In the February 28, 2007 Federal Register, the U.S. Patent and Trademark Office published proposed changes to rules governing disciplinary proceedings for attorneys and agents. This was a supplemental notice of proposed rule making. The USPTO had previously proposed amendments, in December 2003. One hundred and fifty seven written comments were received in response to the December 2003 proposal. In response to those comments, the USPTO revised several of the proposed rules and published the revised proposed rule changes.
The revised proposed rule changes can be found here:
http://www.patentsusa.com/20070228_Discipline.pdf
A comparison of the revised proposed rules and the December 2003 version is available at http://www.uspto.gov/web/offices/dcom/olia/oed/comparison_ab55.pdf
The revised proposed rule changes have not yet been adopted.
The December 2003 proposed rules introduced a part 11, to replace previous part 10, including rules governing the conduct of investigations and disciplinary proceedings. Other proposed rules were intended to introduce new disciplinary procedures for practitioners who were suspended or disbarred in other disciplinary jurisdictions for ethical or professional misconduct, practitioners convicted of serious crimes, and practitioners having disability issues. The December 2003 version also proposed changes to the ethics rules. Some provisions on enrollment were adopted in final form on July 26, 2004 (see 69 Federal Register 35428). Several proposed rules are directly or indirectly dependent on development of electronic systems to implement rules governing annual dues and continuing legal education. Such electronic systems have not yet been completed so the revised proposed rules do not refer to rules that depend on implementation of such electronic systems.
One interesting item added in the revised version is a statement that "Nothing in this section proscribes a practitioner from employing non-practitioner assistants under the supervision of the practitioner to assist the practitioner in preparation of said presentations." The stated reason for this is to assist practitioners in providing cost-efficient services to clients. Some large companies are imposing artificial limits on fees per patent application, sometimes without regard for complexity or number of revisions requested by inventors and often without regard to whether new disclosure materials were added by inventors after the original case was accepted by the attorney. These companies may not be as concerned with quality and validity of their patents because a potential licensee presented with a large number patents may be more likely to accept a license than to investigate the validity of a large volume of patents. A typical patent trial can cost 1.5 million dollars--saving a few dollars in the patent procurement procedure could jeopardize the validity of a patent and make it harder to risk gambling the 1.5 million dollars of potential litigation fees in an infringement action. Federal Circuit decisions make it increasingly important that patent applications be drafted and prosecuted with great care by practitioners who are familiar with the cases. Smaller companies cannot rely on the size of their portfolio to intimidate infringers and must make sure that their patents are carefully and properly drafted so that they can confidently begin litigation, if necessary. Companies that might be accused of monopolistic activities may be less likely to draw attention to themselves by asserting patents, so risk of invalidity in litigation may not be as big of a concern. Properly supervising someone else can easily take more time than drafting a patent application directly. In order to really reduce fees, the work of non-practitioners would have to be superficial or non-existent. The practitioner signing the papers would be on the hook for ethical violations.
Friday, March 30, 2007
Thursday, March 29, 2007
2007 Guidelines for Accelerated Examination
In the June 26, 2006 Federal Register, the U.S. Patent and Trademark Office published changes to the practice for petitions in patent applications to make special and for accelerated examination.
The changes can be found here:
http://www.patentsusa.com/20060626_Accelerated.pdf
Guidelines supplementing the program requirements were published later, and can be found here:
http://www.patentsusa.com/20060626_Guidelines_Accelerated.doc
The rule changes were effective August 25, 2006.
New patent applications were normally taken up for examination in the order of their U.S. filing date. The U.S. Patent and Trademark Office revised its procedures for making certain applications special with a goal of completing examination within twelve months of filing. However, the price to be paid by applicants for this special treatment is high indeed.
To qualify for the new accelerated examination program, an applicant must submit a petition and fee, file the application and all follow-on communications electronically, file a complete application, include no more than three independent claims and no more than twenty independent claims, file for a single invention or agree to elect a single invention without traverse, agree to an interview with an examiner, conduct a pre-examination search, and provide an accelerated examination support document.
In other words, the U.S. Patent and Trademark Office will expedite prosecution if applicants perform most of the work that examiners would normally do.
There are many problems with this procedure. Twenty claims with three independent claims may be inadequate for all but the simplest inventions. Federal Circuit case law has severely weakened the doctrine of equivalents to the point that it may not be worth gambling on an infringement suit unless literal infringement can clearly be shown. With only three independent claims, alternative claiming strategies cannot be fully explored. The English language is imprecise and it is difficult to cover many alternatives of an invention with so few claims. Literal infringement of patent claims can sometimes be avoided with fairly minor changes to a product. Federal Circuit law has evolved to a point where a large number of independent claims is needed to adequately cover an invention. Additionally, file wrapper estoppel problems can arise from voluntarily characterizing the prior art without even knowing if an examiner will consider a reference to be relevant. In addition, there is a strong risk of being accused of inequitable conduct if relevant prior art is located that a patent applicant did not uncover and disclose to the USPTO--the applicant could be accused of not having searched properly.
The search that applicants are required to perform by this procedure is quite substantial. The USPTO requires a search submitted in support of a petition for accelerated examination to include a classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified; a text search of the US patents and published patent applications that covers the subject matter of the independent claims using terms recognized in the art given their broadest reasonable interpretation; a text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements, to the extent available (the PCT minimum documentation requirements can be found at http://www.wipo.int/standards/en/pdf/04-02-01.pdf);
a text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates found at http://www.uspto.gov/web/patents/searchtemplates/searchtemplates.htm
; and a search employing any special tools (e.g., nucleic acid or protein sequence searching tools) as identified in the current USPTO search templates.
After doing all this work, the result may just be a quicker Final Rejection.
In the end, taking some applications out of order will just mean that it will take even longer for other patent cases to be processed. And if many companies begin to use the accelerated examination procedure, it will eventually get bogged down too, unless examiners rely strongly on the work done by applicants.
Some companies who have large portfolios may not be too concerned about the validity of any individual patent, but other applicants may highly value their patents. Some large companies may not be too concerned about quality because with a large portfolio, they can accuse a potential licensee of infringing a large number of patents, and it will be too burdensome for the potential licensee to evaluate such a large volume of patents. This rule change may benefit such companies at the expense of smaller companies who need more independent claims and stronger patents.
The changes can be found here:
http://www.patentsusa.com/20060626_Accelerated.pdf
Guidelines supplementing the program requirements were published later, and can be found here:
http://www.patentsusa.com/20060626_Guidelines_Accelerated.doc
The rule changes were effective August 25, 2006.
New patent applications were normally taken up for examination in the order of their U.S. filing date. The U.S. Patent and Trademark Office revised its procedures for making certain applications special with a goal of completing examination within twelve months of filing. However, the price to be paid by applicants for this special treatment is high indeed.
To qualify for the new accelerated examination program, an applicant must submit a petition and fee, file the application and all follow-on communications electronically, file a complete application, include no more than three independent claims and no more than twenty independent claims, file for a single invention or agree to elect a single invention without traverse, agree to an interview with an examiner, conduct a pre-examination search, and provide an accelerated examination support document.
In other words, the U.S. Patent and Trademark Office will expedite prosecution if applicants perform most of the work that examiners would normally do.
There are many problems with this procedure. Twenty claims with three independent claims may be inadequate for all but the simplest inventions. Federal Circuit case law has severely weakened the doctrine of equivalents to the point that it may not be worth gambling on an infringement suit unless literal infringement can clearly be shown. With only three independent claims, alternative claiming strategies cannot be fully explored. The English language is imprecise and it is difficult to cover many alternatives of an invention with so few claims. Literal infringement of patent claims can sometimes be avoided with fairly minor changes to a product. Federal Circuit law has evolved to a point where a large number of independent claims is needed to adequately cover an invention. Additionally, file wrapper estoppel problems can arise from voluntarily characterizing the prior art without even knowing if an examiner will consider a reference to be relevant. In addition, there is a strong risk of being accused of inequitable conduct if relevant prior art is located that a patent applicant did not uncover and disclose to the USPTO--the applicant could be accused of not having searched properly.
The search that applicants are required to perform by this procedure is quite substantial. The USPTO requires a search submitted in support of a petition for accelerated examination to include a classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified; a text search of the US patents and published patent applications that covers the subject matter of the independent claims using terms recognized in the art given their broadest reasonable interpretation; a text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements, to the extent available (the PCT minimum documentation requirements can be found at http://www.wipo.int/standards/en/pdf/04-02-01.pdf);
a text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates found at http://www.uspto.gov/web/patents/searchtemplates/searchtemplates.htm
; and a search employing any special tools (e.g., nucleic acid or protein sequence searching tools) as identified in the current USPTO search templates.
After doing all this work, the result may just be a quicker Final Rejection.
In the end, taking some applications out of order will just mean that it will take even longer for other patent cases to be processed. And if many companies begin to use the accelerated examination procedure, it will eventually get bogged down too, unless examiners rely strongly on the work done by applicants.
Some companies who have large portfolios may not be too concerned about the validity of any individual patent, but other applicants may highly value their patents. Some large companies may not be too concerned about quality because with a large portfolio, they can accuse a potential licensee of infringing a large number of patents, and it will be too burdensome for the potential licensee to evaluate such a large volume of patents. This rule change may benefit such companies at the expense of smaller companies who need more independent claims and stronger patents.
Tuesday, March 27, 2007
2007 Priority Document Exchange System
On March 13, 2007, the U.S. Patent and Trademark Office sent emails to patent attorneys announcing that a priority document exchange system was launched on January 16, 2007.
