Patently-O Bits and Bytes

• Duplicate fee forms no longer required at the PTO [LINK]
• As previously announced, PTO fees will be up 5% beginning October 2. Is it worth $50 to get you application in a few days early? [LINK]
• Admission to Practice before the PTO: Franklin Pierce professor Tom Field recently petitioned the USPTO to loosen its limits on eligibility to practice patent law before the PTO – especially with respect to folks with a background in computer science [LINK]. In addition to Professor Field's suggestions, I would add that the limitations on those who can practice design patent law are silly. At least any attorney who passes the registration exam should be allowed to practice design patent law.
• CLE Requirement: Rumors are that the PTO continues to move forward with a proposal mandatory continuing education for registered patent practitioners. I applaud the move – especially if regular reading of Patently-O can count toward the requirement…
• Foreign Outsourcing: The ABA says foreign outsourcing can be ethical. [LINK]. The new ethics opinion does not address commerce department concerns regarding export restrictions. [Link]

Comments

[anonymous]

"Rumors are that the PTO continues to move forward with a proposal mandatory continuing education for registered patent practitioners. I applaud the move – especially if regular reading of Patently-O can count toward the requirement…"

If this happens, I hope that they allow for an "inactive" status of some kind.

[random task]

Can someone point me to the results of that inequittable conduct poll that Dennis posted last month?

[Dennis Crouch]

RT -- I'll post results soon.

[John Roethel]

CLE better include online conferences or, even better, listening to CD's. I can do all of my NV 12 hour CLE requirement in my shorts at home. Be nice if I could get a twofer.

[Rondom Poster]

I must admit as a non-practicing agent that I would be doing some poor sap a serious disservice if I tried prosecuting a patent for them as is. If we had an organization with any sway, they'd probably fight CLEs tooth and nail (standard union-style strategy), but the AIPLA doesn't count since attorneys come first with them. Plus we need some updating of our skills or a thinning of the ranks...

I wonder what the # of agents vs. # of attorneys is? Wonder if the PTO is trying to clip the wings of the 1000s of folks bolting from their employ?

[Allen Hoover]

Dennis, is there in fact a current requirement for submission of duplicate forms when paying a fee? The notice you referenced asserts that there has been a requirement, but (especially since EFS has become available) I don't think most people actually submit a duplicate copy, and I'm not sure where (if at all) the requirement for a separate paper was found. Not everyone submitted a duplicate copy when filing by paper. The issue may be largely moot at this point, but nonetheless, are you aware of any such requirement in the rules?

Also, to what do you refer when you mention limitations on design practice?

[Malcolm Mooney]

"As previously announced, PTO fees will be up 5% beginning October 2. Is it worth $50 to get you application in a few days early?"

Anyone who doesn't endeavor to reach this deadline is committing career suicide.

[Patent Guy]

Upon reading this story about the very unqualified Sarah Palin, I was reminded of the justifications brought up when the very unqualified Margaret Peterlin was appointed. http://www.politico.com/news/stories/0808/13001.html

[Patent Guy]

According to the USPTO roster, there are 8917 patent agents, 27811 patent attorneys, 8 registered design patent agents, and 258 with limited recognition for a total of 36994.

[GP]

Prosecuting patent applications has changed about 1 hours worth of study in the last 20 years.

If they want me to CLE 3 minutes a year, I'm in.

[Jam]

"I would add that the limitations on those who can practice design patent law are silly. At least any attorney who passes the registration exam **should** be allowed to practice design patent law."

This seems to imply that anyone with "regular" registration is not necessarily permitted to practice design patent law. Please tell me I'm wrong.

[george]

Please refresh my recollection. Hasn't there been a narrowing of the actions patent agents can perform (such as appeals)? Thanks

[Tom Field]

I didn't petition to have the standards "loosened" but rather to have a hearing on what (if anything) they should be -- especially for attorneys. The PTO lusts for substantive rule-making authority but in this instance refuses to use what it has. New standards just pop up from time to time -- and the data on computer sciences do no more than demonstrate how irrational OED can be.

[John Prosecutor]

GP says "Prosecuting patent applications has changed about 1 hours worth of study in the last 20 years." I think that you had better retire your reg no., GP.

[AllSeeingEye]

It seems like the CLE requirement would be the PTO administration's way of trying to "re-educate" the patent bar in the hopes of reducing resistance to things like "harmonization" and "new rules." My advice, stay away from the purple Kool-Aid.

[AllSeeingEye]

Patent Guy, with at least around half of those 36,000 registrations gathering dust and at least around 33% too new to be of much use, that leaves only 3 or 4 thousand of us to do any real work...maybe less.

[left coast]

can you post the professor's petition and the PTO's response, Dennis? Thanks

[AllSeeingEye]

From today's front page of the USPTO website:

"The 2007 National Medal of Technology and Innovation Laureates are: [inter alia]

* Paul Baran (Atherton, Calif.), whose invention of packet switching, provided the underlying technology that made the Internet possible.

..."

I guess Al Gore did not invent the Internet after all. Al Gore however did invent Global Warming and the concept of giving Power Point presentations using a cherry picker.

[Alan McDonald]

I cannot agree with loosening the standards for admission to the patent bar for computer science majoer.

All that will lead to is more dubious business method applications.

