— Dennis

It appears that Applicants attempting to request a Petition to Make Special based on a prior art search by the applicant (MPEP § 708.02) should follow the template associated with the expected classification of the invention.

The PTO is also requesting help with updating the templates with additional resources or removing resources that are not useful.  E-mail comments to STIC-SearchTemplate@uspto.gov.

• "Revision of Power of Attorney and Assignment Practice;" 
• "Rules of Practice Before the Board of Patent Appeals and Interferences;"
• "Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004;" and
• "Changes to the Practice for Handling Patent Applications Filed Without the Appropriate Fees."

The “blue pages” provide a reference to each and every change in the new version of the official patent guide.

In brief, preliminary amendments to the specification of continuation and divisional applications will trigger OIPE to send a Notice to applicants requiring the submission of a substitute specification. The only preliminary amendment to the specification that does not require a substitute specification is an amendment to the priority claim. Applicants can avoid this Notice by filing a new specification that includes the desired preliminary amendment(s), obviously as long as the addition(s) include no new matter.

Amendments to the claims and abstract can be included on separate sheets as a preliminary amendment, or they can be incorporated into the specification (as if they were the original, using proper page numbering, etc.). Either of these options neither triggers the Notice, nor requires a substitute specification. One caution: Preliminary amendment pages are added to the entire specification (including the non-examined claims & outdated abstract) for purposes of calculating application size.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.  [Singer Bio].

The CREATE Act removes from prior art consideration subject matter that was developed by another person if: (1) the claimed invention was made pursuant to a joint research agreement between the applicant and the other person in effect as of the date of the invention; (2) the claimed invention was within the scope of the joint research agreement; (3) the application discloses the names of the parties to the joint research agreement; and the subject matter only qualifies as prior art under Section 102(e), (f), or (g). 

The newly implemented rules do not require a statement of the field of the claimed invention or a statement of the the date of execution of the JRA.  A processing fee of $130 will be required, however. 37 C.F.R. 1.71(g).  The applicant must also provide a “statement of compliance.”

The final rule is effective September 14, 2005.

Links:

Because most patent applications are currently filed via express mail, PTO is reportedly the "largest recipient of overnight mail in the world."

Links:

• PTO FLYER EFS-WEB.pdf (37 KB).
• USPTO’s EFS Website
• Oppedahl & Larson’s EFS Resource Page

What does this mean for you:

• Sometime before March 2006, purchase a full version of Adobe Acrobat and figure out how it works.  It is likely that every attorney is going to need this on his or her computer.  
• C.E. Petit, who writes the excellent blog Scrivener’s Error, takes some issue with my rush to buy expensive software. Of course, the full version of Acrobat may be overkill for the needs of most patent attorneys.  Here is the functionality what I want in PDF software: 
• Ability to create a PDF from any type of document (Word, Excel, Notepad, FireFox, etc.);
• Ability to modify the PDF (a) deleting certain pages or (b) adding new pages from another document;
• Ability to run an optical character recognition program on scanned PDFs (such as Patents, documents from PAIR, etc.); and
• Of course, it should be very easy to operate and absolutely compatible with MS Office.
• Anyone have any recommendations?

For example, a USPTO examiner could import a reference cited as prior art in the file of a published foreign application into the USPTO file.

These imported files would become part of the official prosecution history.  The PTO would, for now, restrict importation to (i) filed application; (ii) listing of cited references; (iii) available reference copies; and (iv) search reports without examiner comments.

Comments should be directed to Mark Powell (mark.powell@uspto.gov) and Jay Lucas (jay.lucas@uspto.gov). You may also leave your comments below.

Read the notice.

Under the initiative, the PTO has opened an office with 20 primary examiners who focus their time entirely on reexaminations.  All new requests for reexam will be assigned to that office in order to both enhance the quality and reduce the time of reexamination "by allowing the USPTO to monitor more effectively the reexamination operations."

The USPTO’s goal is that reexaminations that have been pending with an examiner more than two years now will be resolved by October 1, 2005. In addition, all future reexamination proceedings will be completed within a specific timeframe, which is expected to be less than two years. In March 2005 there were over 420 reexaminations that had been pending more than two years and that number would have grown to over 600 by the end of September 2005. Today, fewer than 360 cases remain, with nearly half in the final stages. To ensure the quality of these proceedings, all reexamination decisions now require a thorough review by a panel of supervisors and senior patent examiners. Reexaminations where an initial decision has been made will remain with the examiner originally assigned to the reexamination. All other reexaminations will be reassigned to a newly formed central reexamination unit.

