USPTO News: Update Your Inventor Oath Forms

PatentLawPic159The Patent Office continues to beef-up its discussion of how to enforce Rule 1.56 duties of disclosure.  The most recent announcement declares that the Office will reject any inventor oath or declaration submitted after July 2008 that does not acknowledge a duty to disclose information material to patentability as defined in Rule 1.56.

LISTING OF COMMONLY OWNED APPLICATIONS AND PATENTS UNDER 37 CFR 1.78(f)

In November 2007, 37 CFR 1.78(f) will become effective (along with a host of other rules).

USPTO Guidelines for Examination Support Documents (ESD)

New Rule 256 (37 CFR 1.256) allows patent applicants to submit more than five independent claims or twenty-five total claims in an application if supported by a proper examination support document (ESD) prior to the first Office Action. The USPTO has released a set of guidelines for ESD content. [LINK]

New Proposed Rules: Maiming Markush Claims

A new set of proposed rules were published in the Federal Register on August 10, 2007. The new anti-Markush rules would close down a potential loophole in the soon-to-be-finalized claim limitation rules. 

Accelerated Examination Success for Business Method Applicant

ScreenShot010Although the procedure is expensive and full of potential pitfalls, applicants continue to use the PTO’s accelerated examination program. 

Two new USPTO Notices

  • e-Office Actions:  The PTO is continuing its e-Office Action pilot project with a few modifications. [Link] [Contact ebc@uspto.gov].
  • Public Submission of Peer Reviewed Prior Art begins JUNE 15, 2007: "This project will test whether [a loose public] collaboration can effectively locate prior art that might not otherwise be located by the Office during the typical examination process." Documents will be submitted by the Peer-to-Patent project "under a waiver of certain sections of both 37 CFR 1.99 and 1.291." [USPTO Notice] [Peer-to-Patent Website]

PTO: Electronic Filing Update

DSC002151Midnight Filing: The USPTO continues to changes its rules and regulations to favor electronic filing. Now, users of the electronic filing system (EFS) get a last minute bonus: Correspondence submitted via EFS-WEB will now be considered timely if submitted on the due date. (The old rule required it to be received at the PTO on the due date).

Lets hear from Experienced PTO Examiners: Are you willing to move?

UHaulSerious engineers and scientists don’t necessarily fit well in the policy-wonk culture of DC. Rumor has it that the whole Potomac area is a bit of a revolving door with the transient politico-intelligencia moving in-and-out as politics shift and families grow.  The USPTO is no different, and it is no secret that the agency is having trouble hiring qualified patent examiners as well as retaining those who are there and doing a great job.

PTO’s Strategic Plan

The PTO has released a draft “strategic plan” for the next five years. (2007–2012). I have not had a chance to review the draft yet except to note that the PTO continues to see human resources as its greatest challenge.  One interesting bit may foreshadow future changes:

Prosecution Tips: Accelerated Examination

On August 25, 2006, the PTO is implementing a new strict practice regarding petitions for accelerated examination (AKA “petitions to make special”).  [information here].  The new requirements require, inter alia, that the patent application be filed electronically along with the petition.  As a Patently-O reader recently discovered, this appears to rule-out filing a petition based on later-discovered infringement.

PTO Proposes New “Accelerated Examination” Procedures

In response to unrelenting criticism of the “backlog,” the USPTO has announced a new “accelerated examination” program that promises a 12–month final decision on patentability. This creative solution will give applicants the chance to cut in line if they meet certain criteria. To qualify, a patent applicant must:

New USPTO Website

USPTO has launched a new website design: www.uspto.gov.

USPTO’s Patent Peer Review Pilot Project

Patent peer review is coming!  Later this week, the PTO will announce its pre-grant Patent Peer Review Pilot Project. (Announcement May 12, 9:00am-noon; register here.). 

USPTO News: Proposed Changes to Reexamination Practice

In a 2005 study, attorney Joseph Cohen found that 98% of all inter partes reexamination requests had been granted.  On March 30, 2006, the PTO issued a proposed rule change that might change that outcome. According to the proposal, a patent owner will be given an opportunity to reply to the third-party reexamination request prior to the examiner’s decision on the request.  Thus, a patent holder may be able to convince the PTO of an absence of a “substantial new question of patentability” and avoid the reexamination proceeding altogether.

PTO Rule Change: Reexamination Filing Date

On February 23, 2006, the USPTO published a rule change titled “Clarification of Filing Date Requirement for Ex Parte and Inter Partes Reexamination Proceedings.”  The rules are being revised to specifically require that requests for reexams must “meet all the applicable statutory requirements before a filing date is accorded to the request.”  The rule change will be effective March 27, 2006, although comments will be accepted until April 24, 2006.

USPTO NEWS: Changes to private PAIR and electronic filing

The USPTO unveiled yesterday a revised version of private PAIR (PAIR 6.0). A highlight of the updated system includes a direct login feature that allows access to Private PAIR through a web browser window, rather than having to access through USPTO Direct. In theory, this would allow one to access PAIR from a remote computer as long as he or she has copied their EPF file to that particular computer. Another noted feature is an estimated date for issuance of a first Office action. This is intended to save practitioners from having to make status inquiries to the Office by mail.

Noonan’s Corner: Changes to Continuation and Examination Practice

From the desk of Kevin Noonan

On February 1, 2006, the U.S. Patent and Trademark Office sponsored a "Townhall Meeting" at the Northwestern University Law School. The meeting was attended by practitioners, patent counsel and corporate executives, and presentations were made by John Doll, Commissioner of Patents, and James Toupin, General Counsel of the Patent and Trademark Office.

