Is the Presumption of Validity Dead in Substitute Claims Issued as a Result of Motions to Amend After PTAB Proceedings?

, Charles R. Macedo, Christopher Lisiewski, and Sean Reilly, September 28, 2018

A presumption of validity that is based on the assumption that government officials are presumed to have done their job is reasonable when a government office has been so tasked.  However, in the context of amended claims coming out of an inter partes review, the rationale falls apart.  No presumption should remain for such claims, at least as long as the burden in an inter partes review rests solely upon a petitioner with respect to substitute claims offered by amendment.

Rethinking Article III Standing in IPR Appeals at the Federal Circuit

, Charles R. Macedo, Chandler Sturm, and James Howard, June 11, 2018

When Congress grants a petitioner in an IPR proceeding the right to petition the government to seek specific relief, and when the government (arguably improperly) denies such relief, the denial of such relief is a sufficient injury in fact to provide the Courts with constitutional authority under Article III to hear appeal from that denial by the unsuccessful petitioner.

Survey Says In-House Counsel Double Down on Quality in Patent Programs

Inside Counsel, Stephanie Forshee, February 15, 2017

More in-house counsel are focusing on the quality of their patent programs, a new survey from IP management and analytics software company Lecorpio says.

 

The second annual Patent Program Benchmark Survey found that 42 percent of respondents, who were mostly in-house IP lawyers, track quality as a key performance indicator of how their in-house patent processes are functioning, a 12 percent increase from last year's survey.

Federal Hiring Freeze Could Hurt Patent Quality

Law360, Matthew Bultman, January 24, 2017

President Donald Trump fulfilled a campaign pledge Monday and instituted a hiring freeze in the federal workforce, a move attorneys believe has the potential to hurt the quality of patents and hamper recent efforts by the U.S. Patent and Trademark Office to reduce a patent application backlog.

What's a Patent Worth?

Inside Counsel, Bryan Wheelock, September 16, 2016

The best measure of value of the patent portfolio is still the value of the underlying inventions. Good quality patents are evidence of a good quality patent process, which in turn may indicate a good invention vetting process. Valuable patents are the product of good inventions, and good patent prosecution.

The Inspector General’s Patent Office Report Should Have Considered Quality

Public Knowledge, Charles Duan, September 8, 2016

"The granting of improper and illegal patents defeats every object and purpose of patent laws. It serves to mislead and deceive the public, and to subject them to the annoyance of unjust and invalid claims. It throws distrust and discredit upon patented property, and injures the salable value of meritorious inventions.” These words of Elisha Foote, Commissioner of the United States Patent Office in 1869, ring perfectly true almost a century and a half later. Low-quality patents, those that fail to be about new inventions and instead describe simple, basic, and obvious concepts, abound today.

New Survey Explores Perceived Quality Gaps Between the USPTO and EPO, and Identifies User Priorities

IAM Magazine, Joff Wild, September 6, 2016

The benchmarking surveys of IAM's readership that we have been publishing since 2010 consistently show the European Patent Office to offer the highest quality patents and the best service to applicants among the IP5 issuing authorities. Over the same time period, the USPTO has increasingly focused on improving its output, but no initiative seems to have had much of an impact – at least among our readers. For just as the EPO secures top spot each year, so the USPTO is stuck in third, with the Japan Patent Office the perennial occupier of second position.

Tighter Patent Rules Could Help Lower Drug Prices, Study Shows

NPR, Alison Kodjak, August 23, 2016

The U.S. could rein in rising drug prices by being more selective about giving patents to pharmaceutical companies for marginal developments, a study concludes. That's because brand-name drugs with patents that grant exclusivity account for about 72 percent of drug spending, even though they are only about 10 percent of all prescriptions dispensed, according to the study, published Tuesday in JAMA, the journal of the American Medical Association.

The U.S. Patent and Trademark Office is Committed to Improving Quality

The Washington Post, Michelle Lee, July 21, 2016

Recently the Government Accountability Office called on the U.S. Patent and Trademark Office to further improve the quality of issued patents [“Patent office gets flak as lawsuits fly,” PowerPost, July 21]. Quality is a top priority for the USPTO. That’s why I launched the Enhanced Patent Quality Initiative, one of the most comprehensive efforts in recent memory. 

GAO: Patent Office Must Define and Improve Patent Quality

Patently-O, Dennis Crouch, July 20, 2016

The Government Accountability Office (GAO) has published two new reports on Patent Office Activities along with the results of a major survey of 2,600 patent examiners.  Regarding patent quality, the GAO suggested that the USPTO’s standard of patent quality should focus solely on the basics: defining “a quality patent as one that would meet the statutory requirements for novelty and clarity, among others, and would be upheld if challenged in a lawsuit or other proceeding.”  However, patent clarity must be an important element of that definition.