It is no secret that the USPTO is overwhelmed with patent applications.  Indeed, this was the motivation behind the now abandoned rules changes the office proposed recently.  Inherent in an overburdened system is the likelihood of errors, especially by omission.  Therefore, it is possible that prior art that should have been found by an overburdened examiner never comes to light and an easily invalidated patent could grant.

Even if the USPTO was not so overworked, it could not possibly find all of the prior art that may be germane to a particular application.  However, it is not like that art cannot be found.  Indeed, when parties really want to find good art they spend money doing so and usually can find the needed references.  This explains why new prior art frequently pops up during the course of litigation (recall the facts on Graham v John Deere).  Ultimately, however, while there is a presumption of validity on issued patents, if prior art is out there is can invalidate a patent.  Therefore, it is in everyone’s best interests to get all the prior art out there during the patent prosecution process

One interesting approach to solving these problems was tried recently during a two year (2007-08) pilot program conducted by the USPTO and New York Law School’s Institute for Information Law and Policy.  The so called “peer to patent program” added a peer review element to the examination procedure.  But, this was not the usual peer review of scientific journals, namely sending the matter to a few experts for their opinions.  Rather this system opened the process up to everyone who sought to contribute.

Basically the program worked in the following way.  Examiners and applicants in the computer and business methods arts could volunteer to take part in the program (I’ll leave the ironic Bilski issues out of this for now).  Tagged applications were posted on the web and whoever was interested could read the materials and discuss them with others.  Then individuals searched for prior art and posted it to the site.  Individuals were asked to annotate how the art addressed particular claims in the application.  After some time elapsed, the top ten references were forwarded to the examiner who then reviewed them and proceeded with the examination process.  In this way, the hope was that the examiner would spend less time having to search for art and would not miss obviously relevant references.

The program ended last year and is being evaluated by the USPTO.  A promising note is that the program was recently identified by the White House Open Government Initiative as one of the innovations in Open Government.  Is this a feasible system for solving some of the problems in our current way of examining patents?

The USPTO announced today that it will file a motion to dismiss in Tafas v. Kappos, the case regarding the validity of a controversial rules package proposed by the USPTO.  This effectively marks the end of the rules proposed to help make the USPTO reduce its application backlog.  In short these rules would have restricted the capacity of inventors to prosecute applications: setting limits on the number of Continuations and RCEs that applicants could file.  Also, applications would be limited as to the number of claims that could be included.  See the Patent Office press release for more information: http://www.uspto.gov/news/09_21.jsp

            As everyone well knows, the USPTO faces a gigantic backlog of patent applications (around three quarters of a million applications) that leads to significant wait time for inventors.  In view of this, USPTO director David Kappos announced some encouraging news last week in the form of changes to the examination system. 

            First, examiners are allotted an additional hour to read and review the application.  The hope being that this time will be used not in examination but in conducting substantive interviews with the inventor’s counsel early in the process.

            Second, the new guidelines make slight changes to the “count” system.  Patent examiners are required to bank a certain number of “counts” per two week period.  This quota system is a measure of productivity similar to the billable hour amongst attorneys.  The examiner receives one count for issuing the first office action and another for disposing of the case (therefore, two counts per distinct case).  However, Examiners can bank more counts for the same case if they reject and cause the inventor to seek an RCE, which is treated as if it is a new application.  This has led some to accuse the USPTO of “forcing” RCEs at the cost of time and money to inventors.   To solve this, the USPTO has decreased the value given to RCEs- to 1.75 for the first RCE and 1.5 for subsequent RCEs.  Also, the proposed change the point distribution in the counts to decrease the value of rejections.     

            Are these changes going to be effective?  Is this too little or at least a step in the right direction?    

Ride the Ducks has filed a trademark infringement suit against Bay Quackers regarding a sound mark it registered for the quacking sound its duck kazoos make (!).  For those not familiar, tourists can obtain kazoos that make ducks sounds to use while on one of these tours.  Sound marks are a type a trademark that work in roughly the same manner as normal trademarks.  For example, NBC has received a trademark for not only its visual logo (the peacock) but also its auditory logo (the chimes). Similarly, AOL has sound marked “You’ve Got Mail”; the Harlem Globetrotters have a sound mark on the whistled version of “Sweet Georgia Brown”; and even the Pillsbury Doughboy’s giggle is protected.  To obtain protection of sound marks, the USPTO requires first, that the mark be a source identifier, i.e. when a person hears the sound, she associates it with a company.  Secondly, the sound must be distinct, a property that can be either inherent to the sound or acquired through usage.  Lastly, the sound must not be functional.  Sound marks are very rare, with the USPTO database showing only about one hundred and fifty live marks.

While a lawsuit over quacking kazoos seems inherently ridiculous, it has major business ramifications, especially for the alleged infringer, Bay Quackers.  Should Ride the Ducks receive the injunction it has sought, it would receive a commercial advantage in a very competitive market.  Such an advantage, regardless of how small it may be, could be enough to tip the scales.