With the PDX system, applicants are able to request electronic retrieval of priority documents from the European Patent Office (EPO) for placement in their US application.
Requests may be made by filing the Form PTO/SB/38 entitled "Request to Retrieve Electronic Priority Application(s)" with the USPTO.
The PDX system also permits the EPO to request electronic retrieval of certified copies of US applications from the USPTO. However, the USPTO will only make such copies available if the application has already published or if the applicant has provided written authorization to do so.
Applicants may grant electronic access to their U.S. patent applications to the EPO by filing the Form PTO/SB/39 entitled "Authorization to Permit Access to Application by Participating Office" with the USPTO.
There is no fee for either retrieving a priority document from a participating Office or for transmitting a priority document to a participating Office.
With the PDX system, applicants are able to request electronic retrieval of priority documents from the European Patent Office (EPO) for placement in their US application.
Requests may be made by filing the Form PTO/SB/38 entitled "Request to Retrieve Electronic Priority Application(s)" with the USPTO.
The PDX system also permits the EPO to request electronic retrieval of certified copies of US applications from the USPTO. However, the USPTO will only make such copies available if the application has already published or if the applicant has provided written authorization to do so.
Applicants may grant electronic access to their U.S. patent applications to the EPO by filing the Form PTO/SB/39 entitled "Authorization to Permit Access to Application by Participating Office" with the USPTO.
There is no fee for either retrieving a priority document from a participating Office or for transmitting a priority document to a participating Office.
Friday, March 23, 2007
2006 Proposed Changes To Information Disclosure Statement Requirements and Other Related Matters
In the July 10, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to information disclosure statement (IDS) requirements and other related matters.
The proposed changes can be found here:
http://www.patentsusa.com/20060710_Proposed_chg_IDS.pdf
Luckily, these rule changes have not been adopted. However, forms on the USPTO web site have been formatted assuming that these rule changes will be implemented.
The stated purpose of the proposed changes was to improve the quality and efficiency of the examination process. The notice indicated that although Rule 1.56 clearly imposes a duty to disclose material information, the rule neither authorizes nor requires anyone to file unreviewed or irrelevant documents with the Office. Such documents more likely, negatively impact the quality of resulting Office determinations, according to the USPTO.
The Office proposed that before a first Office Action on the merits, additional disclosure would be required for English language documents over twenty-five pages. Additional disclosure would also be required for any foreign language documents, and would be required if more than twenty documents are submitted. The required explanation must identify information in each document that is relevant to the claimed invention. Examples of the additional disclosure included an identification of a portion of a document that caused it to be cited, and an explanation of how the specific feature of the document correlates with language in one or more claims. However, documents submitted to the Office in reply to a requirement for information or resulting from a foreign search or foreign examination report would not count towards the twenty document limit. The rule changes would also permit the filing of an IDS after a first Office Action on the merits only if additional disclosure requirements were met. After a first Office Action, an applicant would be required to provide a non-cumulative description as well as an explanation for each document (or a copy of a foreign search or examination report).
Patent practitioners were opposed to this change because of the risk of being accused of inequitable conduct by the courts if not all potentially relevant information is disclosed, and resulting patent invalidity. Unsympathetic court decisions have led practitioners to be ultra-cautious. Correlating a reference to a claim could result in damaging file wrapper estoppel.
Comments by the public on these proposed rule changes can be found here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/ab95/ids.htm
The proposed changes can be found here:
http://www.patentsusa.com/20060710_Proposed_chg_IDS.pdf
Luckily, these rule changes have not been adopted. However, forms on the USPTO web site have been formatted assuming that these rule changes will be implemented.
The stated purpose of the proposed changes was to improve the quality and efficiency of the examination process. The notice indicated that although Rule 1.56 clearly imposes a duty to disclose material information, the rule neither authorizes nor requires anyone to file unreviewed or irrelevant documents with the Office. Such documents more likely, negatively impact the quality of resulting Office determinations, according to the USPTO.
The Office proposed that before a first Office Action on the merits, additional disclosure would be required for English language documents over twenty-five pages. Additional disclosure would also be required for any foreign language documents, and would be required if more than twenty documents are submitted. The required explanation must identify information in each document that is relevant to the claimed invention. Examples of the additional disclosure included an identification of a portion of a document that caused it to be cited, and an explanation of how the specific feature of the document correlates with language in one or more claims. However, documents submitted to the Office in reply to a requirement for information or resulting from a foreign search or foreign examination report would not count towards the twenty document limit. The rule changes would also permit the filing of an IDS after a first Office Action on the merits only if additional disclosure requirements were met. After a first Office Action, an applicant would be required to provide a non-cumulative description as well as an explanation for each document (or a copy of a foreign search or examination report).
Patent practitioners were opposed to this change because of the risk of being accused of inequitable conduct by the courts if not all potentially relevant information is disclosed, and resulting patent invalidity. Unsympathetic court decisions have led practitioners to be ultra-cautious. Correlating a reference to a claim could result in damaging file wrapper estoppel.
Comments by the public on these proposed rule changes can be found here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/ab95/ids.htm
Wednesday, March 21, 2007
2006 Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office
On May 22, 2006, the U.S. Patent and Trademark Office published information about a patent prosecution highway pilot program between the United States Patent and Trademark Office and the Japan Patent Office.
The information can be found here:
http://www.patentsusa.com/20060522_Japan_highway.pdf
The USPTO noted that since the beginning of 2003, the USPTO, the European Patent Office, and the Japan Patent Office participated in search exchange projects. The USPTO continued that the results of the prior projects show that there is a potential benefit in exploiting the search results of the office of first filing to reduce workload in the office of second filing.
The patent prosecution highway pilot program enables an applicant whose claims are determined to be allowable/patentable in the office of first filing to have the corresponding application filed in the office of second filing advanced out of turn for examination while at the same time allowing the office of second filing to exploit the search and examination results of the office of first filing.
Where the USPTO is the office of second (e.g., for applications originating in Japan) the corresponding application filed in Japan contains claims that are determined to be allowable, the applicant may request participation in the Patent Prosecution Highway Pilot Program in the USPTO and petition to make the U.S. application special.
Where the USPTO is the office of first filing and the U.S. application contains claims that are determined to be allowable, the U.S. applicant may request accelerated examination in Japan for the corresponding application filed in Japan. The procedures for filing a request for participation in the pilot program are available from the Japanese Patent Office website at http://www.jpo.go.jp/index.htm
The pilot program commenced on July 3, 2006 for a period of one year ending on July 3, 2007.
The information can be found here:
http://www.patentsusa.com/20060522_Japan_highway.pdf
The USPTO noted that since the beginning of 2003, the USPTO, the European Patent Office, and the Japan Patent Office participated in search exchange projects. The USPTO continued that the results of the prior projects show that there is a potential benefit in exploiting the search results of the office of first filing to reduce workload in the office of second filing.
The patent prosecution highway pilot program enables an applicant whose claims are determined to be allowable/patentable in the office of first filing to have the corresponding application filed in the office of second filing advanced out of turn for examination while at the same time allowing the office of second filing to exploit the search and examination results of the office of first filing.
Where the USPTO is the office of second (e.g., for applications originating in Japan) the corresponding application filed in Japan contains claims that are determined to be allowable, the applicant may request participation in the Patent Prosecution Highway Pilot Program in the USPTO and petition to make the U.S. application special.
Where the USPTO is the office of first filing and the U.S. application contains claims that are determined to be allowable, the U.S. applicant may request accelerated examination in Japan for the corresponding application filed in Japan. The procedures for filing a request for participation in the pilot program are available from the Japanese Patent Office website at http://www.jpo.go.jp/index.htm
The pilot program commenced on July 3, 2006 for a period of one year ending on July 3, 2007.
Tuesday, March 20, 2007
2006 Proposed Changes to Practice for the Examination of Claims in Patent Applications
In the January 3, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to practice for the examination of claims in patent applications. Among other things, the Office proposed to focus its initial examination on a limited number of claims designated by the applicant as representative claims.
The proposed changes can be found here:
http://www.patentsusa.com/20060103_Proposed_chg_claims.pdf
Luckily, these rule changes have not been adopted.
The stated reason for the proposal was that the changes would allow the Office to do a better, more thorough, and reliable examination.
The proposed rules indicated that the representative claims will be all of the independent claims that are expressly designated by the applicant for initial examiner. The Office also proposed that if an application contains more than ten independent claims, or if the applicant wishes to have initial examination of more than ten representative claims, the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination.
Most patent attorneys did not like the proposed rule changes because of the effect the file wrapper estoppel that would likely be created if such a support document was presented. Also, the doctrine of equivalents has been severely limited by the courts to the point where it is of little value. A large number of independent claims are necessary to adequately protect inventions in view of court decisions. In addition, there is a strong risk that any claims that were not indicated as being representative by an applicant would not be construed by a court as having the same presumption of validity that all issued claims currently enjoy.
The Office did not acknowledge that applicants already pay extra filing fees when more than three independent claims are presented. The Office also did not acknowledge that examiners frequently issue restriction requirements when a large number of independent claims are presented. If these rules were passed, applicants probably would have filed more separate applications, which would have resulted in an increased burden on the office, not a decrease. The big burden on the USPTO has been fee diversion by Congress. Patent applicants assume that their filing fees are being used by the agency collecting them, but this was not the case. With more funds, the USPTO could hire and retain more qualified examiners, and could allow them more time to examine each application. Patent applications covering more complex technologies require more time to understand and examine, even if they present the same number of claims as a simple mechanical application.
