Crowdsourcing Initiative with Stack Exchange Enables Experts to Introduce Prior Art and Improve Quality of Examination Process

WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) encourages subject-matter experts to take advantage of a new rule implemented under the Leahy-Smith America Invents Act (AIA) that—for the first time in the history of U.S. patent law—allows third parties to submit relevant materials to patent examiners in any given examination. Submission of proposed prior art helps examiners determine whether the innovation in the application is patentable. The new provision, 35 U.S.C. 122(e), was implemented by the USPTO on Sunday, Sept. 16, and applies to any pending application.

Today, efforts are already underway in the private sector to crowdsource the identification of prior art. One such initiative, utilizing input from the USPTO, is a newly launched social network known as Ask Patents by Stack Exchange, in which subject-matter experts volunteer to suggest prior art for given applications, as well as to offer their input on the proposed value of those suggestions from others.

“By introducing third party input into the examination process for the first time since the inception of our nation’s intellectual property system, we’re able to expand the scope of access to prior art in key areas like software patents. This will improve the examination process and advance the Administration’s ongoing commitment to transparency and open government,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We encourage our nation’s innovators to follow Stack Exchange’s example and assist us as we improve the examination process and resulting patent quality that will drive our economy and create jobs and exports.”

The submission by third parties of prior art—the library of published patents, applications, or other publications in a specific technology area—allows the USPTO to tap directly into the U.S. innovation community. Submissions provide a fuller, more exhaustive scope of materials for examiners to review in determining the novelty of a given application. This new mechanism will help ensure that truly novel, useful, and non-obvious innovations obtain the intellectual property protection they deserve.

Stay current with the USPTO by subscribing to receive email updates. Visit our Subscription Center at www.uspto.gov/subscribe.

For a detailed agenda please click here.

The Colorado IP Section, the Colorado IP American Inn of Court, and the Federal Circuit Bar Association invite you to join us in showing our appreciation to the visiting Judges of the U.S. Court of Appeals for the Federal Circuit. We will welcome the Judges to Denver for a special dinner at the brand new History Colorado Center. Tom Noel, “Dr. Colorado”, will be providing the keynote, and will be discussing the history of innovation in Colorado.

Very limited seating is available. All seats will be reserved on a first come, first serve basis. In order to reserve your seat, payment must be received. CO Bar IP Section and CO IP Inn of Court members have the opportunity to reserve a seat before news of the event will be released to the remainder of the Colorado Bar Association. Dress is semi-formal/suit & tie.

Federal Circuit Gala Dinner

The History Colorado Museum
1200 Broadway
Denver, CO 80203
October 2, 20126:00 to 8:30 p.m.
Doors open at 5:30 p.m.

Tickets: $150 each
(Limited student tickets will be sold at $25 each)
RSVP to Cecily Winmill
cwinmill@perkinscoie.com (with “Gala” in subject line)
1900 Sixteenth Street, Suite 1400
Denver, CO 80202
Payable to “CO IP American Inn of Court”

Thanks to our sponsors:

Akerman Senterfitt
Dorsey & Whitney
Holland & Hart
Lathrop & Gage
Merchant & Gould

Daniel Sherwinter

Denver, CO – During the first week of October, the Court of Appeals for the Federal Circuit will be in Colorado. This is an exciting and unique opportunity to attend oral arguments and a variety of other events around the Court’s first visit to Colorado to hear cases. The Federal Circuit will have oral arguments at the Arraj and Rogers Courthouses, the University of Colorado, and the University of Denver. The judges will also attend public events, including a formal dinner at the Colorado History Museum that is open to members of the IP community, and other educational and social events for local attorneys and judges.

This visit by the Federal Circuit rounds out an exciting year for the Colorado Intellectual Property community. In June, Secretary Blank and Director Kappos of the U.S. Patent and Trademark Office (USPTO) announced that Denver was selected as a satellite office location for the USPTO. That announcement came in the wake of incredible programs throughout the first half of 2012, including a road show at the University of Denver held by experts from the USPTO on the new America Invents Act; the kick-off of the new pro bono patent initiative (ProBoPat), which will help pair members of the bar with underserved inventors and entrepreneurs; selection by the USPTO of the University of Colorado School of Law to host a patent clinic that will pair law students with patent clients; the tenth annual Rocky Mountain IP Institute attended by over 400 attorneys; and visits to Denver and Boulder by Secretary Blank, Director Kappos, Bernard Night, and other key individuals from the USPTO.

Daniel Sherwinter is a Patent Attorney at Marsh Fischmann & Breyfogle LLP in Boulder, Secretary of the Colorado Bar Association IP Section, and Adjunct Professor at the University of Colorado School of Law.

On November 29, 2011, the USPTO published a “Request for Comments on Additional USPTO Satellite Patent Offices for the Nationwide Workforce Program” (“the USPTO Request”). The full text of the USPTO’s Request can be found here.

In Response to the USPTO Request, the IP Section worked closely with the offices of Denver Mayor Hancock, Governor Hickenlooper, Senator Bennet, the Metro Denver Economic Development Corporation and Accelerated Colorado (“the Coalition for a Colorado Satellite Patent Office”) to prepare and submitted Colorado’s proposal to the USPTO on January 27, 2012. Additional letters of support and the signed Joint Resolution 12-008, Concerning the State of Colorado’s support for locating a patent office in the Denver metro area, adopted by the Colorado Assembly during the 2012 legislative session were submitted to the USPTO on January 30, 2012. The IP Section would like thank everybody who submitted comments on and letters in support of a Colorado Satellite Patent Office.

