By Dennis Crouch
NOTE: See final paragraph for Nov. 5 pending rule change for correcting foreign priority claims.
The USPTO has published a new Final Rule notice titled: Changes To Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices. This is a follow-up to the proposed rules from 2014. As its name suggests, the proposal would allow the USPTO to share otherwise secret information regarding pending-unpublished US applications with foreign patent offices, such as the EPO. A major caveat here though is that the sharing of information requires applicant authorization. The change is part of the general major shift toward worksharing and international procedural harmonization. The following comes from the notice:
[The USPTO] is revising its rules of practice to include a specific provision by which an applicant can authorize the Office … all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office. … The final rule changes consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. The Office is also revising the rules of practice to indicate there is no fee for providing a foreign IP office with an electronic copy of an application-as-filed or an electronic copy of file contents pursuant to a bilateral or multilateral agreement. Additionally, along with changes to the application data sheet (ADS) form [to facilitate authorization], the final rule changes simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.
The change has a November 30, 2015 effective date.
In this process, the PTO is setting up a major roadblock to more complete worksharing by only sharing documents when authorized by applicants. One comment to the proposed rules focused on this issue:
Comment 4: One comment asserted that the proposed rule change is based upon the assumption that a specific authority is required from an applicant in order to send out pre-publication information to a foreign IP office where applicant has filed an application and that the Office should reconsider this assumption. The comment further asserted that once an applicant files an application in a foreign IP office, applicant inherently agrees to the rules and requirements of that foreign IP office. Accordingly, the comment suggests that the Office does not need a separate authorization to either send a priority document or pre-publication information to that foreign IP office. Therefore, the comment requested that the Office reconsider the need for any authorization for access in this circumstance. The comment stated that if the Office adopts this position, then the entire authorization section from the ADS can be removed and a filing of an application in a foreign IP office by an applicant can serve as authorization for access to send priority documents and/or pre-publication information to that foreign IP office(s).
Response: After due consideration of the comment, the Office has decided to not adopt the position expressed in the comment. The written authority requirement is in accord with 35 U.S.C. 122(a), and consistent with current Office policy, practice, and procedure regarding access. Therefore, the Office is retaining the requirement for written authority from an applicant for access to the file contents of an unpublished application.
Here, the statute properly quoted by the Patent office does require that these non-published “applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.”
The USPTO has also announced “Change in Practice Regarding Correction of Foreign Priority Claims.” The changes – becoming effective on November 5, 2015, will make it more difficult to correct errors in foreign priority claims. Starting this week, a correction of a foreign priority claim made outside of the one-year deadline will require a petition to accept an unintentionally delayed benefit claim.
The Leahy-Smith America Invents Act (AIA) … provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent application publication. Therefore, U.S. patent application publications should reflect accurate foreign priority information to minimize the burden on examiners and members of the public in assessing the effective prior art date for subject matter disclosed in such U.S. patent application publications. The USPTO will thus now require that any correction of the identification of the foreign application (by application number, country (or intellectual property authority), and filing date) in a foreign priority claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed priority claim, and once the petition is granted in a pending application, will now publish a corrected patent application publication reflecting the accurate foreign priority claim information.
So, if you have a correction to make regarding foreign priority, it is probably best to get it done in the next two days. In general, the “unintentional” standard is fairly easy to overcome, but does require sworn statements that may later open-the-door to charges of inequitable conduct if it turns out that the error was known for some time. I’ll also note here that the parallel correction of US priority already requires the petition.
Just to reiterate, until 1952, prior art consisted of things in the public and public knowledge. Then we put into 102 patents as of their filing dates, prior invention, and that the alleged inventor did not invent.
The idea behind the AIA for very long time was to harmonize with the rest of the world and in particular with Europe who do not recognize prior invention and who do not give prior art effect to nonpublic information. The fact that a patent or patent application will have novelty-defeating effect does not make them prior art. That is a simple mechanism to prevent two patents on the same invention.
But instead of harmonizing, we doubled down on the worst aspects of the 1952 act in expanding the scope and effect of secret prior art, and further by excepting from such prior art, common ownership and the like that is not public and transparent – and we extended, like the perverse idi0ts that we are, the prior art effect of such patents and applications to patent applications filed in other countries and in other languages. Are we nuts?
We need to demand now, before it is too late, real harmonization. We need to remove the prior art effect of patents and patent applications as of their effective filing dates.
We have created a monster and it is eating is alive.
Ned, many lament the AIA as the delivery to Big (trans-national) Corp of its Shopping List of legislative changes. How do you ever suppose Congress will row back from that?
