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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: Signed Into Law Today

By Timothy J. Maier on September 16, 2011 3:45 PM | No Comments | No TrackBacks
Today, at Thomas Jefferson High School for Science and Technology, President Obama signed the Smith-Leahy America Invents Act (Previously H.R. 1249) into law today.  Obama signed the bill into law in front of a bipartisan group of congressman, including Senator Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX).  When Obama signed the bill, a number of provisions of the bill became effective immediately:

Best Mode: Effective immediately, best mode will no longer be a valid basis for finding a patent invalid or unenforceable.  However, the best mode requirement remains in section 112 and, thus, a patent application may still be rejected for failure to disclose the best mode.

Micro Entities:  All micro entities will receive a 75% reduction in fees.  Micro entities must: (1) qualify as small entities, (2) not been an inventor on 4 prior applications, (3) have a gross income exceeding three times the median household income for that previous calendar year and (4) not assigned the application to a person or entity who has exceeded the gross income level of part (3).  Please see section 10, at pages 89-90 for the exact text.

New Statutory Fee Schedule: The new fee schedule of section 11 is now implemented.  Please consult section 11 of the act for, among other fees, the new filing, examination, issue and maintenance fees.  Also, this site does a great job of laying out the fees and how they will be affected by the surcharge to be implemented in 10 days.  The office also now has the authority to adjust fees for recovering the costs for fees established, authorized or charged under Title 35.

Changes to Venue and Jurisdiction: The default venue for actions brought under 28 USC 32, 145, 146, 154(b)(4)(A) and 293 or 15 USC 1071(b)(4) is now the Eastern District of Virginia (instead of the District Court of D.C., as it was previously).  Further, 28 USC 1338 is amended to deny state courts jurisdiction over actions arising under Acts of Congress relating to patents, plant variety protection and copyrights.

False Marking:Effective immediately, only individuals who have suffered a competitive injury as the result of false marking may bring a qui tam suit.  Further, virtual markings are now explicitly covered by the false marking statutes.  These provisions apply to all cases pending or commenced on or after September 16, 2011.

Bans on Patentability: Any claims directed to or encompassing a "human organism" are now barred.  Also, any tax strategy patents related to reducing, deferring or avoiding tax liability are also barred.


More law is scheduled to be implemented in 10 days, on September 26, 2011, so stay tuned for more updates.

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.  

USPTO issues 8,000,000th patent

By Timothy J. Maier on August 17, 2011 9:02 AM | No Comments | No TrackBacks
United States Patent #8,000,000 issued on August 16th, 2011. The patent is directed towards a "visual prosthesis" that is configured to provide neural stimulation to a user's retina for creating artificial vision. The patent is assigned to Second Sight Medical Products.

The eight-millionth patent issued only five years after U.S. Patent #7,000,000. Patent #6,000,000 issued seven years earlier, in 1999, while patent #5,000,000 issued eight years prior in 1991. Patent #4,000,000 issued in 1976, #3,000,000 issued in 1961, #2,000,000 issued in 1935, and #1,000,000 issued in 1911, 121 years after the passage of the Patent Act.

USPTO Begins MOTTAINAI Pilot for the Patent Prosecution Highway

By Timothy J. Maier on July 18, 2011 11:36 AM | No Comments | No TrackBacks
On July 15, 2011, the US Patent and Trademark Office commenced an enhanced framework pilot program for the Patent Prosecution Highway (PPH). The PPH allows an application, whose claims have have been deemed patentable by an Office of First Filing (OFF), to go through accelerated examination in an Office of Second Filing (OSF), upon request.

The new framework, also known as the PPH MOTTAINAI Pilot, will allow reuse of search and examination results from any office participating in the pilot program, and for any application in a patent family. Previously, only search and examination results from the first-filed application in a patent family were eligible for reuse in participating offices. The pilot program will last for one year, until July 14, 2012.

As part of the MOTTAINAI Pilot, the requirements for correspondence between the claims filed in two cooperating offices. The claims filed for examination under the PPH in the USPTO as an OSF must "sufficiently correspond" to the claims filed in the OFF, after accounting for claim format differences and differences stemming from translation of the claims. The applicant will be required to provide a correspondence table for all the claims in the application, showing how each claim corresponds to a claim filed in the OFF.

To "sufficiently correspond," claims filed in the USPTO must be of the same or similar scope as the claims filed in the OFF. The claims may also have a narrower scope than the claims filed in the OFF, provided that the additional limitations are supported in the specification. However, claims introducing a different category of claims (for example, claims directed to a process for manufacturing a product, where only claims directed towards the product were filed in the OFF) are not considered to sufficiently correspond to the original claims. 

The USPTO expects that the new eligibility requirements will make the PPH process available to more applicants and will further reduce examination workload, increase efficiency and reduce waste, and improve patent quality. The countries participating in the pilot program include Australia, Canada, Finland, Japan, Russia, Spain and the United Kingdom. PPH arrangements with other countries will not be affected.