Comments by the public on these proposed rule changes can be found here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_claims/claims_comments.html
Even though these proposed rule changes were dramatic, no public hearing was planned.
The proposed changes can be found here:
http://www.patentsusa.com/20060103_Proposed_chg_claims.pdf
Luckily, these rule changes have not been adopted.
The stated reason for the proposal was that the changes would allow the Office to do a better, more thorough, and reliable examination.
The proposed rules indicated that the representative claims will be all of the independent claims that are expressly designated by the applicant for initial examiner. The Office also proposed that if an application contains more than ten independent claims, or if the applicant wishes to have initial examination of more than ten representative claims, the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination.
Most patent attorneys did not like the proposed rule changes because of the effect the file wrapper estoppel that would likely be created if such a support document was presented. Also, the doctrine of equivalents has been severely limited by the courts to the point where it is of little value. A large number of independent claims are necessary to adequately protect inventions in view of court decisions. In addition, there is a strong risk that any claims that were not indicated as being representative by an applicant would not be construed by a court as having the same presumption of validity that all issued claims currently enjoy.
The Office did not acknowledge that applicants already pay extra filing fees when more than three independent claims are presented. The Office also did not acknowledge that examiners frequently issue restriction requirements when a large number of independent claims are presented. If these rules were passed, applicants probably would have filed more separate applications, which would have resulted in an increased burden on the office, not a decrease. The big burden on the USPTO has been fee diversion by Congress. Patent applicants assume that their filing fees are being used by the agency collecting them, but this was not the case. With more funds, the USPTO could hire and retain more qualified examiners, and could allow them more time to examine each application. Patent applications covering more complex technologies require more time to understand and examine, even if they present the same number of claims as a simple mechanical application.
Comments by the public on these proposed rule changes can be found here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_claims/claims_comments.html
Even though these proposed rule changes were dramatic, no public hearing was planned.
Monday, March 19, 2007
2006 Proposed Changes To Practice for Continuing Applications, RCE Practice, and Applications Containing Patentably Indistinct Claims
In the January 3, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to practice for continuing applications, requests for continued examining practice, and applications containing patentable indistinct claims. The rule changes would have limited applicants' ability to file continuation patent applications. Among other things, the proposed rule changes would have required that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a “showing” as to why the amendment, argument, or evidence presented could not have been previously submitted.
The proposed changes can be found here:
http://www.patentsusa.com/20060103_Proposed_chg_continuation.pdf
Luckily, these rule changes have not been adopted.
The proposed rules start by noting that each continued application filing, whether a continuing application or RCE, requires the USPTO to delay taking up a new application and thus contributes to the backlog of unexamined applications before the office. They state that, in addition, current practice allows an applicant to generate an unlimited string of continued examination filings from an initial application. In such a string of continued examination filing, the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns. Moreover, the possible issuance of multiple patents arising from such a process tends to defeat the public notice function of patent claims in the initial application.
A flaw with that logic is that the applicants pay a fee for each continuation application and these continuations are less work for examiners that have already read the application and studies the prior art. The Office should be happy to have continuations which provide more fees per man hour than new cases.
The rule change notice mentions that commentators have noted that the current unrestricted continuing application practices preclude the Office from ever finally rejecting an application or even from ever finally allowing an application. The notice refers to an article by Mark A. Lemley and Kimberly A. Moore. However, neither of these authors are practicing registered patent attorneys. Both are professors. Though they are accomplished, perhaps they have not experienced how difficult it can be to obtain reasonable claim coverage when dealing with difficult examiners.
Applicants need continuations because examiners sometimes don't fully understand an invention or do a complete search before a first continuation is filed. As the natural inclination is to reject an application, it is sometimes easier to get broader claims allowed in continuations than in original applications. As the Federal Circuit tends to construe patent claims narrowly and makes it difficult to rely on the Doctrine of Equivalents, continuation practice is necessary to attempt to broaden out claims as much as possible and claim an invention in alternative manners.
Many people believe that the USPTO lacks the statutory authority under 35 U.S.C. § 120 to limit the number of copending continuation applications originating from an original application. There are no provisions in Section 120 that grant statutory authority to the USPTO to limit the number of continuations that can be filed.
Many organizations commented on these proposed rule changes. Please click here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html
It is interesting to compare the positions of companies with dominant market positions and existing large patent portfolios with those of everyone else, such as patent bar associations and universities. At present, patents can be a powerful weapon even in the hands of small companies. Contrary to the position of some that the ability to file Continuation applications should be restricted, many patent attorneys feel that continuations are often necessary because Examiners do not have sufficient time to properly examine applications, and routinely issue "Final" rejections before fully understanding the invention. A continuation becomes necessary just to keep the discussion going long enough to make sure the Examiner understands the invention described in a patent application and understands the prior art.
Some companies are part of a lobbying group called the "Coalition for Patent Fairness":
http://www.investors.com/editorial/IBDArticles.asp?artsec=17&artnum=2&issue=20070227
It is suspected by some that the proposed rule changes are the result of lobbying efforts by would-be infringers who want to weaken the patent system now that they are in dominant positions. However, it is often small companies that are major engines of growth and that create jobs in the U.S.
Even though these proposed rule changes were dramatic, no public hearing was planned.
The proposed changes can be found here:
http://www.patentsusa.com/20060103_Proposed_chg_continuation.pdf
Luckily, these rule changes have not been adopted.
The proposed rules start by noting that each continued application filing, whether a continuing application or RCE, requires the USPTO to delay taking up a new application and thus contributes to the backlog of unexamined applications before the office. They state that, in addition, current practice allows an applicant to generate an unlimited string of continued examination filings from an initial application. In such a string of continued examination filing, the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns. Moreover, the possible issuance of multiple patents arising from such a process tends to defeat the public notice function of patent claims in the initial application.
A flaw with that logic is that the applicants pay a fee for each continuation application and these continuations are less work for examiners that have already read the application and studies the prior art. The Office should be happy to have continuations which provide more fees per man hour than new cases.
The rule change notice mentions that commentators have noted that the current unrestricted continuing application practices preclude the Office from ever finally rejecting an application or even from ever finally allowing an application. The notice refers to an article by Mark A. Lemley and Kimberly A. Moore. However, neither of these authors are practicing registered patent attorneys. Both are professors. Though they are accomplished, perhaps they have not experienced how difficult it can be to obtain reasonable claim coverage when dealing with difficult examiners.
Applicants need continuations because examiners sometimes don't fully understand an invention or do a complete search before a first continuation is filed. As the natural inclination is to reject an application, it is sometimes easier to get broader claims allowed in continuations than in original applications. As the Federal Circuit tends to construe patent claims narrowly and makes it difficult to rely on the Doctrine of Equivalents, continuation practice is necessary to attempt to broaden out claims as much as possible and claim an invention in alternative manners.
Many people believe that the USPTO lacks the statutory authority under 35 U.S.C. § 120 to limit the number of copending continuation applications originating from an original application. There are no provisions in Section 120 that grant statutory authority to the USPTO to limit the number of continuations that can be filed.
Many organizations commented on these proposed rule changes. Please click here:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html
It is interesting to compare the positions of companies with dominant market positions and existing large patent portfolios with those of everyone else, such as patent bar associations and universities. At present, patents can be a powerful weapon even in the hands of small companies. Contrary to the position of some that the ability to file Continuation applications should be restricted, many patent attorneys feel that continuations are often necessary because Examiners do not have sufficient time to properly examine applications, and routinely issue "Final" rejections before fully understanding the invention. A continuation becomes necessary just to keep the discussion going long enough to make sure the Examiner understands the invention described in a patent application and understands the prior art.
Some companies are part of a lobbying group called the "Coalition for Patent Fairness":
http://www.investors.com/editorial/IBDArticles.asp?artsec=17&artnum=2&issue=20070227
It is suspected by some that the proposed rule changes are the result of lobbying efforts by would-be infringers who want to weaken the patent system now that they are in dominant positions. However, it is often small companies that are major engines of growth and that create jobs in the U.S.
Even though these proposed rule changes were dramatic, no public hearing was planned.
Sunday, March 18, 2007
2005 Revised Procedure for Preliminary Amendments Presented on Filing of Patent Application
On October 11, 2005, the U.S. Patent and Trademark Office issued a revised procedure for preliminary amendments presented on filing of a patent application.
The notice can be found here:
http://www.patentsusa.com/20051011_Substitute_Specification.pdf
The purpose of the change in procedure was to reduce the amount of processing done by the U.S. Patent and Trademark Office, thus reducing Office costs, and to help ensure that patent application publications and patents were printed correctly.
The notice recognized that the publication of a patent application is based on the specification an drawings deposited on the filing date of the application. A preliminary amendment that is present on the filing date of a patent application is part of the original disclosure of the application.
The U.S. Patent and Trademark Office indicated that if a preliminary amendment was filed in a format that could not be included in the publication, the Office of Initial Patent Examination would issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. The Office now took the position that the only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification. As a result, the Office would mail a notice requiring a substitute specification if an applicant included a preliminary amendment to a specification (other than the claims) on filing.
The notice went on to mention that, since 1997, the Office encouraged applicants to file continuation and divisional patent applications without preliminary amendments by including any desired changes as part of the specification and drawings of the new application. A copy of the declaration from a prior application could still be filed in a continuation of divisional application even if the specification of the continuation or divisional was different so long as no new matter was introduced.
A preliminary amendment only to the claims would include a complete claim listing which the Office could publish as submitted, so that type of preliminary amendment did not require a substitute specification.
