Discover Top Posts Tagged with #david kappos

Intellectual property has an awkward fit in Web3 decentralization — Lawyers

IP rights will continue to be an area of conflict within Web3 and NFTs, but there’s no easy solution, lawyers told Cointelegraph.

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#Avium #Cravath #David Kappos #Decentralization #intellectual property #Nathanael Lim #Swaine & Moore LLP #web3

https://www.iam-market.com/ In this video David Kappos, IP Hall of Fame inductee and Partner at Cravath, Swaine and Moore LLP draws on key benefits found by networking with thought leaders from all parts of the IP ecosystem.

#Intellectual Property #David Kappos

Software patent booster to step down as head of patent office

#SuryaRay #Surya David Kappos overhauled the USPTO to deal with patent backlog. http://dlvr.it/2Y8Ndx @suryaray

#Law & Disorder #David Kappos #patent law #patent office #USPTO

Annual report of the Commissione

http://ping.fm/B2Fg9 Annual report of the Commissioner of Patents By United States. Patent Office

David Kappos testifies on issues related to patents and intellectual property

David Kappos is the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO.

He testified before the Subcommittee on Intellectual Property, Competition and the Internet Committee on the judiciary U.S. House of Representatives.

Reform proposals under discussion:

First-Inventor-to-File

USPTO Fee Settings and Funding

Post-grant review proceedings

Litigation-Related Issues

Kappos on First-Inventor to-File:

We view the proposed transition of the U.S. to a first-inventor-to-file system as an essential feature of any patent reform legislation. The transition will simplify the process of acquiring rights while maintaining a one-year grace period that protects innovators. It will reduce legal costs, improve fairness, objectivity and transparency, and support U.S. innovators seeking to market their products and services in other countries. While more and more commerce is being conducted on a global basis, the U.S. remains alone today among industrialized countries – indeed all countries -- in maintaining a subjective first-to-invent patent system.

Some contend that the proposed transition will only benefit large patent owners, to the disadvantage of independent inventors, and would encourage a rush to the patent office with hastily drafted patent applications. This fear is unfounded, and inconsistent with the facts.

It is clear that the current first-to-invent system almost never benefits the independent inventor, especially in the one case where the independent inventor would be expecting a benefit where he or she is the first to invent but not first to file. In the past seven years, of over three million applications filed, only 25 patents were granted to small entities that were the second inventor to file but were able to prove they were first to invent. Of those 25, only one patent was granted to an individual inventor. Thus, in the last seven years, only one independent inventor’s filing out of more than three million total patent filings would have received a different outcome under the first-inventor-to-file system.

Further, the cost of proving who was first to invent, under the current system, is prohibitive to small businesses and independent inventors. It costs an average of $400,000 to $500,000 in legal fees to engage in interference proceedings to determine who invented first. Those costs can double if a case is appealed. Most independent inventors simply do not have the resources to participate in these proceedings. So the facts demonstrate that the current system actually favors those with deep pockets and works to the disadvantage of small companies and independent inventors with limited resources. By contrast, under the legislation, a $110 provisional application will establish effective rights to an invention, securing first-inventor-to-file status with no risk of subsequent disputes.

Finally, those who oppose this provision suggest that the change will create a “race to the patent office” with hastily drafted applications, citing experience in Canada when it moved to first-inventor-to file. But Canada’s adoption of a first-inventor-to-file system gives no support to this fear, and indeed supports the opposite view – that the transition will result in no substantial change in filing behavior by patent applicants. We recently confirmed with the Canadian Intellectual Property Office (CIPO) that the reaction to the adoption of a first-inventor-to-file system in Canada in 1990 was a moderate 5% increase in filings, which was consistent with a normal annual increase.

We believe that the certainty, predictability, and reduced costs of the first-inventor-to-file system will benefit all stakeholders, both small and large entities, regardless of the area of technology.