The way see it, the USA has not moved to harmonise with the ROW but instead to spring over ROW FtF, to its own new benchmark, what I have dubbed Turbo First to File, Survival of the Fittest, Winner Takes it All. Under the AIA, if you file first, you exterminate any later filers.
What do I mean by “exterminate”? Well, by your use of your first filing (anywhere in the world) for obviousness attacks against all other applications filed even just one day later, you prevent the emergence of thickets of US patents in distributed ownership. Self-owned thickets are exactly what Big Corp loves, but thickets in distributed ownership are what the Big Corp bulk filers abhor, and so they set out to eliminate them, and succeeded, using the AIA.
The USA expects the ROW to settle down onto whatever Benchmark the USA creates. Far from the USA stepping back to harmony with the ROW, I expect trans-national Big Corp to help the ROW (starting in Asia) to harmonise with the USA’s new Benchmark.
BTW, you offered in another thread some thoughts on the sluggishness of Europe and England. I didn’t reply because I couldn’t summon up the energy to challenge your views. Typical European, eh?
Well, Max, I agree that we were all sold a bill of goods in the AIA by some really slick used car salesmen.
Whatever Big Corp. expects regarding secret prior art reserving not only their place in line to the show, but the entire first row, the second row and the balcony. How is this different in principle that prior invention that simply moved this secret prior art back a bit more to some date of invention.
Secret prior art is a bad idea. It was bad when they made prior invention prior art.
We told repeatedly that transparency was the watchword. But if we are not to be caught off guard, we all need to know the state of the art on the day we search it. We can never know that state if secret prior art continues to exist, especially if it is Chinese or some such.
And, as you observed, we can never know who owns what so as to remove some references when considering validity. Now that is a very bad system that can be corrected simply by harmonizing with Europe.
As to Europe, don’t you guys want to make it cheaper to obtain a patent? And don’t get me started on the German system. It seems to be driving the whole of Europe in the wrong direction by dividing validity and infringement into two different courts.
As to England… good legal system. The best. That is a good start.
OK Ned, here some thoughts in reply.
Bifurcation (of infringement and validity) in Germany? It is the Constitution that did it and at national level you cannot get around it. Germany traditionally friendly to patent owners. But the incoming pan-European UPC envisages bifurcation as the exception to the rule, so it might be on the way out, throughout Europe.
Expense? Not sure that is unavoidable Ned. Take engineering inventions, for example. Why would you pay for a patent anywhere else in the EU except the Big Three Member States and The Netherlands? Where else do you fancy litigating your patent? And who will infringe, anywhere in Europe, if DE, GB, FR and NL are No-go Areas, off limits? And how much does it cost to build patent rights if you confine yourself to those four EU countries and forget all the tiddlers, those of the 38 EPC Member States that have <8 million residents.
Go for the Big Three then. File in English. Instruct in English. No translation of the specification out of English needed. Notice of Allowance as the first EPO Communication following your reply to the EESR, so attorney time fees not large. Where do you see all the unnecessary expense arising, please. What is your bad experience that colours your views? It might not be a reliable guide to the future, or even the present.
For somebody who remembers UK law prior to 1978, this is fun. Back then, patent applications were strictly secret till the UKPTO published then upon allowance, except that the mere fact of the patent application having been filed was published, straightaway, about 6 weeks after the application was filed. The Official Journal of the PTO noted the filing date and serial number and the name of the Applicant, in long lists of new applications just filed.
So when 35 USC 122 states:
(a) Confidentiality.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
does “information concerning” the application extend to the mere fact of the existence of the application? For the USPTO, it seems, it does. But must that be so? Would such a long list offend 35 USC 122(a), I wonder.
“In this process, the PTO is setting up a major roadblock to more complete worksharing by only sharing documents when authorized by applicants.”
I don’t often find myself in the position of defending the PTO, but I think this is a bit of an overstatement. If anything, the PTO is making worksharing easier. The most practical implication is that instead of having to opt-in to worksharing by checking a box on the ADS, an applicant now needs to check the box in order to opt-out. Since the default position will now be to authorize worksharing, many more people will likely accept it without requiring corrected ADS forms, etc.
“Starting this week, a correction of a foreign priority claim made outside of the one-year deadline will require a petition to accept an unintentionally delayed benefit claim.”
This is not technically correct based on my reading of the current rules and the new rules. The only thing that this rule change appears to affect is correcting an application number for a foreign priority claim. That is, a petition and the large fee are already required if an applicant needs to make a change to the date of the foreign priority or the jurisdiction of the foreign priority application. The application number itself was not consequential before, so the petition requirement was not enforced. Since the AIA changed the prior art effect of foreign priority applications, it became necessary to make sure the application number is properly identified. So, this is a pretty narrow change to the rules.
