Robert GranthamReveal-IP LLC

2012 PIUG Annual ConferenceMay 2, 2012Denver CO.

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Three different types of actor:◦ 1. The Patent Lawyer◦ 2. The Patent Agent◦ 3. The Patent Searcher

Valuable Service

Patent searchers are stakeholders

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Background (of the commercial patent searcher)◦ Business Models◦ Washington DC◦ Generalist

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Qualitative (what does the searcher do)◦ Plain Language◦ Historical Documents◦ Not active engineering or science

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Objective (of the searchers work product)◦ Private Sector/Public Sector◦ Patentability/Infringement/Validity◦ Accelerated Examinations and Post Grant

Oppositions

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21ST Century Strategic Plan (2002)◦ Shared Responsibility◦ Mandatory IDS’s◦ Four Tracks Examination Process◦ Certified Search Authorities◦ “Locating prior at is one of the most important

aspects of the patent examining process.”

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The 2007-2012 Plan◦ Improving examiners ability to access prior art◦ Classified searching

The Accelerated Exam (2006)◦ Multi-resource search and report

HR Bill 1990 (2007)◦ Mandatory search report with analysis

America Invents Act (2011)◦ Pre-grant submissions and post-grant reviews

The 2015 Plan◦ Re-engineering the patent classification system

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The Statute

◦ 35 USC §2(d) is the law that grants the PTO the authority to determine who and how a person will be recognized as a patent practitioner. The Statute provides that one be:

“…possessed of the necessary qualifications to render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the office....”

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The Regulation◦ Under the authority of 35 USC §2(d), the PTO

promulgated 37 C.F.R. § 10.7(a)(2)(ii) which reads in part: “(a) No individual will be registered to practice before the Office unless he or she shall:(2) Establish to the satisfaction of the Director that he or she is:(ii) Possessed of the legal, scientific, and technical qualification necessary to enable him or her to render applicants for patents valuable service.”

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Considerations◦ Congress recognized “other persons” and “other

business”◦ Case Law and the agents exam ◦ “…the regulation does not specifically define

valuable service but that it must include expertise in a technical field to enable a practitioner to prepare and prosecute applications and draft specifications or claims of patent applications…”

◦ Dated Construct/Promulgation?◦ Responsibility for the search product

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1. The search function is valuable as is evidenced by the PTO’s own actions.

2. Valuable service as currently defined is limited to application writing. The omission of other business, which clearly prior art is, appends the function of prior art to the attorney.

3. Valuable service equates to credibility and credibility is conveyed by passing an exam of patent regulations, e.g. the patent agents’ exam.

4. It is within the PTO’s statutory authority to include other business and other persons into the realm of valuable service.

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Re: Certification◦ Certification vis-à-vis valuable service◦ Core problem affecting the industry◦ Explicit recognition is a necessary condition

Re: Professionalizing the field◦ Different roles ◦ Different requirements

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Un-staked stakeholders There are rules covering the searchers work

product Only a test of the rules will establish

creditability Patent quality and prior art has not

disappeared as an issue Where should the profession go

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1. The July 2002 21st Century Strategic Plan was released as a collection of position papers. See the paper designated P09 p. 1.

2. United States Patent and Trademark Office Strategic Plan 2007-2012 , p. 16

3. United States Patent and Trademark Office Strategic Plan 2015, p. 11

4. See Gager v. Ladd, 212 F. Supp. 671; Leeds v. Mosher, 732 F. Supp. 198; and Premysler v. Lehman, 71 F.3d 387.

5. See the USPTO Office of Enrollment and Discipline Final Decisions Proceeding # Tech 12, 4/30/2009, p. 7.

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Thank You Questions?

rlg@reveal-ip.com

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