[M. Slonecker]

CLE...an idea whose time has never come and should be consigned to the dustbin of history. It operates under the assumption that professionals are unwilling and/or incapable of acting professionally by staying abreast of changes in the law.

5% fee increase...has the PTO shifted from using the CPI to the PPI (Petroleum Price Index)?

[Malcolm Mooney]

"Franklin Pierce professor Tom Field recently petitioned the USPTO to loosen its limits on eligibility to practice patent law before the PTO – especially with respect to folks with a background in computer science"

LOL.

[Roger Karp]

I cynically regard the PTO quest for a CLE requirement as another PTO fee generation technique. May as well just have annual USPTO bar dues.

MHO, YMMV, etc.

[Frustrated PatBar Student]

Can someone verify a typo in this MPEP section:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm

Under "II. The Basic Factual Inquiries of Graham v. John Deere Co." - elements (A) and (B) are listed as the same. This is incorrect, right?

[e6k]

A should read

Determining the scope and contents of the prior art

If you don't know this by heart already you're going to have huge problems on the pbar I would think.

[e6k]

Don't worry though, if you fail, you can always go an hero after you paid 100k to go through law school and didn't pass the bar.

[STUART]

Dennis,

Why do we registered patent attorneys [RPAs] fail to push for legislation to require patent issues in litigation to be the sole province of RPAs?

This entire business of muddling with who can/should be licensed to practice before the PTO misses the gaping judicial loophole whereby self-appointed "IP" lawyers---who are not RPAs and who lack any ability to understand science---are permitted to tell their clients [almost all corporations] that thay can "handle" patent infringement actions, patent licensing, etc.

It's all about big firms keeping the big money clients and the heck with competence.

When we let the APLA die in favor of the generalist-dominated AIPLA, we doomed ourselves to prosecution and lost the interesting (and lucrative) litigation and licensing.

Probably the only group who can stop the misleading "IP" balooney is the malpractice insurers. Since the Beltway big firms control Congress, maybe the market will do the job--which will come only after some really hurtful damage awards...

[SF]

"Why do we registered patent attorneys [RPAs] fail to push for legislation to require patent issues in litigation to be the sole province of RPAs?"

A specialized technical degree is often not necessary to do a competent job at prosecuting, much less litigating.

As for patent litigation, the key is to look for an experienced patent litigator (as opposed to a generalist) and, if necessary, an experienced patent litigator familiar with the technology. Often, an experienced patent litigator is all you need.

[Lionel Hutz]

Allseeingeye,

Can we dispense with that Gore canard? He never claimed that. Of course, without Gore, the commercial internet would not have been available to the public as early as it was.

[Lionel Hutz]

In IP litigation, it is more important to have an experienced litigator than to have one that has the type of knowledge required to pass the patent bar. Your in-house or outside IP counsel can provide support in those areas.

[AllSeeingEye]

Give me a break Hutz, I was using (and designing hardware and software for) the Internet before Gore knew how to spell packet switching. What are YOU talking about? And by experienced litigator, I suppose you mean "insufferable pr1ck?" I know at least half a dozen patent prosecutors, without even consulting my "rolodex," that would run circles around your average "experienced litigator."

[AllSeeingEye]

Al Gore's quote: "During my service in the United States Congress, I took the initiative in creating the Internet."

Browsing was happening in '84 using Mosaic my friend.

I don't think penning a few papers amounts to "creating the Internet" considering that the technology had been in use since the early 60s, and considering that the open architecture design philosophy precludes things like "ownership" or claims like "I designed (or created) it." That's like saying I designed the "air" portion of the "air interface" for mobile communication.

But that's just my opinion.

[John prosecutor]

AllSeeingEye, please read http://www.snopes.com/quotes/internet.asp

[pds]

A little off-topic, but just as good here as anywhere.

http://www.iptoday.com/news-article.asp?id=2828&type=ip
"On Thursday, Aug. 28, 2008, the last day of the Democratic National Convention in Denver, surrogates from both the McCain and Obama campaigns engaged in a lively debate about intellectual property policy issues."

One checkmark for Obama:
"Arti Rai of the Obama campaign stated her opinion that, had there been more competency at the Patent and Trademark Office, the rules at issue in Tafas would have never been proposed."

[AllSeeingEye]

The problem at the PTO is a combination of incompetence and unrestrained ego. Can you imagine that Dudas has put a talking picture of himself in the Hall of Inventors along side of former presidents? What a trainwreck.

[AllSeeingEye]

Thanks John, not sure what your link is supposed to prove... especially coming from Snopes. I guess you will be citing Snopes instead of Wikipedia in your graduate thesis. Good luck with that.

[Gore for pope]

Perhaps this is a better source for you, AllSeeing#*%: http://www.msnbc.msn.com/id/7746308/ .

And how many awards have you received from Vint Cerf for your pioneering "using (and designing hardware and software for) the Internet"? Good luck with that.

[AllSeeingEye]

My award is knowing that millions of times every day, millions of people are using my hardware and software to access the Information Superhighway that Al Gore did not invent.

[Barrista]

I kind of like the silent, achieving types that don't feel the need to brag. Notwithstanding Gore's Cerf award, and Vint Cerf's vanity license plates, they will both have to pay around three dollars for a cup of my coffee...