for Inducing Patent Infringement

On May 31, 2011, the U.S. Supreme Court issued a decision affirming the results in

Global-Tech Appliances Inc. et al. v. SEB S.A., No. 10-6, 2011 WL 2119109 (U.S. May 31, 2011).  In the 8-1 decision, the Supreme Court held that inducement of infringement requires knowledge that the induced conduct itself infringes, but this knowledge element can also be met by a showing of "willful blindness".  The Court rejected the Federal Circuit Court of Appeals' prior adoption of a "deliberate indifference" standard. 

The important takeaway from this decision is when you request a right to use study for a new product or process based on another product or process, you should always inform your patent attorney about that fact.   

Trial Verdict and CAFC Ruling

Pentalpha, a subsidiary of Hong Kong based Global-Tech Appliances, was sued for infringing a deep fryer patent of French appliance maker SEB S.A.  At trial, it was found that Pentalpha studied various deep fryer models in that market, including that of SEB, before developing its own deep fryer.  Pentalpha obtained a written opinion from U.S. patent counsel that its product did not infringe any U.S. patent, but had not informed counsel that its product has some of SEB's product features.  Counsel's search did not reveal SEB's patent.  Pentalpha's witnesses testified that they did not know of the patent until SEB sued Pentalpha's customer for patent infringement in April, 1998. When SEB then also sued Pentalpha in Aug. 1999, Pentalpha argued that it could not be liable for actively inducing infringement until the April 1998 date, as it did not know about the SEB patent before that date.

The jury returned a verdict against Pentalpha for both inducing infringement and for willful infringement.  The District Court awarded almost $5 million in damages and costs.  The CAFC affirmed the verdict on appeal, ruling that the evidence is sufficient to show Pentalpha's "deliberate indifference" as to whether its product might infringe a patent, and that satisfies the state of mind element for actively inducing infringement. 

Indirect Infringement

There are generally two ways a party that did not directly infringe a U.S. patent can infringe a U.S. patent, namely inducement of infringement, and contributory infringement, 35 U.S.C. 271 (b) and (c):

35 U.S.C. 271 Infringement of patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

(c)  Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted  for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer.

Knowledge That the Induced Acts Constitute Patent Infringement 

The Supreme Court reasons that BOTH contributory infringement and inducement of infringement require that the accused KNOWS that the third party's (the direct infringer's) conduct CONSTITUTES AN INFRINGEMENT.  The Court also found that Willful Blindness is sufficient to support a finding of the requisite knowledge.

Willful Blindness, not Deliberate Indifference, Meets Knowledge Requirement

Willful blindness exists when two requirements are met:  (1) "the defendant must subjectively believe that there is a high probability that a fact exists," and (2) "the defendant must take deliberate actions to avoid learning of that fact.”  According to the Court, this combination properly gives willful blindness a narrow scope, i.e., making it harder to establish than recklessness or negligence. The Court noted that the willful blindness doctrine is well accepted in criminal law, and sees no reason it should not apply to civil patent cases. 

The Court further explained that a “willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can be said to have actually known the critical facts.”

The Court rejected the CAFC standard of "Deliberate Indifference", as it does not satisfy the knowledge required by Section 271(b).  Deliberate indifference does not require deliberate actions by the inducer to avoid knowing about the infringing nature of its activities.  

The Court concluded that the evidence on record was sufficient to support a finding of "Willful Blindness" on the part of Pentalpha. Of note is the Court's mention of what it considered important in the evidence of record, as sufficient to support the willful blindness finding, including Pentalpha's incorporation of most of the non-cosmetic features of SEB's fryer; its choice of an overseas model of SEB’s fryer to copy, and Pentalpha's failure to inform its U.S. counsel that the product "was simply a knockoff of SEB's fryer."   

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