Recently in Patent FAQ Category

The full notice reads as follows:

The USPTO has become aware that a number of law firms or service provider companies located in foreign countries are sending solicitations to U.S. registered patent practitioners offering their services in connection with the preparation of patent applications to be filed in the United States. Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances. See MPEP Sec. 140 (8th ed., Rev. 5, Aug. 2006). The BIS has promulgated the Export Administration Regulations (EAR) governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730-774. Furthermore, if the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

The Commissioner for Patents has been delegated the authority for controlling exports of technology for purposes of the filing of patent applications in foreign countries. See 15 CFR 734.3(b)(1)(v) and 734.10(b) and 35 U.S.C. 184. The USPTO grants foreign filing licenses in accordance with USPTO regulations. See 37 CFR Part 5. The scope of a foreign filing license granted by the USPTO is set forth in 37 CFR 5.15. Applicants and registered patent practitioners are also advised that foreign filing licenses (for the filing of a patent application in a foreign country) do not authorize the export of any technology that is not specifically submitted to the USPTO as part of a U.S. patent application or a petition for a foreign filing license. For example, the USPTO has received short abstracts, PowerPoint[supreg] slides and even titles of inventions as the disclosure for which a foreign filing license is requested. Although the USPTO will usually process such requests, any foreign filing license granted under 37 CFR 5.15(a) or 5.15(b) on such short description may not authorize filing abroad the ultimate resulting patent applications and may not authorize any additional material added after the initial foreign filing license request. Such additional material that was not submitted to the USPTO for its review may be deemed to have altered ``the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181.'' See 35 U.S.C. 184.

The USPTO has established a Licensing and Review Web page on its Web site that includes frequently asked questions regarding foreign filing licenses and related matters. This Web page is located at http://www.uspto.gov/web/offices/pac/dapp/opla/lr/licensing_review.htm.

This notice does not change existing law or regulations. Thus, while the notice is effective on July 23, 2008, this notice does not excuse or otherwise affect the legal consequence of a failure to comply with existing law or regulations that occurred prior to July 23, 2008.

USPTO Grants First Patent Under New Accelerated Review Option
Patent Issues in 6 Months, 18 Months Sooner Than Under Regular Process

The Department of Commerce's United States Patent and Trademark Office (USPTO) announced it has issued the first patent under its accelerated examination program that began in August 2006. The patent, for a printer ink gauge, was filed with the USPTO on September 29, 2006, and was awarded to Brother International, Ltd. on March 13, 2007. Average review time for applications in the ink cartridge technology area is 25.4 months. This patent issued in 6 months, a time savings of 18 months for the patent holder.

"Accelerated examination allows any innovator in any technology to get a full patent review and decision within twelve months," noted Jon Dudas, under secretary of Commerce for Intellectual Property. In return for cutting the time to obtain a patent decision by 25-75%, the agency asks the applicant for a better application and process. Inventors who want speedy results can get them, so long as they help improve the process."

USPTO Releases New Five-Year Strategic Plan
Plan builds on record breaking progress in 2006

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.

Under Secretary Dudas Addresses U.S. Chamber Intellectual Property Summit in Beijing and Also Meets with Heads of Chinese IP Offices
Meetings further deepen U.S. cooperation with Chinese IP Offices and speech outlines what governments are doing to address exponential worldwide growth in patent applications and intellectual property theft

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