Under the “two-way test” for determining whether subject matter is interfering, an interference exists if the subject matter of a claim of one party would, if prior art, would have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.  Thus, the interference requires that each invention obviate the other. 

By Christopher Singer & Dennis Crouch.

The panel decisions will issue in one of four possibilities:

1. Application remains on appeal (at least one issue remains for appeal);
2. Prosecution is reopened and an Office communication will issue in due course (panel may suggest amendments);
3. Application allowed on the pending claims and prosecution remains closed; and
4. Request dismissed for failure to comply with submission requirements.

This program is designed to reduce costs associated with the preparation of appeal briefs. The normal appeal practice remains available to Applicants.

See the Official Gazette notice (link) for complete details regarding this procedural option, including: General Provisions, Conditions Necessary to Request a Panel Review, Content of Request, Content of Remarks or Arguments, USPTO Consideration of the Request, Format of Panel Decision, Time Periods Before/After a Panel Decision, and Administrative Matters.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.  [Singer Bio].

Notes:

• Patently-O Coverage of the Pre-Appeal Brief Conference;
• Thanks to Randolph Smith for the heads-up on the change.

The past four one–year periods were analyzed by Cohen, who found that inter partes filings are clearly on the rise:

• Year Ending: Number of Filings
• June 30 2002:  4
• June 30 2003:  18
• June 30 2004:  26
• June 30 2005:  52

Results have been strong for the inter partes requester.  In the past four years, 98% of requests for inter partes reexam have been granted and, thus far, only 1% of cases have seen an action that allowed all reexamined claims without change.

* Estoppel: Under Section 315(c) of the Patent Act, a third party that requests inter partes reexamination is estopped from later raising the same issues in a court proceeding. The proposed Patent Act of 2005 would change the estoppel provision and would allow inter partes reexams to apply to all patents (rather than only those filed since 1999). 

Links:

• Joseph Cohen’s paper was published as What’s Really Happening in Inter Partes Reexamination, 87 JPTOS 207 (2005).  An updated version of his paper is available online here.
• USPTO’s 2004 report to Congress on Inter Partes Reexaminations.
• Gholz and Pous article on acceptance of Inter Partes Reexams by Patent Attorneys.

• Link

Proposed Refund of Search Fees for Expressly Abandoned Applications: The PTO is considering amending its rules to allow a refund of the search fee for Expressly Abandoned applications that have not yet been taken-up for examination. Comments are requested to AB79.Comments@uspto.gov.  Link.

Proposed Changes on Electronic Submission of Chem/Bio Data: The PTO is considering amending its rules to require submission of chemical and 3–D biologic structural data in electronic format.  Comments are requested to AB91.Comments@uspto.gov. Link.

New Rules: The next Office action following timely filing of a submission under 37 CFR 1.129(a) will be equivalent to the next Office action following a reply to a non-final Office action. (i.e., the action will be a “final.”)

This change is a further attempt to get rid of the remaining submarine patents.

Link: USPTO Notice

Option I: Maintain current restriction standards but permit applicants to pay for concurrent examination of additional inventions.

Option II: Modify the “unity of invention” standard to require any (unclaimed) “common feature” between inventions comply with the patentability requirements.  Applicants would be given the option of concurrent examination of additional inventions for a fee.

Option III: A three-tiered fee structure depending on whether multiple inventions are “substantially similar,” “related,” or “unrelated.”

Option IV: Allow a restriction only when the claimed inventions are “independent and distinct.”

Links:

• Read the Green Paper on Restrictions

• Comments addressed to unity.comments@uspto.gov by August 5, 2005.

-- Dennis

While boosting fees to the patent-user community, the USPTO hopes to slash examiner award pay and workplace benefits. If it succeeds, the agency's next step likely could be upping the already-high examiner work goals. The USPTO proposals undervalue the examiners' job, reduce quality by increasing speed-at-all-costs, and impede the government's ability to attract top-notch recruits to the USPTO ranks.

My hope is that the PTO and the examiner’s union can come to an agreement that makes the examiners happy by reward them for high-quality and timely work.

• The PTO is worried about whether the PDF format is good enough — for instance, there are cases where PDF printouts vary according to the system doing the printing.  The PTO would like comments on this issue.
• A web-based electronic filing system will be in beta testing this fall for a limited number of participants.
• The beta system includes electronic filing of IDS forms.
• Mr. Oppedahl expects the web-based filing system to be wildly successful.

Files & Links:

• File Attachment: Oppedahl Letter.pdf (4 KB)
• EFS Users Resource Page