So you have a typo. Petition to fix the typo — $1700 fee. Wait ’til the patent issues and file a certificate of correction — $100.
But wait, is the PTO going to deny certificates of correction when they fix obvious errors in foreign priority claim numbers?
Right, if know about the typo but wait then it won’t be unintentional anymore.
Just to be clear, it is already this way for claiming priority to US applications.
Dennis, Unintentional delay? For making a claim or for correcting a mistake?
“(2)
The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.”
The interpretation of the office is clearly wrong and an abuse.
Dennis,
It escapes me that there would be an advantage in intentionally waiting to correct a typo. Could you provide a short scenario?
Already present Troubled: see Ned’s cost differential.
Anon,
Ned’s cost differential at 3 does not take into account that in the interim the PTO may require an earlier claim to priority. “37 CFR 1.55(a)(2)(ii) When necessary to overcome the date of a reference relied upon by the examiner, or (iii) When deemed necessary by the examiner.”
Unless the Examiner calls with a heads up, this could come after a first Office action. Most likely this will lead to a final rejection requiring an RCE. Responding to Office actions aren’t cheap. With PCT applications, the foreign priority date could be 30 months before the US filing date, so the chances of intervening prior art is significant. To me, it looks like a really bad bet to intentionally not perfect foreign priority. I would cut my losses at $1700 and sleep at night.
I did not say that your added items might very well make the decision go the other way, but I did answer your question that Ned’s simplified example is – in fact – a perfectly good answer to your question.
Troubled, can you clarify one point for me please, namely, in your hypo, when does the error, the typo, occur?
You see, on the subject of work-sharing, the EPO Register automatically acquires all the bibliographic details of the PCT soon after the PCT is filed. It even allocates a serial number automatically and automatically sends a Communication to the Applicant with that Serial No. Then, if Applicant decides to enter the EPO national phase, all it has to do is pay the EPO its entry fees under that given SN and, Bingo, the national phase application is activated, up and running, typo-free.
Are you saying that, in the USA, Applicant has to enter all the bibliographic data all over again? In these days of arranging that somebody else does all the work, not me, it seems remiss of the USPTO not to adopt the EPO approach, of requiring a load of fees simply to throw a switch from OFF to ON.
Max, the USPTO has become very an@l about Application Data Sheets. Making something automatic seems beyond their comprehension.
At times, we spend more time fussing with ADSs than with substantive prosecution.
Agreed. The Application Data Sheet (ADS) form is hard to follow, even with the instructions. In the old days (before Sept 16, 2012) one could make a priority claim without an ADS by including it in the Cross Reference to Related Applications. In addition to application number, filing date, and country (if not U.S) one would also add the title of the invention and list the inventors. As I recall, the PTO would use the information to correct obvious errors with obvious corrections. Now, the ADS does not require the title or inventors, so a typo in the application no. would not unambiguously refer to any one application.
T, [T]he foreign priority date could be 30 months before the US filing date…
That is literally impossible.
Ned,
Yes, the Paris Convention would limit the time to 12 months, but I was thinking of a PCT application. Is that not germane to the present discussion?
T, same rules apply to PCTs. 1 year from the PCT filing date, which is the US filing date if the PCT goes national stage.
The “advantage” that is of concern is “delayed publication” of the U.S. Application.
However, since the priority application is presumably published on time, I’m not sure what the problem is.
Dennis,
Also, it is quite expensive. Assuming I have the right version of the CFR, petitions to correct delayed benefit claims come under 37 CFR 1.55(e) which require the fee in 1.17(m) which is $1,700 ($850 small and micro).
Yes, although for me the bigger cost would be signing the sworn statement of unintentional delay.
Yes, and the latest proposed fee changes increase this petition fee to $2,000 (undiscounted).
How about adding a clause that indicates if authority to share is provided the Applicant is absolved of all responsibility to IDS documents cited by the foreign Offices.
There ain’t much I wouldn’t authorize to get out from under that paperwork nightmare.
Well Les, I would agree. Given that 102(d) says that a benefit claim is not even required to make an a patent prior art as of a non claimed priority application that could have been claimed, why are we even going through this exercise of shooting ourselves in the foot? Typos are no obstacle. This who exercise seems to assume that they are.
“Given that 102(d) says that a benefit claim is not even required”
Wow, Ned is capable of learning something from me.
🙂
anon, I had a hard time believing what I was seeing.
What convinced me was someone’s post about the PTO wanting to overturn Wertheim.
Comments are closed.