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USPTO publishes new set of BPAI Final Rules

By Timothy J. Maier on November 25, 2011 3:46 PM | No Comments | No TrackBacks
Due to a mounting backlog of cases to be decided before the Board of Patent Appeals and Interferences, the Patent and Trademark Office has published a new set of rules that are expected to streamline ex parte appeals before the BPAI. The modified rules include several measures intended to simplify and expedite appeals practice, including:
  • Changes to several aspects of the content of the appeal brief, such as the removal of the requirements to state the status of claims and amendments, the grounds of rejection to be reviewed, and the evidence and related appeals appendices.
  • The presumption that the appellant is appealing all rejected claims in the application, obviating the necessity for an explicit statement of the claims being appealed.
  • Removal of the requirement for the Examiner to acknowledge the appeal brief, allowing the Board to have jurisdiction over the appeal upon filing of the brief.
  • Changes to the factual situations that constitute a new ground of rejection by the Examiner.
The full content of the changes to the BPAI Final Rules may be found in the Federal Register. The rules are to go into effect on January 23, 2012.

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USPTO Announces First Allowed Application Under New Prioritized Examination (Track 1) Program

By Timothy J. Maier on November 4, 2011 10:21 AM | No Comments | No TrackBacks

Before a joint meeting of the Pauline Newman IP American Inn of Court and the Giles S. Rich American Inn of Court, Director Dave Kappos announced that the USPTO has allowed an application under the new Track 1 accelerated examination program.  The program was implemented September 26, 2011, which means the application was allowed approximately one month from the initial filing.

Track 1 is part of the three track program established under the America Invents Act and provides for accelerated examination if certain requirements are met and payment of a $4,000 fee is received.  The objective of the program is to provide a final disposition on qualifying applications within 12 months of being granted prioritized status.

Director Kappos also indicated that the number of applications accepted under Track 1 may be capped at around 10,000 in order to ensure that a final disposition is provided on each within twelve months.  Director Kappos estimated that approximately 1,200 applications have been filed under the program thus far. 

America Invents Act: Overview of the Post Grant Review System

By Timothy J. Maier on September 13, 2011 4:01 PM | No Comments | No TrackBacks
One of the more overlooked aspects of the recently passed America Invents Act is the introduction of a post grant system to the United States patent system. Once the bill is implemented, the Board of Patent Appeals and Interferences (BPAI) will become the Patent Trial and Appeal Board (PTAB) and the PTAB will be tasked to handle a new post grant system.  Under the new Post Grant Review (PGR) system, any third party may request to cancel as unpatentable one or more claims of any patent by asserting an argument regarding invalidity and providing evidence to support this argument. 

Many opponents of PGR believe this system will make it harder to acquire patents and will deter, instead of spur, innovation.  However, post grant review, if implemented properly, can provide cheaper alternatives to businesses looking to secure solid intellectual property rights, as documented in a 2006 study arguing for the introduction of a post grant review system.  Instead of acquiring a patent and fending off multiple law suits, PGR can provide a cheaper and faster alternative to litigation.  While PGR may increase some start up costs associated with contested intellectual property, it may decrease costs in the long run so long as the costs associated with PGR remain low. 

For more information about the PGR system, please keep reading.
Continue reading America Invents Act: Overview of the Post Grant Review System.

CAFC Affirms Rejection of Means-Plus-Function Claims On Different Grounds Than the PTO: In re Aoyama

By Timothy J. Maier on August 30, 2011 11:58 AM | No Comments | No TrackBacks

Yesterday the Federal Circuit issued In re Aoyama, in which a three-judge panel of Judge Newman, Judge Gajarsa, and Judge Linn affirmed the rejection of two claims which had been rejected as anticipated.  Judge Newman dissented.  The court, however, affirmed the Board of Patent Appeals and Interferences' (the Board) rejection under new grounds, finding no permissible construction of the claims, and thus, holding the two claims in question indefinite under §112 ¶2.