Kappos on Post-Grant Review Proceedings

The Administration supports the establishment of a new post-grant review proceeding and the retooling of an existing post-grant reexamination procedure – inter partes reexamination. These review proceedings will serve to minimize costs and increase certainty by offering efficient and fast alternatives to litigation as a means of reviewing questions of patent validity. Such proceedings also will provide a check on patent examination, ultimately resulting in higher quality patents.

We understand that some question the ability of the USPTO to implement these procedures as proposed. However, we have considered their operational impact and we are confident they can be effectively implemented in a timely manner, and appropriately managed. Several factors will help ensure manageable implementation of these new procedures, including: the delayed effective dates, the authority to set fees and issue administrative and procedural regulations, the authority for the USPTO to retain and use all fees paid by users of the patent and trademark system (as described above) to ensure adequate resources are in place to administer the new and modified post grant processes, and the authority to impose limits on the number of inter partes reviews and post-grant reviews that may be instituted during each of the first four years after the effective date.

It is important that post-grant review proceedings be designed to prevent delay and abusive challenges but still enable valid challenges based on meritorious grounds. We believe the

provisions contained in the proposed legislation – including those covering regulatory authority, threshold, and estoppel issues – will adequately address these concerns.

Kappos on Pre-Issuance Submissions

As a quality-focused measure, we support provisions that increase the opportunity for third parties to submit potentially relevant prior art after publication of an application and before examination. The provisions require a concise description of the relevance of any submitted document along with a fee prescribed by the Director. These provisions will assist in ensuring that our examiners have before them the best available prior art for consideration.

Kappos on Patent Litigation and Related Issues

In light of a number of recent court decisions relating to assessment of damages in patent infringement cases, determination of willfulness and appropriate venue considerations, we support removal of related provisions in patent reform legislation. It is our understanding that such removal is supported by most stakeholders. We are pleased to see that the legislative process has refocused to specifically address patent quality and patent operations improvements that can be implemented by the USPTO.

Another issue raised in the House version of patent reform is whether the current prior user defense available under the statute should be expanded to all areas of technology. The House bill includes an exemption for when this defense is raised in litigation against a university to address concerns the university community has raised. Expanding the prior user defense, I believe, is pro-manufacturer, pro-small business, and, on balance, good policy. I am also aware of the university community’s concerns and would like to work with you and the university community to address their concerns. I am happy to discuss my views on this issue further.

#David Kappos #uspto #patent reform #patent #testimony #intellectual proper

The United States Patent and Trademark Office (USPTO or Office) has prepared Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos (Interim Bilski Guidance) for its personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of the recent decision by the United States Supreme Court (Supreme Court) in Bilski v. Kappos, No. 08–964 (June 28, 2010). It is intended to be used by Office personnel as a supplement to the previously issued Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 dated August 24, 2009 (Interim Instructions) and the memorandum to the Patent Examining Corps on the Supreme Court Decision in Bilski v. Kappos dated June 28, 2010. This guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance. Any member of the public may submit written comments on the Interim Bilski Guidance. The Office is especially interested in receiving comments regarding the scope and extent of the holding in Bilski.

Also see:

Interim guidance memo to Patent Examining Corps from Robert Bahr [July 2010]

#patentability #bilski #david kappos #35 USC 101

David Kappos announces changes to USPTO in light of budgetary cuts

Straight from the director's den:

Effective immediately and until further notice:

Track One of the Three-Track program, which offers expedited patent examination and was scheduled to go into effect on May 4, 2011, is postponed

The opening of the planned Nationwide Workforce satellite office in Detroit, as well as consideration of other possible satellite office locations, is postponed;

Hiring—both for new positions and backfills—is frozen;

IT projects will be scaled back;

Funding for Patent Cooperation Treaty (PCT) outsourcing will be substantially reduced;

Employee training will be reduced;

All overtime is suspended.

Overall, I can see significant consequences of these cuts at this time...

If I was China or India, I'd be smiling wide...