The topic was the proposed changes in U.S. patent practice relating to "continuation" applications, which are applications that have been examined without obtaining an allowance (for at least some of the claims), and that are re-submitted to the Office for further examination. These types of applications arise either as the result of patent prosecution strategy by the applicant (who elects to cancel non-allowed claims to have other claims grant, and retain the right to pursue the non-allowed claims in the continuation application), or as the result of unwillingness by the Office to allow claims in an application (where further prosecution is needed to amend claims or present arguments or evidence of patentability). Also included under this definition are requests for continued examination, which are not new filings but rather permit continued prosecution of non-allowed claims in an application.

The proposed changes are dramatic and depart heavily from current practice. Most draconian in effect is to limit the number of continuation applications to one as of right, and to require an applicant who wants an additional continuation to show by petition that the amendments, evidence or argument could not have been previously submitted. This requirement would eliminate the opportunity for strategic decisions to cancel certain non-allowed claims to obtain other claims deemed allowable by the Office. The Examples provided by the Office also make clear that most applicants would be precluded from filing more than one continuation.

In addition, the Office is proposing to require an applicant to designate ten claims as "representative" in any application having more than 10 claims. All independent claims must be designated, and designating dependent claims up to ten total is optional. These 10 claims will be searched and examined by the Office, and if found allowable all other dependent claims will be examined solely for compliance with Sections 101 and 112.

Alternatively, if an application has more than 10 independent claims, or at the applicant's election, the Office will search and examine all claims in an application. However, under these circumstance the applicant must perform a search, using US PTO searching criteria, and then submit a patentability statement that identifies all claim limitations present in the prior art (with specificity) and explain how the representative claims are patentable over the prior art. The decision on whether to submit representative claims or the search/patentability information can be changed during prosecution at applicant's election.

There are also proposed rules for other types of "related applications," including divisional applications and continuation-in-part applications. For divisionals, only involuntary (i.e., required by the Office for unity-of-invention reasons) will be permitted. More importantly, a divisional will be able to claim priority only to the parent application, meaning that all divisionals will need to be filed during the pendency of the original application. Continuations-in-part will be permitted, but the applicant will be required to identify all claims disclosed in the parent application (which will be given the original filing date) and all other claims will be given the filing date of the continuation-in-part. Moreover, any claims in a continuation application filed from a continuation-in-part will be entitled only to the filing date of the continuation-in-part application.

The Office is also proposing a requirement that an applicant identify, within two months of the filing date, any co-pending application or co-owned patent having a common assignee and common inventor, in an effort to identify applications that should be subject to obviousness-type double patenting restrictions. These applications will be under a rebuttable presumption that they are patentably indistinct, and an applicant will have to affirmatively establish patentable distinctness or submit a terminal disclaimer. Otherwise, the Office may merge any such claims into a single application (presumably the earlier-filed one).

The justification for these proposed changes are two-fold: pendency and examination quality. The Office is experiencing an increasing backlog of pending cases: there are more than 900,000 cases pending at present, and the backlog number is growing. As a consequence, the pendency times (which vary by art unit) range from 28 - 52 months, and absent changes in the examiner corps or the pace of patent filings, it would take 36 - 130 months (depending on the art unit) to work through the backlog. Additionally, the "error rates" (cases where claims that should be allowed are not, and vice versa) is between 4 - 8% (depending on art unit). Although the Office is planning to hire 1,000 new examiners this year, and train them for about 8 months in a new training academy, the Office does not believe that either measure is sufficient to reduce pendency and improve quality.

The Office justifies the proposed changes by noting that less than 5% of all pending applications have more than 10 independent claims, and that less than 15% of all applications have 2 or more continuations or requests for continued examination. However, while an extensive examination of these statistics is on-going, it appears at first blush that the proposed changes would have little effect at overcoming the pendency and quality problems, and at best simply maintain the status quo. Indeed, Commissioner Doll admitted that the only way the number of backlogged cases could be reduced over the five-year period between 2007 and 2012 would be if all applicants were required to submit the search/patentability evidence now proposed to be required only of applicants submitting more than 10 independent claims for examination. The presenters further justified these proposals based on an earlier meeting with corporate executives, whose concerns focused on pendency and quality, and business certainty in knowing their own and their competitors' IP position.

The presenters also discussed changes to Rule 56 that have not been vetted by the Office of Management and Budget, but that are aimed at eliminating (or at least addressing) some of the liability issues raised by the requirement to provide the Office with search/patentability evidence under some circumstances.

The discussion period was lively, and many participants raised questions on whether the proposals would solve the problem. The presenters reassured the audience that these proposals were not "written in stone," and that they are actively seeking comment and alternative proposals (that can be addressed to AB93comments@uspto.gov (claims) and AB94comments@uspto.gov (continuation practice) by the deadline date of May 3, 2006.

The presenters did cause a bit of consternation in the group when they suggested that the practice of keeping a continuation "alive" to provide the basis for submitting a claim that would ensnare a competitor's efforts to "design around" were improper and contrary to the patent grant, and that all claims to what an applicant thought was his invention should be submitted at the time of filing. This raised a spirited argument from participants who reminded the presenters that this practice was countenanced by over a century of Supreme Court precedent, and that the Office did not have the authority to make changes to continuation practice on this basis under Section 2 of the patent statute.

The session was informative, and the attitude of the presenters clearly open to further suggestions to solve the problems in the Office. It would be prudent for practitioners and their clients to avail themselves of the opportunity to comment on these rules before they become final.

NOTE: Kevin Noonan, PhD is a partner at MBHB and has extensive experience in biotechnology and the chemical arts.  He represents pharmaceutical and biotechnology companies both large and small, and he is particularly experienced in representing university clients in both patent prosecution and licensing.

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