The Department of Commerce’s United States Patent and Trademark Office (USPTO) released the agency’s “2007-2012 Strategic Plan,” which lays out goals and objectives to guide the agency in accomplishing its mission of fostering innovation and competitiveness by providing high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy and delivering intellectual property information worldwide.
The plan builds upon the record-breaking progress the USPTO made during fiscal year 2006 in the areas of quality production, electronic filing and processing, teleworking and hiring.
The Strategic Plan has three complementary strategic goals: (1) optimizing patent quality and timeliness; (2) optimizing trademark quality, and (3) improving intellectual property protection and enforcement domestically and abroad. The plan outlines approaches toward attaining these goals, articulates underlying challenges and opportunities, and identifies steps that can be taken toward implementation. It provides a framework for continuing to make measurable quality improvements, reducing patent application pendency, increasing the percentage of patent applications filed electronically and improving worldwide intellectual property expertise.
The five-year plan also has a management goal of achieving organizational excellence. As part of this goal, the agency will strive to become an employer of choice with a culture of high performance and to enhance organizational communication, prerequisites to achieving the strategic goals focused on the agency’s core mission.
The plan is the outcome of a collaborative process that included input from the public, stakeholders and employees. A draft Strategic Plan was released in September 2006 and comments were solicited. Through public comment, employee focus sessions and the input of the Patent Public Advisory Committee and the Trademark Public Advisory Committee, the plan’s ambitious goals are more clearly stated. Further, the final plan seeks to outline transformational strategies that balance the short-term needs of today’s applicants with strategic changes needed to deal the increasing complexity and numbers of patent applications.
The U.S. Under Secretary of Commerce for Intellectual Property (IP) and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas recently spoke at the Global Forum on Intellectual Property Rights Protection and Innovation in Beijing where he stressed the need for strong intellectual property protection and enforcement to foster innovation and wealth creation. The meeting in late March was hosted by the U.S. Chamber of Commerce and China’s Council for the Promotion of International Trade.
This was Mr. Dudas’ seventh trip to China to work on IP issues. He used the opportunity to meet with representatives of Chinese IP-related agencies to further bilateral cooperation on finding solutions to IP protection and enforcement challenges. Mr. Dudas met with Commissioner Tian Lipu of the State Intellectual Property Office (SIPO), China's Patent Office for their second heads-of-offices meeting. The USPTO and SIPO have witnessed dramatic growth in patent application filings, and last year, the two agencies signed a work plan of strategic cooperation intended to reduce the workloads of both agencies and to further cooperation. Under the work plan, the USPTO has implemented an examiner exchange program and initiated an automation expert group meeting, as well as providing training to SIPO examiners and managers on biotechnology patent examination, examiner training and certification, and quality assurance. Cooperative programs planned for the future include training of SIPO examiners at the USPTO Patent Academy, a workshop on traditional knowledge, genetic resources, and folklore, and an IP enforcement program.
PETITIONS TO MAKE SPECIAL at USPTO
The vast majority of applicants may never be able to make use of the a request for Petition to Make Special after August 26, 2006, other than petitions based on age or health.
One key feature of the new rules will be the requirement to submit the equivalent of the dreaded ESD that was first introduced in January 2006 by way of the proposed rule changes for designated claims. The dreaded ESD requirements for Petitions to Make Special after August 26, 2006 will include:
(a) certification of a preexamination search having been performed (with some very particular detailed requirements on NPL and international documents as well as disclosure of search term strategies and patent classes);
(b) an identification of the most relevant art (but no saving grace under Rule 56 for what happens if you "guess" wrong in the eyes of a future litigant about which documents are "most" relevant);
(c) the incredibly burdensome "reverse" claim mapping requirement whereby the applicant must identify where in each of the most relevant references each and every claim limitation that can be found in that reference is located (caveat practitioner for even thinking about attempting to do a reverse claim map
- the AIPLA estimates the cost at $25K+ and that doesn't even count all of the nasty gotchas that future litigants will dream up after the fact to roast the naive practitioner that attempts to venture down this thorny path, like how is it that you decided to exclude those references from your reverse claim map that showed your "missing" element(s) - even though they didn't show any other elements of your claims and are probably not even in a related field of art); and
(d) just to make sure that you have second, third and fourth thoughts before considering this path, the PTO:
(i) limits you to 3 independent claims and a total of 20 claims,
(ii) requires you to agree not to separately assert the patentability of any dependent claim in an appeal and to agree to restrictions without traverse,
(iii) prevents addition of any new claims or introduction of any amendments that would introduce elements that were not expressly covered in the preexamination search (unless you provided an updated search, of course),
(iv) provide a claim support map for support in the spec for all elements of the claims,
(v) identify references for which the CREATE act may be used to disqualify the reference as prior art, and
(vi) submit all papers electronically.
