Recently in USPTO News Category

(i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO's rulemaking authority and

(ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency's rulemaking authority.

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.

The Patent Prosecution Highway is a program by the USPTO that enables an applicant, who received a ruling from a foreign patent office that at least one claim in an application is patentable, to request that the foreign office fast-track examination of corresponding claims in corresponding applications. According to the USPTO, the PPH enables a patent office to benefit from work previously done by the other office, and results in applicants obtaining corresponding patents faster and more efficiently.

 The USPTO has been involved in a pilot PPH program with the Japanese Patent Office since summer of 2006 and with the UK Intellectual Property Office since September 2007. On January 3, 2008, the USPTO and the JPO had announced that the PPH program will now be implemented on a full-time basis. Additionally, the USPTO launched two more pilot PPH programs with the Korean and Canadian Intellectual Property Offices. The pilot programs are set to last for one year, though they may be extended for up to year or cancelled at any point, depending on activity volume and other factors.

On December 11th, 2007, the PTO's proposed changes to the Information Disclosure Statement rules have been approved by the US Office of Management and Budget and thus passed the last regulatory review prior to implementation of the rules.

An Information Disclosure Statement is a document through which an applicant can fulfill (in part) the duty of disclosure under Rule 56 of Patent Office regulations. Using an IDS, an applicant can fulfill the Rule 56 duty of disclosure by submitting copies of prior art references and any other material relevant to patentability. Under the current rules, there is no limit on the number of references that can be filed with an IDS, and, if an IDS is filed after the first action on the merits, the PTO charges a late filing fee.

Under the new rules, the PTO will no longer charge a fee for late filing; however, applicants will now only be allowed to submit no more than 20 references without explanation. Those applicants who submit a greater number of references or "very long" documents will be required to review their submissions and provide information as to their materiality and as to why the application is not preempted by the references.

Effectively, this aspect of the new rules will shift the burden of examination to the applicant, making IDS submission more costly and burdensome. Other changes to the IDS rules will be discussed in a future post.

Earlier this month, attorneys for Dr. Tafas in the ongoing battle regarding the new USPTO claims and continuations rules had filed notices of deposition for several USPTO officials. John Dudas, Undersecretary of Commerce, John Doll, Commissioner of Patents, John Love, Deputy Commissioner for Patent Examination Policy, and Robert Bahr, Senior Patent Attorney are scheduled to be deposed between the 7th and 14th of December, 2007. However, on the 27th of November, the parties will return to court to argue whether these depositions should, in fact, take place.

 Additionally, the plaintiffs seek to compel document production by the USPTO. The Patent Office has withheld certain documents on the basis of privilege; however, the USPTO did not submit a privilege log, as every litigant is required to do. Both plaintiffs have prepared memoranda seeking to compel production of this privilege log, as required by FRCP 26(b)(5)(A).

On October 10, 2007, the USPTO published a notice clarifying the provisions of 37 CFR 1.78 relating to continuing applications and patentably indistinct claims. The notice relaxes some requirements for implementing the new patent rules on continuing applications and claims.

Applicants having applications filed prior to November 1, 2007 are no longer required to identify any other applications not having the same filing date as the subject application, even if the other applications have a filing date within two months of the subject application. For continuation-in-part applications, the requirement that the applicant must identify the claim or claims in the continuation-in-part application for which the subject matter is disclosed has been delayed or waived. Under the current rules, applicants who filed who filed more than two continuation or continuation-in-part applications of an initial application before August 21, 2007, may "one more" continuing application on or after November 1, 2007, without a petition and showing, if there is no other application filed on or after August 21, 2007, that claims the benefit of the prior-filed applications. Under the notice, continuing applications will no longer be taken into account for purposes of determining whether there is another application filed on or after August 21, 2007 that also claims the benefit of the prior-filed applications. Finally, the term "examined" as used in 37 CFR 1.78(d)(1)(ii)(B) has been clarified as not including the international phase examination under PCT Article 31.

On August 21, 2007, the United States Patent and Trademark Offices (USPTO) published final rules concerning claim examination and continuation practice, which may affect U.S. patent prosecution practice, depending on the circumstances of one's portfolio. While the rules become effective on November 1, 2007, certain patent prosecution actions taken prior to this date May affect the options available after November 1, 2007.

Under the new rules, applicants may file only one Request for Continued Examination (RCE) and two continuation or continuation-in-part applications in a single application family; a petition justifying the filing will be necessary if the number of the above applications exceeds the limits.  If an application family already contains two continuation applications as of August 21, 2007, one more continuation application may be filed. However, if an application family contains one or more RCEs prior to November 1, 2007, further RCEs filed after that date will require a petition. Divisional applications that claim only unexamined, non-elected inventions may be filed if a prior application was subject to a restriction requirement.

The number of claims that will be examined without an Examination Support Document will likewise be limited to five independent claims and twenty-five total claims. This limit will apply to any patent application that has not received a First Office Action on the Merits (FAOM) before November 1, 2007. Applications not in compliance with the new limits May be subject to a reduction in patent term adjustment
If an application claims more than one invention, and the applicant files a Suggested Requirement for Restriction (SRR) prior to an FAOM or restriction requirement, the claim limit may be exceeded. However, the amount of elected claims in the SRR must still be below the 5/25 threshold.

Multiple applications may count against the 5/25 claim limit in certain circumstances; for example, the claims of commonly owned copending applications having a patentably indistinct claim will be counted towards the limit. For applications filed on or after November 1, 2007, the new rules will require applicants to identify commonly owned applications or patents with at least one inventor in common and with filing or claimed priority dates within two months of each other. For applications filed prior to November 1, 2007, the identification will have to be made by February 1, 2008.

The new rules affect various other prosecution practices and strategies, including, but not limited to preparation of new applications, reexamination, deferring examination, reissue and the use of prosecution practices that promote efficiency. Any future action in a patent family should consider the effects of the new rules.