USPTO Updates Patent Dashboard

By Timothy J. Maier on July 4, 2011 11:03 AM | No Comments | No TrackBacks
In the fall of 2010, the Patent and Trademark Office introduced the Patents Dashboard, a Flash-based visualization of data related to patent pendency, allowance rate, and the application backlog at the USPTO. The goal of the Dashboard is to increase the transparency of USPTO operations by providing the public with easily-accessible performance indicators, such as first Office Action pendency, total pendency, application backlog, staffing levels, allowance rates, actions per disposal, and a number of pendency-related measures.

In May 2011, the USPTO added a new measure to the Dashboard, showing the backlog of Requests for Continued Examination that are awaiting an initial action after the RCE submission. This backlog presently stands at 62,854 RCEs.

Additionally, in May, first Office Action pendency increased to 26.5 months from 25.9 in April. The USPTO explains this increase due to the effectiveness of the "Clearing the Oldest Patent Applications" initiative, which seeks to reduce the number of applications that have been awaiting first Office Actions for over 16 months. The number of such applications presently stands at 157,608, slightly more than half of the 299,099 such applications that existed at the beginning of the initiative.

The Patents Dashboard, as well as the Trademarks Dashboard and the Policy and External Affairs Dashboard may be accessed at the Data Visualization Center on the USPTO site.

USPTO Proposes to Streamline Reexamination Procedures

By Timothy J. Maier on May 9, 2011 5:48 PM | No Comments | No TrackBacks
The USPTO, in yet another attempt to reduce pendency and streamline patent prosecution, has proposed changes to ex parte and inter partes reexamination procedures.  These proposed changes have been published in the Federal Register, and the USPTO is currently accepting public comments on the proposed changes in order to enact policies which reflect public sentiment  Among the most notable proposed changes are proposed modifications to the "Substantial New Question" ("SNQ") standard. Modifications which would impose more stringent requirements on the requester, thus removing some of the burden of ex parte and inter partes reexamination from the USPTO.

The proposed modifications would increase a requester's responsibilities when submitting a SNQ. Specifically, the proposed changes would require that requesters explain, specifically, "how each SNQ presented in the request is 'new,'" and how the references apply to each and every claim limitation of the claims for which reexamination is requested. Further, under the proposed rule changes, a requester would be required to explain how multiple SNQs are non-cumulative of each other. While these proposed requirements would impose additional responsibilities on requesters, they would, in theory, save the PTO an abundance of time and resources. Examiners will no longer need to infer a requester's reasoning, instead the requester will be required to explicitly state the reasons for their submissions, reasons every requester should know while submitting the request. Thus, the additional burden placed on requesters would be minimal compared to the burden of which examiners would be relieved.
 
In addition to enacting stricter requirements on requesters, the tasks required of the examiner would also be reduced. The examiner, under the proposed changes, would be able to select one or more representative rejections from a group of adopted rejections, and would also be able to treat cumulative SNQs as a single SNQ.

This post merely highlights some of the more interesting and impactful proposals submitted in an attempt to streamline reexaminations. The proposal also submits more specific changes to the reexamination process, as well as, specific changes that apply only to ex parte or inter partes proceedings individually. Regardless, the overall goals seem to be clearly defining petitions practice, standardizing the entire procedure and reducing the burden placed on the USPTO. These seem to be favorable goals, and the proposed changes appear to provide logical solutions, capable of achieving these goals. However, in the wake of patent reform and budget cuts, these proposed changes may not be receiving enough attention to ensure an efficient, effective, and undisputed (or as close to as possible) alteration to the reexamination process. If you would like to find more information or to submit comments, please see the Federal Register announcement at 76 FR 22874.  


USPTO Budget Cuts Affect Patent Operations

By Timothy J. Maier on April 25, 2011 1:33 PM | No Comments | No TrackBacks
On April 21, 2011, USPTO Director David Kappos announced that several patent-related USPTO operations will be suspended or slowed down due to funding cuts. The cuts amount to approximately $100 million in fees that the USPTO will not be allowed to spend but will have to remit to the federal government. Additionally, Kappos stated that the fiscal year 2011 budget may be extended into the foreseeable future.

Notably, the Track One accelerated examination program, which was supposed to go into effect on May 4, 2011, will now be postponed indefinitely. Other impacts of the budget cuts include:
  • Severe cuts to contracting for Patent Cooperation Treaty searches;
  • IT projects will be significantly reduced;
  • The opening of the satellite office in Detroit is now postponed;
  • Overtime is suspended;
  • Hiring is frozen;
  • Employee training is reduced; and
  • Expenses such as travel, conferences and contracts will be cut back.
The USPTO's trademark operations remain unaffected for the time being.

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.

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