This ruling has the effect of broadening the court's options when reviewing decisions of the Board.  Further, this case has precedential value in defining definiteness.  However, the Court constructed the opinion fairly narrowly, drawing any conclusions back to the specifics of the case and the means-plus-functions claims at issue.  Thus, it seems the precedential value of this opinion may be limited to cases involving computer implemented means-plus-functions claims.

For more details on the court's ruling, please keep reading.

Continue reading CAFC Affirms Rejection of Means-Plus-Function Claims On Different Grounds Than the PTO: In re Aoyama.

USPTO and Taiwan Intellectual Property Office launch Patent Prosecution Highway Pilot Program

By Timothy J. Maier on August 23, 2011 2:37 PM | No Comments | No TrackBacks
On August 22, 2011, the United States Patent and Trademark Office (USPTO) and the Taiwan Intellectual Property Office (TIPO) announced the launch of a new Patent Prosecution Highway (PPH) pilot program. This program will make TIPO the nineteenth patent office to agree to implement a PPH program with the USPTO, and comes on the heels of the UK and Japan entering a PPH agreement earlier this summer. The pilot program between the USPTO and TIPO will become effective on September 1, 2011, and the trial period will last until August 31, 2012, absent any modifications based on the amount, or lack, of success and traffic.

The pilot program is intended to gauge the interest that applicants have in filing in both the United States and Taiwan. If such interest exists, this program will serve to reduce the workload of both patent offices by allowing each office to recognize the work of their counterpart.  Specifically, upon receiving an allowance from either office, an applicant may request accelerated examination of the corresponding claims at the office which has yet to allow the claims. The pilot program is intended to expedite prosecution, reduce the work loads of both patent offices, and reduce the overall costs of prosecution.  

Fast-Track Patent Processing to Begin on May 4, 2011

By Timothy J. Maier on April 15, 2011 11:30 AM | No Comments | No TrackBacks
On April 4, 2011, the USPTO announced that it plans to begin accepting requests for prioritized examination of patent applications.  Under the "Track One" program, a maximum of 10,000 applications may be fast tracked between May 4, 2011 and the end of the fiscal year 2011.  An application for Track One examination will require a request for prioritize examination with an accompanying fee of $4,000, pursuant to 37 CFR 1.102(e), in addition to the regular filing fees.  USPTO is currently working to try to offer a fifty percent discount on the filing fees of applications afforded small entity status, but nothing has been squared away yet.

  Track One represents the fastest option of the Three-Track program the USPTO is installing.  Under this program, applicants may request expedited examination via Track One, traditional examination via Track Two and delayed examination under Track Three, where the delay would be an applicant-controlled delay for up to 30 months prior to docketing, and is scheduled to become available by September 30, 2011.  The Three-Track program is scheduled to be reviewed at the end of the fiscal year in order to determine the adequacy and efficiency of the program.  This is just one of the many reforms taking place at the USPTO in the coming months,  but pales in significance to the possible reforms to the first-to-file system the USPTO currently implements.

However, this does seem to be a step in the right direction, and is one of many changes being made in an attempt to ease the burden of the backlog and keep the United States on the forefront of patent protection.  The Director of the USPTO, David Kappos echoed this sentiment, stating, "Track One provides a comprehensive, flexible patent application processing model to our nation's innovators, offering different processing options that are more responsive to the real-world needs of our applicants [and] . . . will bring the most important new products and services to market more quickly, helping to build businesses and create new jobs in America."    
The Federal Register notice announcing the implementation of Track One is now available for review.

USPTO to begin 12-month fast track examination on May 4, 2011

By Timothy J. Maier on April 6, 2011 4:55 PM | No Comments | No TrackBacks
In a press release dated April 4, 2011, the Patent and Trademark Office announced that it will commence Track One of the new Three-Track Examination Program on May 4 of this year. Track One allows applicants to request prioritized examination of their applications, with the goal of a final disposition--either allowance, abandonment or rejection--within 12 months of the filing date of the application.