The process does enable you to have interviews with the Examiner before a first Office Action, but limits responses to a one month non-extendible deadline. There is no indication of how the currently imposed double eyes review process would be implemented as part of this procedure.
Oh, if you should mess up on your response and add a claim to total more than 3/20, or present claims not encompassed by your preexamination search report or directed to a non-elected invention, the Office will consider your response non-responsive and the case will go abandoned because you haven't met the one-month non-extendible deadline.
My only advice to a practitioner considering a Petition to Make Special after August 26, 2006 will be to make sure that his/her malpractice insurance premiums are paid up!
We (www.postgrant.com and www.maierandmaier.com) are interested in hearing any feedback regarding accelerated examination procedures or petitions to make special procedures that may exist in China, India, Korea, Europe, Canada, Australia etc so that we may compare and contrast them. Likewise, are interested in comments regarding patent reform and post grant opposition procedure.
www.maierandmaier.com
www.postgrant.com
India’s Pre-Grant Opposition Leads to TRIPs Compliance Suit
As Congress considers establishing post-grant opposition in the United States and the USPTO aims to pilot the pre-examination Community Patent Review Project as a way to conduct “open examinations” and to get pertinent prior art into the hands of those who need it the most, namely, patent examiners, a few other countries such as India have pre-grant opposition proceedings. In India, pre-grant oppositions also function to provide prior art to patent examiners, but go well beyond that as they are opposition proceedings.
Most recently in the news, many multinational pioneer pharmaceutical companies have had their patent applications opposed by Indian generic pharmaceutical companies and by advocacy groups. Some have criticized this as merely a delay tactic. We here at Maier & Maier are inclined to agree and that is why we support post-grant proceedings which are by their nature unable to delay the prosecution of a patent (India also has post-grant opposition).
The recent pre-grant oppositions of applications on pharmaceuticals are the result of India’s move towards TRIPs compliance in 2005, which was a condition of India joining the WTO. Simply put, TRIPs requires that pharmaceutical substances be patentable. From 1995 to 2005, India was also required to maintain a mailbox for receiving pharmaceutical and agricultural chemical patents applications that were published in 2005 and are now subject to examination. Because India is a leading producer of generic drugs, it was no surprise that a few thousand “mailbox” applications were filed by pioneer pharmaceutical companies.
For example, Novartis was not granted a patent on a 1998 application for its cancer drug, Gliveec / Glivec, after it was opposed by the Cancer Patients Aid Association. In response, during May 2006, Novartis filed two suits, one challenging the rejection and, more importantly, one challenging Section 3(d) of the Indian Patents Act, on which the application was rejected, as not being compliant with TRIPS. Recently, a panel appointed by the Indian Ministry of Commerce comprised of IP specialists has concluded that Section 3(d) does not comply with TRIPs (report at http://www.ipindia.nic.in/ipr/patent/mashelkar_committee_report.doc ). Section 3(d) is an exception to patentability that excludes “the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of the substance, the mere discovery of any new property or new use for a known substance, and the mere use of a known process, machine or apparatus – unless the process results in a new product or employs at least one new reactant.”
The next hearing before the Chennai High Court in the Novartis case is scheduled for today, January 29, 2007. We here at Maier & Maier are interested in your thoughts on pre-grant opposition, Section 3(d) and the Novartis case as well as any other comments on Indian patent law.