U.S. Patent and Trademark Office did uniformly require substitute specifications if continuation applications were filed with Preliminary Amendments. Preliminary Amendments typically would amend the specification (other than the claims) by adding a cross-reference to the parent application. Many patent practitioners were used to filing continuations this way, and were either unfamiliar with or not comfortable with adapting to the 1997 rule change that deleted the "true copy" requirement.
The notice can be found here:
http://www.patentsusa.com/20051011_Substitute_Specification.pdf
The purpose of the change in procedure was to reduce the amount of processing done by the U.S. Patent and Trademark Office, thus reducing Office costs, and to help ensure that patent application publications and patents were printed correctly.
The notice recognized that the publication of a patent application is based on the specification an drawings deposited on the filing date of the application. A preliminary amendment that is present on the filing date of a patent application is part of the original disclosure of the application.
The U.S. Patent and Trademark Office indicated that if a preliminary amendment was filed in a format that could not be included in the publication, the Office of Initial Patent Examination would issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. The Office now took the position that the only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification. As a result, the Office would mail a notice requiring a substitute specification if an applicant included a preliminary amendment to a specification (other than the claims) on filing.
The notice went on to mention that, since 1997, the Office encouraged applicants to file continuation and divisional patent applications without preliminary amendments by including any desired changes as part of the specification and drawings of the new application. A copy of the declaration from a prior application could still be filed in a continuation of divisional application even if the specification of the continuation or divisional was different so long as no new matter was introduced.
A preliminary amendment only to the claims would include a complete claim listing which the Office could publish as submitted, so that type of preliminary amendment did not require a substitute specification.
U.S. Patent and Trademark Office did uniformly require substitute specifications if continuation applications were filed with Preliminary Amendments. Preliminary Amendments typically would amend the specification (other than the claims) by adding a cross-reference to the parent application. Many patent practitioners were used to filing continuations this way, and were either unfamiliar with or not comfortable with adapting to the 1997 rule change that deleted the "true copy" requirement.
2005 New Pre-Appeal Brief Conference
In June 2005, the U.S. Patent and Trademark Office published a notice announcing a new pre-appeal brief conference pilot program. The announcement appeared on the web site of the U.S. Patent and Trademark Office, then was published in the Official Gazette of July 12, 2005.
The rule change notice can be found here:
http://www.patentsusa.com/20050620_Pre-appeal.pdf
The procedure was effective upon publication of the notice. The stated purpose of the program was to offer applicants an avenue to request that a panel of examiners formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief.
This program offers applicants an opportunity to request a review employing an appeal conference, prior to the filing of an appeal brief. During a panel review, a panel of examiners (including the examiner of record) considers the merits of each ground of rejection for which appeal has been requested and issues a written decision as to the status of the application.
To request the procedure, an applicant must file a request for patent review along with the filing of a notice of appeal and before the filing of an appeal brief. In five (5) or less total pages, applicants are to provide a succinct, concise and focused set of arguments for which the review is being requested. No after-final or proposed amendments may accompany the request. The request should specify clear errors in the examiner's rejections; or the examiner's omissions of one or more essential elements needed for a prima facie rejection. Requests are limited to appealable, not petitionable matters.
Upon receipt of a properly filed request, a Technology Center Art Unit supervisor is to designate a panel of examiners experienced in the field of technology to review the applicant's remarks and the examiner's rejections. The panel will include at least a supervisor and the examiner of record. The applicant will not be permitted to attend the review and no interviews will be granted prior to issuance of the panel's decision.
The Office should mail a decision within 45 days of receipt of a properly filed request.
After the review is complete, the Office will mail a decision on the status of the application. The decision will state one of the following:
-Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
-Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
-Finding 3: The application is allowed on the existing claims and prosecution remains closed.
-Finding 4: The request fails to comply with the submission requirements and is dismissed.
The decision will summarize the status of the pending claims (still rejected, withdrawn rejections, objected to or allowable claims).
A decision by a pre-appeal brief conference panel to withdraw the rejections of any or all of the claims on appeal is not a decision by a panel of the Board of Patent Appeals and Interferences, and, as such, would not result in any patent term extension.
The decision will not contain any additional grounds of rejection or any restatement of previously made rejections. Such matters will be addressed, as appropriate, in the Examiner's Answer.
The time period for filing an appeal brief will be reset to be one month from mailing of the decision on the request, or the balance of the two-month time period running from the receipt of the notice of appeal, whichever is greater.
I have had mixed results with this procedure. In my experience, the panel has consisted of the examiner, his supervisor, and one other examiner. This often means that two out of three people are already disposed towards supporting the rejection. Sometimes, I would receive a short decision saying the case should proceed to appeal and would then have a short one month period to prepare the Appeal Brief. Other times, prosecution would be reopened with a different rejection. But sometimes the procedure would result in an allowance.
The rule change notice can be found here:
http://www.patentsusa.com/20050620_Pre-appeal.pdf
The procedure was effective upon publication of the notice. The stated purpose of the program was to offer applicants an avenue to request that a panel of examiners formally review the legal and factual basis of the rejections in their application prior to the filing of an appeal brief.
This program offers applicants an opportunity to request a review employing an appeal conference, prior to the filing of an appeal brief. During a panel review, a panel of examiners (including the examiner of record) considers the merits of each ground of rejection for which appeal has been requested and issues a written decision as to the status of the application.
To request the procedure, an applicant must file a request for patent review along with the filing of a notice of appeal and before the filing of an appeal brief. In five (5) or less total pages, applicants are to provide a succinct, concise and focused set of arguments for which the review is being requested. No after-final or proposed amendments may accompany the request. The request should specify clear errors in the examiner's rejections; or the examiner's omissions of one or more essential elements needed for a prima facie rejection. Requests are limited to appealable, not petitionable matters.
Upon receipt of a properly filed request, a Technology Center Art Unit supervisor is to designate a panel of examiners experienced in the field of technology to review the applicant's remarks and the examiner's rejections. The panel will include at least a supervisor and the examiner of record. The applicant will not be permitted to attend the review and no interviews will be granted prior to issuance of the panel's decision.
The Office should mail a decision within 45 days of receipt of a properly filed request.
After the review is complete, the Office will mail a decision on the status of the application. The decision will state one of the following:
-Finding 1: The application remains under appeal because there is at least one actual issue for appeal.
-Finding 2: Prosecution on the merits is reopened and an appropriate Office communication will follow in due course. In appropriate circumstances, a proposed amendment may accompany the panel's decision proposing changes that, if accepted, may result in an indication of allowability for the contested claim(s).
-Finding 3: The application is allowed on the existing claims and prosecution remains closed.
-Finding 4: The request fails to comply with the submission requirements and is dismissed.
The decision will summarize the status of the pending claims (still rejected, withdrawn rejections, objected to or allowable claims).
A decision by a pre-appeal brief conference panel to withdraw the rejections of any or all of the claims on appeal is not a decision by a panel of the Board of Patent Appeals and Interferences, and, as such, would not result in any patent term extension.
The decision will not contain any additional grounds of rejection or any restatement of previously made rejections. Such matters will be addressed, as appropriate, in the Examiner's Answer.
The time period for filing an appeal brief will be reset to be one month from mailing of the decision on the request, or the balance of the two-month time period running from the receipt of the notice of appeal, whichever is greater.
I have had mixed results with this procedure. In my experience, the panel has consisted of the examiner, his supervisor, and one other examiner. This often means that two out of three people are already disposed towards supporting the rejection. Sometimes, I would receive a short decision saying the case should proceed to appeal and would then have a short one month period to prepare the Appeal Brief. Other times, prosecution would be reopened with a different rejection. But sometimes the procedure would result in an allowance.
Friday, March 16, 2007
2004 Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan
On September 21, 2004, the U.S. Patent and Trademark Office published substantial rule changes to support implementation of the United States Patent and Trademark Office's "21st Century Strategic Plan".
The rule change notice can be found here:
http://www.patentsusa.com/20040921_21_Century.pdf
Most of the rule changes were effective October 21, 2004, but some changes were effective September 21, 2004 and November 22, 2004. The stated purpose of the rule changes was to "transform the Office into a quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system."
Section 1.4, before the changes, already indicated that copies of signatures were permitted. Section 1.4 was amended to specifically indicate that the signatures covered under 1.4(d)(1) are handwritten signatures and that dark ink or its equivalent must be used. Section 1.4(d)(2) was rewritten to provide for the signing of correspondence by use of an S-Signature, defined as a signature between forward slash marks. The S-signature was intended for electronic filings, but could be utilized with correspondence filed in the Office in paper, by facsimile transmission, or via the electronic filing system. A signer must directly type his or her own signature on a keyboard--a secretary is not permitted to type in the signature of a practitioner even if the practitioner directs the secretary to do so. A person submitting a document signed by another is obligated to have a reasonable basis to believe that that the signature on the document was actually inserted by that person and should retain evidence of authenticity of the signature. Sanctions are possible for violating certification as to signatures. Provision was made for the requirement of ratification or confirmation or evidence of authenticity of a signature where the Office has reasonable doubt as to its authenticity or where it does not clearly identify the person signing.
Section 1.6 was amended to provide that black and white drawings may be faxed to the Office. Color drawings must be hand-carried or mailed.
Section 1.8(b) was amended to permit notifying the Office of a previous mailing or transmitting of correspondence when "a reasonable amount of time has elapsed from the time of mailing or transmitting of correspondence." With this amendment, applicants would not be required to wait until the end of the maximum extendable period for reply set forth in an Office action before informing the Office of the previously submitted correspondence and providing a duplicate copy and statement attesting to the previous timely mailing.