To qualify for prioritized examination under Track One, applicants must submit a request for prioritized examination and a $4,000 fee along with a complete application at the time of filing. Applications must have under four independent and thirty total claims. The USPTO is also working to reduce the fee to $2,000 for small entities; however, this has not yet been implemented.

Between May 4 and September 30, 2011, the USPTO will accept a maximum of 10,000 applications for prioritized examination.

Under the Three-Track Program, applications may be given priority treatment (Track One), be examined under standard examination procedures (Track Two), or delayed for up to 30 months at the applicant's request (Track Three). Presently, under standard examination procedures, a application reaches a final disposition after an average time of about three years.

Top Patent Firms List for 2011 Released

By Timothy J. Maier on March 9, 2011 4:09 PM | No Comments | No TrackBacks
Intellectual Property Today magazine has recently released its list of the top patent firms of 2011, comprising 327 patent firms. The list ranks firms according to the number of utility patents issued in 2010 where the firm is the legal representative on the face of the patent.

At the top of the list is Oblon, Spivak, McClelland, Maier & Neustadt, with 5455 utility patents filed in 2010. Sughrue Mion and Birch, Stewart Kolasch & Birch round out the top three positions, with 3666 and 3217 issued patents, respectively.

A detailed list of the top 25 firms can be accessed at the IP Today website, which also provides a link to purchase the full 327-firm list.

Kappos on USPTO Pendency Reduction

By Timothy J. Maier on January 10, 2011 7:57 AM | No Comments | No TrackBacks

In his recent blog, David Kappos commends the USPTO technical support staff for the recent reductions in patent application pendency. On October 22, 2010, the United States Patent and Trademark Office released the final version of the USPTO 2010-2015 Strategic Plan. One goal of the plan was to reduce the average total pendency of patent applications to 20 months by 2015.

During the 2010 fiscal year, the USPTO Technology Center Technical Support Staff reached all-time records for the USPTO, in the number of documents entered, allowed patent applications verified, office actions reviewed, new patent applications processed, interviews conducted, office actions processed, notices of allowance, and final rejections.

From FY 2009 to FY 2010, the Technology Center Technical Support Staff reduced the backlog of documents to be entered from 170,000 to 15,000, the backlog of new applications to be processed from over 100,000 to 13,000, and the average amendment entry time from 34.5 days to 5.2 days.

As part of an ongoing effort in the printer rush area, the post-examination technical support team established electronic upload and automated tracking of printer rush queries. As a result, the average time from applicant's issue fee payment to issuance decreased by 15 percent from 7 weeks in FY 2009 and FY 2010 to 6 weeks in FY 2011 to-date.

USPTO Expands and Extends Green Technology Pilot Program

By Timothy J. Maier on December 30, 2010 3:40 PM | No Comments | No TrackBacks
The United States Patent and Trademark Office recently announced that it would be extending the deadline for the Green Technology Pilot Program, which was set to expire December 8th of this year.  

The Green Technology Pilot Program was designed to promote filing and prosecution of environmentally-friendly inventions. Under this program, applications involving green technology are advanced out of turn and awarded special examination priority status. This represents a departure from most of the USPTO's other accelerated examination programs, which generally require additional information about the application and prior art. To be included in the program, petitions for expedited processing need to state how the application relates to either the development of a renewable energy source or energy conservation or the reduction of greenhouse gas emissions. 

According to the USPTO, to this point, 790 petitions have been granted to green technology applicants and 94 patents have been issued. The average time between the approval of a green technology petition and the first action on an application is just 49 days, and several patent applications in the program have been issued within a year of the filing date.

Under the extended pilot program, expedited status will be granted to the first 3,000 applicants who meet the requirements of the program and file a petition for special status on or before December 31, 2011.
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