Senator Bennet’s Office is currently running an on-line petition in support of a Colorado Satellite Patent Office. To-date, Senator Bennet’s office has already received 2300 electronic signatures on the petition. The IP Section encourages you to view the petition and electronically sign on if you support it.

Please let the IP Section Leadership know if you have any questions or comments. Otherwise, the Leadership will continue to keep you updated on this Initiative.

Thanks in advance!

Best,
Molly

On November 29, 2011, the USPTO published a “Request for Comments on Additional USPTO Satellite Patent Offices for the Nationwide Workforce Program” (“the USPTO Request”). The full text of the USPTO’s Request can be found here. As we indicated in our December 9, 2011 announcement, the IP Section is working closely with Colorado community leaders to prepare and submit a coordinated response from Colorado.

In connection with preparing the Colorado Response, please see the email below from Senator Bennet requesting letters of support from the IP community. In addition to providing letters of support to Senator Bennet for inclusion in the Colorado Response, the IP Section Leadership also encourages you to email your letter directly to the USPTO. The letters of support can be electronically submitted to the USPTO by e-mail at satelliteoffices@uspto.gov. In the subject line of your email, please include the following information: “Docket No. PTO-C-2011-0066; Nationwide Workforce Program.”

Dear Friend,

I am writing to you today to ask for your help to promote Colorado as the location of a new satellite office for the U.S. Patent and Trademark Office (USPTO). As you may know, I helped secure a provision in the America Invents Act that empowers the USPTO director to create three or more regional satellite offices across the country over the next three years. Since President Obama signed the America Invents Act into law, I have been working with Senator Udall to bring one of those offices to Colorado. Over the past year, we have sent letters to President Obama and USPTO Director David Kappos encouraging them to consider Colorado for a satellite office. The Colorado IP legal community has been an invaluable partner in this process. Now I need your help to make the case for Colorado in this final push.

We all know why our state would be an ideal location for a new USPTO satellite office. We are home to one of the country’s most vibrant clusters of innovation, technological development, and economic growth. Our innovation-based industries are heavily dependent on the approval of new patents for growth. Additionally, our state boasts a large number of technology workers that would be excellent long-term patent examiners. These unique qualities, among many others, make Colorado the perfect choice for a new office.

The USPTO is seeking comment on potential locations for future satellite offices. I would like you to join me in replying to the USPTO’s request. My office will be collecting letters of support to deliver to the USPTO as part of a cohesive package of responses. Please send your letter to Monisha Merchant, my Sr. Adviser for Business Affairs, atmonisha_merchant@bennet.senate.gov no later than January 17, 2012. That will ensure that we have enough time to deliver them to the USPTO by the deadline.

Thank you for partnering with me on this endeavor to bring valuable jobs and economic growth to Colorado.

Sincerely,

Michael F. Bennet
United States Senator

Send letters to:

Monisha Merchant
Sr. Adviser for Business Affairs
atmonisha_merchant@bennet.senate.gov
303-455-5995

On November 29, 2011, the USPTO published a “Request for Comments on Additional USPTO Satellite Patent Offices for the Nationwide Workforce Program” (“the USPTO Request”). The full text of the USPTO’s Request can be found at http://www.federalregister.gov/articles/2011/11/29/2011-30717/request-for-comments-on-additional-uspto-satellite-offices-for-the-nationwide-workforce-program.

The IP Section is working closely with the offices of Denver Mayor Hancock, Governor Hickenlooper, Senator Bennet, the other members of the Colorado Congressional Delegation, Colorado Office of Economic Development, Denver Metro Chamber of Commerce and others to prepare and submit a coordinated response from Colorado to the USPTO’s Request by the January 30, 2012 deadline.

In connection with preparing the Colorado Response, the Leadership of the IP Section would like to solicit any comments that yo! u may have regarding Colorado’s candidacy for a satellite patent office under the factors set forth in the USPTO’s Request. Please email all comments to cobarptocomments@hotmail.com by December 30, 2011.

By J. Gregory Whitehair, IP Resolution Co.

On September 27, 2011, Chief Judge Rader keynoted the Judicial Conference for the Eastern District of Texas in a wide ranging speech. Tapping his experience as both a Federal Circuit Judge and as a trial judge by designation in the district, Judge Rader weighed in on array of topics, from the high quality of ED Tex. juries, to the dearth of fine local restaurants. He then spoke in detail, in his own inimitable style, on six ways to improve patent litigation today:

1. Detailed discovery management and control by the courts;
2. More effective, focused summary judgment practice;
3. Efficient venue and joinder decisions by plaintiffs;
4. Better and earlier case evaluation to gauge proportionality;
5. Dependable rules of practice to create predictability; and
6. “Troll and grasshopper control.”

You can find the entire speech here. His nomination of “trolls” (in his words, any party that attempts to enforce a patent “far beyond its actual value or contribution to the prior art”) and “grasshoppers” (any entity which “refuses to license even the strongest patent at even the most reasonable rates”) as legitimate candidates for “extraordinary case” fee shifting should become a classic. He also took the opportunity to roll out the Federal Circuit Advisory Council’s new Model Order Regarding E-Discovery in Patent Cases, discussed in the Patent Litigation link.

Greg is a nationally certified mediator and arbitrator and owns IP Resolution Co., a national ADR consultancy specializing in IP and high-tech disputes. He is a registered patent attorney and a long-time Denver trial lawyer. He is active in the Colorado IP American Inn of Court and is Vice-chair of the Dispute Resolution Section of the Colorado Bar Association. He can be contacted at jgw@ipresolutionco.com.

In a bipartisan 89-9 vote, the Senate has passed H.R. 1249 without amendment. It is expected that President Obama will sign the Smith-Leahy America Invents Act into law within the next week.