Section 1.10 was amended to address the effects of interruptions or emergencies in U.S. Postal Service "Express Mail" service. New section (g) was added to provide that any person who mails correspondence utilizing the "Express Mail" service, but has the correspondence returned due to an interruption or emergency in "Express Mail" service , may petition the Director to consider the correspondence as filed on a particular date in the Office.
Section 1.19(g) was amended to provide a mechanism for requesting copies of a document in a form other than that normally provided by the Office.
Section 1.27 was amended to add a new paragraph which stated that a security interest does not involve an obligation to transfer rights in the invention unless the security interest is defaulted upon.
Section 1.27 relating to the size standards for a small business concern was amended to refer specifically to the size standards set forth in 13 C.F.R. Section 121.801 through 121.805 instead of referring to all of 13 C.F.R. Section 121.
Section 1.52 was amended to allow compact disc files to be used if the total number of pages occupied by all tables exceeds one hundred. The CDs must be closed to further recording. Landscape orientation of a table should be specified on a transmittal letter. A 12-point font size was recommended.
A new Section 1.57 was added that provided that if all or a portion of the specification or drawings is inadvertently omitted from an application containing a priority claim to a prior-filed foreign application or a benefit claim for a prior-filed provisional, nonprovisional, or international application, that portion could be added by amendment even though there was no explicit incorporation by reference of the prior application. This rule change strongly benefits applicants. In the past, if a drawing page got stuck in a copier, for example, and didn’t get filed, it could not be added later without a loss of the filing date, if it was considered to contain new matter when compared to the rest of the application, unless the application incorporated another application by reference that contained that drawing. A priority claim was not sufficient. The applicant must supply a copy of the prior-filed application, and a translation into English if the prior-filed application was not in English, and must identify where the inadvertently omitted portion can be found in the prior-filed application. The Office may set a deadline for the amendment if they notice the omission, but in no case can the amendment be later than the close of prosecution. Proper incorporation by reference was limited to instances only where the word “incorporated by reference” or the root of the words “incorporate” and “reference” appear. A bright line test was intended.
Section 1.58 was amended to provide that the same table not be included in both the drawings and in the specification of an application.
Section 1.63 was amended to delete “authorization of agent” language.
Section 1.76 was amended to require that any application data sheet (ADS) contain seven specific headings, and to require all appropriate data for each section heading. If no ADS was originally filed but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even if it is the first-filed, must be titled “Supplemental Application Data Sheet.” Use of an application data sheet was strongly recommended when there was a change in the spelling of an inventor’s name. A supplemental ADS must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions by strike-through or brackets. If a newly filed ADS is inconsistent with information provided in another document submitted at the same time or earlier than the ADS submission, the newly filed ADS will control.
Section 1.78 was amended to permit the required reference to a prior application to be in multiple consecutive sentences at the beginning of the specification, after the title, rather than being limited to the first sentence of the specification. 1.78(c) was amended to clarify that the prior art exception under 35 U.S.C. Section 103(c) does not apply to double patenting rejections.
Section 1.83 was amended to provide that tables and sequence listings that appear in the specification are not permitted to be reprinted in the drawings
Section 1.84 was amended to remove the previous requirement for submission of a black and white copy of any color drawings or photographs. Further, each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” so that the Office will recognize how to treat such a drawing for entry into the application.
Section 1.91was amended to add a paragraph which provides that a model or exhibit must be accompanied by photographs that show multiple views of the material features of the model or exhibit.
Section 1.94 was amended to provide that when notification is sent to an applicant, arrangements must be made by the applicant for the return of a model, exhibit or specimen, at applicant’s expense, in response to such notification. The Office may return the model at any time when it is no longer necessary for the conduct of business. The Office need not wait until the close of prosecution or later. Applicant is required to retain the returned model for the enforceable life of the patent. Applicant may be called upon to resubmit the returned model under appropriate circumstances, such as where a continuing application is filed. Where the model is perishable, the Office will be presumed to have permission to dispose of the item without notice to applicant.
Section 1.98 was amended to require a specified format for each page of an Information Disclosure Statement and to require that U.S. patents and application publications be listed in a section separately from citations of other documents. 1.98 was also amended to eliminate the requirement for a copy of each U.S. patent or U.S. patent application regardless of the filing date of the application in which the copies are to be cited.
Section 1.102 was amended to provide for a petition to make an application special without a fee when the application materially relates to a counter-terrorism invention. 1.102(c) set forth two bases for making an application special: (1) Applicant’s age or health; or (2) the invention is of a particular type (e.g., will materially enhance the quality of the environment, materially contribute to the development or conservation of energy resources, or materially contribute to countering terrorism). In view of the divergent subject matter, a petition to make special must identify the particular basis.
Section 1.105 was amended to indicate that if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or not readily available rather than take a categorical position. Examples of where stipulations and interrogatories may be used to elicit technical factual information reasonably necessary for examination were provided, including applicant’s actual knowledge: (1) of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features; (2) about the support found in the disclosure for means or step-plus-function claims; (3) of precisely which portions of the disclosure provide the written description and enablement support for specific claim elements; (4) of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term. Many patent attorneys strongly dislike this section as it could be used to shift the burden of examination from an examiner to the applicant and can cause file wrapper estoppel problems. So far, this section has not been frequently used by examiners.
Section 1.111 was amended to provide that a supplemental reply will not be entered as a matter of right except if it is filed within the period when action by the Office is suspended. The Office may enter a supplemental reply in certain specified situations such as if the reply is limited to cancellation of a claim, adoption of an examiner suggestion, placement of the application in condition for allowance, reply to an Office requirement made after the first reply was filed; correction of informalities; or simplification of issues for appeal.
Section 1.115 was amended to provide that a patent application publication may include preliminary amendments. A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
Section 1.121 was amended to recite that any new sheet of drawings containing an additional figure must be labeled in the top margin as a “New Sheet.”
Section 1.137 was amended to clarify that when reviving a reissue application, a terminal disclaimer is not required.
Section 1.165 was amended to remove the requirement for a black and white copy of a color drawing or photograph.
Section 1.175 was amended to add a new paragraph requiring a new oath or declaration which identifies an error not corrected in an earlier reissue application be filed in any continuing reissue application that does not replace its parent reissue application.
Section 1.178 relating to reissues was amended to eliminate the requirement for physical surrender of the original letters patents.
Section 1.215 was amended to provide that patent application publication may be based upon amendments to the specification that are reflected in a substitute specification, provided that such substitute specification is submitted in sufficient time to be entered into the Office file wrapper before technical preparations for publication have begun.
Section 1.291 recited that in order for a protest submission to be matched with an application, it must include sufficient information to adequately identify the application for which the submission is being made. If the protestor is unable to identify the application by application number and filing date, but believe s such an application to be pending, the protest should be directed to the attention of the Office of Petitions along with as much identifying data as is possible, such as the name of an inventor. Protest s which do not comply with the rules may be returned or discarded at the sole discretion of the Office.
Section 1.311 was amended to provide that the submission of an incorrect issue fee or publication fee (after the mailing of a Notice of Allowance) would operate as a valid request to charge the correct issue fee to any deposit account identified in a previously filed authorization to charge such fees.
Section 1.324 was amended by adding an explicit reference to 35 U.S.C. Section 256 and its requirement that inventorship may be changed only by way of a request from all inventors together with assignees of the entire interest, or on order of a court. Reference to a petition to change inventorship was eliminated.
Various fees were changed. Multiple other changes were made.
The rule change notice can be found here:
http://www.patentsusa.com/20040921_21_Century.pdf
Most of the rule changes were effective October 21, 2004, but some changes were effective September 21, 2004 and November 22, 2004. The stated purpose of the rule changes was to "transform the Office into a quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system."
Section 1.4, before the changes, already indicated that copies of signatures were permitted. Section 1.4 was amended to specifically indicate that the signatures covered under 1.4(d)(1) are handwritten signatures and that dark ink or its equivalent must be used. Section 1.4(d)(2) was rewritten to provide for the signing of correspondence by use of an S-Signature, defined as a signature between forward slash marks. The S-signature was intended for electronic filings, but could be utilized with correspondence filed in the Office in paper, by facsimile transmission, or via the electronic filing system. A signer must directly type his or her own signature on a keyboard--a secretary is not permitted to type in the signature of a practitioner even if the practitioner directs the secretary to do so. A person submitting a document signed by another is obligated to have a reasonable basis to believe that that the signature on the document was actually inserted by that person and should retain evidence of authenticity of the signature. Sanctions are possible for violating certification as to signatures. Provision was made for the requirement of ratification or confirmation or evidence of authenticity of a signature where the Office has reasonable doubt as to its authenticity or where it does not clearly identify the person signing.
Section 1.6 was amended to provide that black and white drawings may be faxed to the Office. Color drawings must be hand-carried or mailed.
Section 1.8(b) was amended to permit notifying the Office of a previous mailing or transmitting of correspondence when "a reasonable amount of time has elapsed from the time of mailing or transmitting of correspondence." With this amendment, applicants would not be required to wait until the end of the maximum extendable period for reply set forth in an Office action before informing the Office of the previously submitted correspondence and providing a duplicate copy and statement attesting to the previous timely mailing.
Section 1.10 was amended to address the effects of interruptions or emergencies in U.S. Postal Service "Express Mail" service. New section (g) was added to provide that any person who mails correspondence utilizing the "Express Mail" service, but has the correspondence returned due to an interruption or emergency in "Express Mail" service , may petition the Director to consider the correspondence as filed on a particular date in the Office.
Section 1.19(g) was amended to provide a mechanism for requesting copies of a document in a form other than that normally provided by the Office.
Section 1.27 was amended to add a new paragraph which stated that a security interest does not involve an obligation to transfer rights in the invention unless the security interest is defaulted upon.
Section 1.27 relating to the size standards for a small business concern was amended to refer specifically to the size standards set forth in 13 C.F.R. Section 121.801 through 121.805 instead of referring to all of 13 C.F.R. Section 121.
Section 1.52 was amended to allow compact disc files to be used if the total number of pages occupied by all tables exceeds one hundred. The CDs must be closed to further recording. Landscape orientation of a table should be specified on a transmittal letter. A 12-point font size was recommended.
A new Section 1.57 was added that provided that if all or a portion of the specification or drawings is inadvertently omitted from an application containing a priority claim to a prior-filed foreign application or a benefit claim for a prior-filed provisional, nonprovisional, or international application, that portion could be added by amendment even though there was no explicit incorporation by reference of the prior application. This rule change strongly benefits applicants. In the past, if a drawing page got stuck in a copier, for example, and didn’t get filed, it could not be added later without a loss of the filing date, if it was considered to contain new matter when compared to the rest of the application, unless the application incorporated another application by reference that contained that drawing. A priority claim was not sufficient. The applicant must supply a copy of the prior-filed application, and a translation into English if the prior-filed application was not in English, and must identify where the inadvertently omitted portion can be found in the prior-filed application. The Office may set a deadline for the amendment if they notice the omission, but in no case can the amendment be later than the close of prosecution. Proper incorporation by reference was limited to instances only where the word “incorporated by reference” or the root of the words “incorporate” and “reference” appear. A bright line test was intended.
Section 1.58 was amended to provide that the same table not be included in both the drawings and in the specification of an application.
Section 1.63 was amended to delete “authorization of agent” language.
Section 1.76 was amended to require that any application data sheet (ADS) contain seven specific headings, and to require all appropriate data for each section heading. If no ADS was originally filed but applicant wants to submit an ADS to correct, modify, or augment the original application data, the ADS, even if it is the first-filed, must be titled “Supplemental Application Data Sheet.” Use of an application data sheet was strongly recommended when there was a change in the spelling of an inventor’s name. A supplemental ADS must be submitted with all changes indicated, preferably with insertions or additions indicated by underlining, and deletions by strike-through or brackets. If a newly filed ADS is inconsistent with information provided in another document submitted at the same time or earlier than the ADS submission, the newly filed ADS will control.
Section 1.78 was amended to permit the required reference to a prior application to be in multiple consecutive sentences at the beginning of the specification, after the title, rather than being limited to the first sentence of the specification. 1.78(c) was amended to clarify that the prior art exception under 35 U.S.C. Section 103(c) does not apply to double patenting rejections.
Section 1.83 was amended to provide that tables and sequence listings that appear in the specification are not permitted to be reprinted in the drawings
Section 1.84 was amended to remove the previous requirement for submission of a black and white copy of any color drawings or photographs. Further, each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” so that the Office will recognize how to treat such a drawing for entry into the application.
Section 1.91was amended to add a paragraph which provides that a model or exhibit must be accompanied by photographs that show multiple views of the material features of the model or exhibit.
Section 1.94 was amended to provide that when notification is sent to an applicant, arrangements must be made by the applicant for the return of a model, exhibit or specimen, at applicant’s expense, in response to such notification. The Office may return the model at any time when it is no longer necessary for the conduct of business. The Office need not wait until the close of prosecution or later. Applicant is required to retain the returned model for the enforceable life of the patent. Applicant may be called upon to resubmit the returned model under appropriate circumstances, such as where a continuing application is filed. Where the model is perishable, the Office will be presumed to have permission to dispose of the item without notice to applicant.
Section 1.98 was amended to require a specified format for each page of an Information Disclosure Statement and to require that U.S. patents and application publications be listed in a section separately from citations of other documents. 1.98 was also amended to eliminate the requirement for a copy of each U.S. patent or U.S. patent application regardless of the filing date of the application in which the copies are to be cited.
Section 1.102 was amended to provide for a petition to make an application special without a fee when the application materially relates to a counter-terrorism invention. 1.102(c) set forth two bases for making an application special: (1) Applicant’s age or health; or (2) the invention is of a particular type (e.g., will materially enhance the quality of the environment, materially contribute to the development or conservation of energy resources, or materially contribute to countering terrorism). In view of the divergent subject matter, a petition to make special must identify the particular basis.
Section 1.105 was amended to indicate that if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or not readily available rather than take a categorical position. Examples of where stipulations and interrogatories may be used to elicit technical factual information reasonably necessary for examination were provided, including applicant’s actual knowledge: (1) of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features; (2) about the support found in the disclosure for means or step-plus-function claims; (3) of precisely which portions of the disclosure provide the written description and enablement support for specific claim elements; (4) of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term. Many patent attorneys strongly dislike this section as it could be used to shift the burden of examination from an examiner to the applicant and can cause file wrapper estoppel problems. So far, this section has not been frequently used by examiners.
Section 1.111 was amended to provide that a supplemental reply will not be entered as a matter of right except if it is filed within the period when action by the Office is suspended. The Office may enter a supplemental reply in certain specified situations such as if the reply is limited to cancellation of a claim, adoption of an examiner suggestion, placement of the application in condition for allowance, reply to an Office requirement made after the first reply was filed; correction of informalities; or simplification of issues for appeal.
Section 1.115 was amended to provide that a patent application publication may include preliminary amendments. A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
Section 1.121 was amended to recite that any new sheet of drawings containing an additional figure must be labeled in the top margin as a “New Sheet.”
Section 1.137 was amended to clarify that when reviving a reissue application, a terminal disclaimer is not required.
Section 1.165 was amended to remove the requirement for a black and white copy of a color drawing or photograph.
Section 1.175 was amended to add a new paragraph requiring a new oath or declaration which identifies an error not corrected in an earlier reissue application be filed in any continuing reissue application that does not replace its parent reissue application.
Section 1.178 relating to reissues was amended to eliminate the requirement for physical surrender of the original letters patents.
Section 1.215 was amended to provide that patent application publication may be based upon amendments to the specification that are reflected in a substitute specification, provided that such substitute specification is submitted in sufficient time to be entered into the Office file wrapper before technical preparations for publication have begun.
Section 1.291 recited that in order for a protest submission to be matched with an application, it must include sufficient information to adequately identify the application for which the submission is being made. If the protestor is unable to identify the application by application number and filing date, but believe s such an application to be pending, the protest should be directed to the attention of the Office of Petitions along with as much identifying data as is possible, such as the name of an inventor. Protest s which do not comply with the rules may be returned or discarded at the sole discretion of the Office.
Section 1.311 was amended to provide that the submission of an incorrect issue fee or publication fee (after the mailing of a Notice of Allowance) would operate as a valid request to charge the correct issue fee to any deposit account identified in a previously filed authorization to charge such fees.
Section 1.324 was amended by adding an explicit reference to 35 U.S.C. Section 256 and its requirement that inventorship may be changed only by way of a request from all inventors together with assignees of the entire interest, or on order of a court. Reference to a petition to change inventorship was eliminated.
Various fees were changed. Multiple other changes were made.
2004 Rules of Practice Before the Board of Patent Appeals and Interferences
On August 14, 2004, the U.S. Patent and Trademark Office published substantial changes relating to the rules of practicing before the Board of Patent Appeals and Interferences.
The rule change notice can be found here:
http://www.patentsusa.com/20040812_Appeals.pdf
The rule changes were effective September 13, 2004. The stated purpose of the rule changes was to reflect new procedures to significantly overhaul the operations of the Board to address concerns about the duration of proceedings before the Board.
Among other changes, 37 C.F.R. Section 116 was amended to limit amendments after a final office action to such amendments filed before or with an appeal under sections 41.31 or 41.61.
Section 41.37 was added to incorporate the requirements of former 37 C.F.R. Section 192. In addition, the following changes were made:
-One copy of the Appeal Brief became required rather than three copies, consistent with the Office's move to an electronic file wrapper.
-The deadline for filing the Brief became two months from the date of the Notice of Appeal even if the time allowed for reply to the Office Action was later.
-A statement became required in the Brief identifying the real party in interest even if the party named in the caption of the brief is the real party in interest.
-Identification became required of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant's legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.
-Both a statement of the status of all the claims (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims being appealed became required.
-A concise explanation of the invention became required FOR EACH of the independent claims involved in the appeal, which explanations were to refer to the specification by page and line number, and to the drawings, if any, by reference characters. This new requirement to annotate each independent claim resulted in a substantial increase in the amount of time required to prepare an appeal brief, and added costs to applicants.
-A concise statement listing each ground of rejection presented for review became required rather than issues for review.
-The previous grouping of claims requirement was removed.
-A paragraph was added to require appellants to include an evidence appendix of any evidence relied upon by appellant in the appeal with a statement setting forth where that evidence was entered in the record by the examiner. After this rule change, the U.S. Patent and Trademark Office began to bounce appeal briefs that did not include evidence appendices, even if the appellant didn't intend to present evidence. Instead, the USPTO wanted a sheet titled "Evidence Appendix" including a statement to the effect that there was no evidence appendix.
-A paragraph was added to require appellants to include a related proceeding appendix containing copies of decisions rendered by a court or the Board in any related proceedings. After this rule change, the USPTO began to bounce appeal briefs that did not include related proceeding appendices, even if there were no related proceedings.
-A paragraph was added to permit a new ground of rejection to be included in an examiner's answer.
-A paragraph was added stating that when an examiner's answer sets forth a new ground of rejection, appellant is required within two months to either request that prosecution be reopened by filing a reply, or to file a reply brief.
-Paragraph (a)(1) of Section 41.43 set forth the ability of the examiner to withdraw a final rejection and reopen prosecution as an alternative to the use of a supplemental examiner's answer. Some examiners have adopted a strategy of reopening prosecution, citing a new reference, if an applicant files an appeal brief. Sometimes, they will do this more than one time, denying the ability of the applicant to reach the Board of Appeals. A new Brief must be prepared by an applicant, resulting in substantial expenses.
A large number of other changes were also made. Various technical changes were made, such as to define terms, and move or rearrange rules. There were also changes relating to reexamination procedures, as well as other changes.
The rule change notice can be found here:
http://www.patentsusa.com/20040812_Appeals.pdf
The rule changes were effective September 13, 2004. The stated purpose of the rule changes was to reflect new procedures to significantly overhaul the operations of the Board to address concerns about the duration of proceedings before the Board.
Among other changes, 37 C.F.R. Section 116 was amended to limit amendments after a final office action to such amendments filed before or with an appeal under sections 41.31 or 41.61.
Section 41.37 was added to incorporate the requirements of former 37 C.F.R. Section 192. In addition, the following changes were made:
-One copy of the Appeal Brief became required rather than three copies, consistent with the Office's move to an electronic file wrapper.
-The deadline for filing the Brief became two months from the date of the Notice of Appeal even if the time allowed for reply to the Office Action was later.
-A statement became required in the Brief identifying the real party in interest even if the party named in the caption of the brief is the real party in interest.
-Identification became required of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant's legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.
-Both a statement of the status of all the claims (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims being appealed became required.
-A concise explanation of the invention became required FOR EACH of the independent claims involved in the appeal, which explanations were to refer to the specification by page and line number, and to the drawings, if any, by reference characters. This new requirement to annotate each independent claim resulted in a substantial increase in the amount of time required to prepare an appeal brief, and added costs to applicants.
-A concise statement listing each ground of rejection presented for review became required rather than issues for review.
-The previous grouping of claims requirement was removed.
-A paragraph was added to require appellants to include an evidence appendix of any evidence relied upon by appellant in the appeal with a statement setting forth where that evidence was entered in the record by the examiner. After this rule change, the U.S. Patent and Trademark Office began to bounce appeal briefs that did not include evidence appendices, even if the appellant didn't intend to present evidence. Instead, the USPTO wanted a sheet titled "Evidence Appendix" including a statement to the effect that there was no evidence appendix.
-A paragraph was added to require appellants to include a related proceeding appendix containing copies of decisions rendered by a court or the Board in any related proceedings. After this rule change, the USPTO began to bounce appeal briefs that did not include related proceeding appendices, even if there were no related proceedings.
-A paragraph was added to permit a new ground of rejection to be included in an examiner's answer.
-A paragraph was added stating that when an examiner's answer sets forth a new ground of rejection, appellant is required within two months to either request that prosecution be reopened by filing a reply, or to file a reply brief.
-Paragraph (a)(1) of Section 41.43 set forth the ability of the examiner to withdraw a final rejection and reopen prosecution as an alternative to the use of a supplemental examiner's answer. Some examiners have adopted a strategy of reopening prosecution, citing a new reference, if an applicant files an appeal brief. Sometimes, they will do this more than one time, denying the ability of the applicant to reach the Board of Appeals. A new Brief must be prepared by an applicant, resulting in substantial expenses.
A large number of other changes were also made. Various technical changes were made, such as to define terms, and move or rearrange rules. There were also changes relating to reexamination procedures, as well as other changes.
Wednesday, March 14, 2007
2004 Revision of Power of Attorney and Assignment Practice
On May 26, 2004, the U.S. Patent and Trademark Office published rule changes that required applicants to use Customer Numbers if more than ten registered practitioners were to be made of record.
The rule change notice can be found here:
http://www.patentsusa.com/20040526_Power_of_Attorney.pdf
The rule changes were effective June 25, 2004.
The purpose of the changes was to reduce the processing burden on the office. The rule changes also eliminated associate power of attorney practice. The reasoning was that an associate power of attorney was not necessary for a patent practitioner to take most actions in a patent application. Instead of filing an associate power of attorney, a patent practitioner could instead file an "Authorization to Act in a Representative Capacity" after these rules changes.
Another change was that the Office discontinued the practice of returning patent and trademark assignment documents. Assignments would be scanned into the Office's electronic database. Because documents would no longer be returned, the rule changes eliminated original assignments from the list of documents that could be submitted for recordation.
If more than ten patent practitioners were named in a combined declaration and power of attorney (e.g., from an earlier filed application), applicants were to provide a separate paper indicating which ten were to be made of record. Then the Office of Initial Patent Examination would enter the practitioners listed on the separate paper. If more than ten attorneys were named and a separate paper was not provided, then no patent practitioners would be made of record. If a patent practitioner later attempted to sign a batch update request to request that the address associated with the Customer Number be used for correspondence, that request would be rejected because the patent practitioner was not of record. A newly executed power of attorney, or old power of attorney and separate paper listing ten practitioners would have to be provided.
The rule change notice can be found here:
http://www.patentsusa.com/20040526_Power_of_Attorney.pdf
The rule changes were effective June 25, 2004.
The purpose of the changes was to reduce the processing burden on the office. The rule changes also eliminated associate power of attorney practice. The reasoning was that an associate power of attorney was not necessary for a patent practitioner to take most actions in a patent application. Instead of filing an associate power of attorney, a patent practitioner could instead file an "Authorization to Act in a Representative Capacity" after these rules changes.
Another change was that the Office discontinued the practice of returning patent and trademark assignment documents. Assignments would be scanned into the Office's electronic database. Because documents would no longer be returned, the rule changes eliminated original assignments from the list of documents that could be submitted for recordation.
If more than ten patent practitioners were named in a combined declaration and power of attorney (e.g., from an earlier filed application), applicants were to provide a separate paper indicating which ten were to be made of record. Then the Office of Initial Patent Examination would enter the practitioners listed on the separate paper. If more than ten attorneys were named and a separate paper was not provided, then no patent practitioners would be made of record. If a patent practitioner later attempted to sign a batch update request to request that the address associated with the Customer Number be used for correspondence, that request would be rejected because the patent practitioner was not of record. A newly executed power of attorney, or old power of attorney and separate paper listing ten practitioners would have to be provided.
Monday, March 12, 2007
2003 Elimination of CPAs
On June 24, 2003, the U.S. Patent and Trademark Office announced that Continued Prosecution Applications (CPAs) were being eliminated, effective July 14, 2003.
The announcement can be found here:
http://www.patentsusa.com/20031023_CPA_Eliminated.pdf
The reason given for eliminating CPAs was that CPA practice was largely redundant in view of RCE practiced introduced by the American Inventors Protection Act. CPAs are discussed below in the 1997 post, and RCEs are discussed in the American Inventors Protection Act post. Both were used to continue prosecution after, for example, a Final Rejection was issued by an Examiner. Filing fee calculations were different between RCEs and CPAs, and filing a CPA would eliminate the applicability of certain commonly owned prior art.
The announcement can be found here:
http://www.patentsusa.com/20031023_CPA_Eliminated.pdf
The reason given for eliminating CPAs was that CPA practice was largely redundant in view of RCE practiced introduced by the American Inventors Protection Act. CPAs are discussed below in the 1997 post, and RCEs are discussed in the American Inventors Protection Act post. Both were used to continue prosecution after, for example, a Final Rejection was issued by an Examiner. Filing fee calculations were different between RCEs and CPAs, and filing a CPA would eliminate the applicability of certain commonly owned prior art.
Sunday, March 11, 2007
2003 Revision of PCT Procedure
In October 2003, U.S. Patent and Trademark Office published amendments to the rules of practice to conform them to amendments made to PCT regulations that took effect on January 1, 2004. The revised U.S. rules were also effective January 1, 2004.
The rule changes can be found here:
http://www.patentsusa.com/20031020_PCT.pdf
Under the new procedures, the USPTO, acting as International Searching Authority (ISA), became responsible for establishing a preliminary and non-binding written opinion during Chapter 1 procedure. Previously, written opinions were part of Chapter II procedure and were established if a PCT applicant filed a Chapter II demand to request international examination. Under the new procedure, if an applicant were to timely file a Demand for international preliminary examination, the written opinion of the ISA would be considered to be the written opinion of the International Preliminary Examining Authority. If a Chapter II demand was not timely filed, the written opinion of the ISA would form the basis for the issuance of an International Preliminary Report on Patentability.
Under the revised system, the time limit for filing a Chapter II Demand changed to the later of three months from issuance of the international search report and written opinion of the ISA or twenty-two months from the priority date.
The comments noted that, although Chapter II Demands were no longer necessary in the U.S., applicants might desire to file the Demand prior to the expiration of nineteen months from the priority date in order to delay entry into the national stage for the few remaining contracting states that took a reservation to the new thirty month time limit.
The amendments also resulted in automatic designation of all states upon filing a PCT application. A simplified fee system was also introduced, and other changes were made.
The rule changes can be found here:
http://www.patentsusa.com/20031020_PCT.pdf
Under the new procedures, the USPTO, acting as International Searching Authority (ISA), became responsible for establishing a preliminary and non-binding written opinion during Chapter 1 procedure. Previously, written opinions were part of Chapter II procedure and were established if a PCT applicant filed a Chapter II demand to request international examination. Under the new procedure, if an applicant were to timely file a Demand for international preliminary examination, the written opinion of the ISA would be considered to be the written opinion of the International Preliminary Examining Authority. If a Chapter II demand was not timely filed, the written opinion of the ISA would form the basis for the issuance of an International Preliminary Report on Patentability.
Under the revised system, the time limit for filing a Chapter II Demand changed to the later of three months from issuance of the international search report and written opinion of the ISA or twenty-two months from the priority date.
The comments noted that, although Chapter II Demands were no longer necessary in the U.S., applicants might desire to file the Demand prior to the expiration of nineteen months from the priority date in order to delay entry into the national stage for the few remaining contracting states that took a reservation to the new thirty month time limit.
The amendments also resulted in automatic designation of all states upon filing a PCT application. A simplified fee system was also introduced, and other changes were made.
Saturday, March 10, 2007
2003 Information Disclosure Statements Without Copies
On July 11, 2003, the U.S. Patent and Trademark Office waived the requirement for submitting copies of citied U.S. patents and patent application publications with Information Disclosure Statements. This waiver applied to patent applications filed after June 30, 2003.
The waiver can be found here:
http://www.patentsusa.com/20030730_IDS_Without_Copies.pdf
The U.S. Patent and Trademark Office had previously eliminated the need for patent copies only if an Information Disclosure Statement was filed using the Electronic Filing System. Adoption of early versions of the patent electronic filing system was very low because early versions were very complex, requiring installation and understanding of two software programs called ePave and ABX. The trademark electronic filing system, in contrast, was web-based and very easy to use at this time. The current electronic filing system for patents is quite straightforward and easy to use.
The waiver can be found here:
http://www.patentsusa.com/20030730_IDS_Without_Copies.pdf
The U.S. Patent and Trademark Office had previously eliminated the need for patent copies only if an Information Disclosure Statement was filed using the Electronic Filing System. Adoption of early versions of the patent electronic filing system was very low because early versions were very complex, requiring installation and understanding of two software programs called ePave and ABX. The trademark electronic filing system, in contrast, was web-based and very easy to use at this time. The current electronic filing system for patents is quite straightforward and easy to use.
2003 Changes To Implement Electronic Maintenance of Official Patent Application Records
On June 30, 2003, the U.S. Patent and Trademark Office published a rule change package as part of its "21st Century Strategic Plan" to implement electronic image processing of patent applications. The rule changes can be found here:
http://www.patentsusa.com/20030630_Electronic_Records.pdf
The rule changes were effective July 30, 2003.
The USPTO began to use image technology to replace the standard paper processing of patent applications. Paper contents of patent application files were scanned and thereafter all processing and examination by all Office personnel was to be conducted with the electronic image files. Various rules were amended to be consistent with electronic processing of files.
For example, Section 1.3 was amended to provide that papers presented in violation of the decorum and courtesy requirements, would not be included in the electronic official records. If such a document had been captured electronically, the office would electronically remove it from the official file. If the paper was intended as a reply to an Office Action, it would not be considered a bona fide reply and the period set in the prior Office Action would continue to run.
37 C.F.R. Section 1.9 was amended to clarify that the word "paper" referred to a document which may be electronic in form.
Section 1.14 was amended to indicate that electronic access may be provided to all or parts of certain applications.
Section 1.17 and 1.59 were amended to eliminate the reference to returning information that was expunged. Expunged information no longer needed to be returned. With electronic Official Files, there would be nothing to return.
Section 1.71 was amended to require that the first page of a specification begin on a new sheet. No sheet including part of the text of the specification could include any other material. Further, the claims, abstract, or sequence listing should not be included on any sheet including any other part of the specification.
Section 1.72 was amended to prohibit a paper presenting an abstract to include any other portions of the application or other material.
In addition, Section 1.72(b) was amended to eliminate the prohibition on using the abstract to interpret the claims in view of Federal Circuit case law in Hill-Rom Co. v. Kinetic Concepts, Inc. 209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000).
Section 1.98 was amended to indicate that copies of U.S. patents and patent application publications no longer needed to be provided with Information Disclosure Statements that were filed using the Office's Electronic Filing System.
Section 1.121, relating to the manner of making amendments, was revised in a manner similar to that proposed in the pre-OG Notice described in a separate posting. Any replacement section must include markings to show all changes relative to the immediate prior version.
A presentation on the revised amendment practice can be found here:
http://www.patentsusa.com/20030730_Revised_Amendment_Practice.pdf
The changes did not much impact practitioners, other than those who did not read the pre-OG Notice relating to changes to Amendment practice. On the other hand, many USPTO examiners believe that electronic documents decrease their efficiency. In examining patent applications, it is typical to review many piles at the same time--the patent application, the drawings, and multiple relevant prior art references. Switching between screens and flipping between pages on a computer can take more time than flipping pages of paper copies. For this reason, some examiners print out much of the information and recreate paper files, but are not allocated time to do so. Efficiency could be increased with more monitors or larger monitors. The adjustment is probably more difficult for more senior examiners who are used to dealing with paper. Most patent attorneys still use paper files.
http://www.patentsusa.com/20030630_Electronic_Records.pdf
The rule changes were effective July 30, 2003.
The USPTO began to use image technology to replace the standard paper processing of patent applications. Paper contents of patent application files were scanned and thereafter all processing and examination by all Office personnel was to be conducted with the electronic image files. Various rules were amended to be consistent with electronic processing of files.
For example, Section 1.3 was amended to provide that papers presented in violation of the decorum and courtesy requirements, would not be included in the electronic official records. If such a document had been captured electronically, the office would electronically remove it from the official file. If the paper was intended as a reply to an Office Action, it would not be considered a bona fide reply and the period set in the prior Office Action would continue to run.
37 C.F.R. Section 1.9 was amended to clarify that the word "paper" referred to a document which may be electronic in form.
Section 1.14 was amended to indicate that electronic access may be provided to all or parts of certain applications.
Section 1.17 and 1.59 were amended to eliminate the reference to returning information that was expunged. Expunged information no longer needed to be returned. With electronic Official Files, there would be nothing to return.
Section 1.71 was amended to require that the first page of a specification begin on a new sheet. No sheet including part of the text of the specification could include any other material. Further, the claims, abstract, or sequence listing should not be included on any sheet including any other part of the specification.
Section 1.72 was amended to prohibit a paper presenting an abstract to include any other portions of the application or other material.
In addition, Section 1.72(b) was amended to eliminate the prohibition on using the abstract to interpret the claims in view of Federal Circuit case law in Hill-Rom Co. v. Kinetic Concepts, Inc. 209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000).
Section 1.98 was amended to indicate that copies of U.S. patents and patent application publications no longer needed to be provided with Information Disclosure Statements that were filed using the Office's Electronic Filing System.
Section 1.121, relating to the manner of making amendments, was revised in a manner similar to that proposed in the pre-OG Notice described in a separate posting. Any replacement section must include markings to show all changes relative to the immediate prior version.
A presentation on the revised amendment practice can be found here:
http://www.patentsusa.com/20030730_Revised_Amendment_Practice.pdf
The changes did not much impact practitioners, other than those who did not read the pre-OG Notice relating to changes to Amendment practice. On the other hand, many USPTO examiners believe that electronic documents decrease their efficiency. In examining patent applications, it is typical to review many piles at the same time--the patent application, the drawings, and multiple relevant prior art references. Switching between screens and flipping between pages on a computer can take more time than flipping pages of paper copies. For this reason, some examiners print out much of the information and recreate paper files, but are not allocated time to do so. Efficiency could be increased with more monitors or larger monitors. The adjustment is probably more difficult for more senior examiners who are used to dealing with paper. Most patent attorneys still use paper files.
Thursday, March 8, 2007
2003 Amendments in a Revised Format Now Permitted
In January 2003, the U.S. Patent and Trademark Office thankfully revised the amendment format to remove the requirement for both a clean version and a marked up version of the claims. A Pre-OG Notice can be found here:
http://www.patentsusa.com/20030131_Amendments_Revised.pdf
The new format, required that sections begin on separate sheets, required only one version (with markings) of amended claims, paragraphs, or sections, and required a completed listing of claims if an amendment added, changed, or deleted any claim.
A limited number of specified status indicators (e.g., Original, Currently Amended, Previously Amended, Cancelled, Withdrawn, etc.) were provided. This list of indicators was later revised.
http://www.patentsusa.com/20030131_Amendments_Revised.pdf
The new format, required that sections begin on separate sheets, required only one version (with markings) of amended claims, paragraphs, or sections, and required a completed listing of claims if an amendment added, changed, or deleted any claim.
A limited number of specified status indicators (e.g., Original, Currently Amended, Previously Amended, Cancelled, Withdrawn, etc.) were provided. This list of indicators was later revised.
2002 Revision of Time Limit for National Stage Commencement
The United States Patent and Trademark Office revised the rules of practice relating to PCT applications in view of an amendment to Article 22 of the Patent Cooperation Treaty that changed the time limit for entering the national stage from 20 months to 30 months. The rule changes were effective April 1, 2002.
The rule changes can be found here:
http://www.patentsusa.com/20020104_30_Mo_National_Stage.pdf
The changes in the rules applied to any international PCT application in which the twenty-month period from the priority date expired on or after April 1, 2002 and in which the applicant had not yet entered the national stage. The rule changes were in response to the amendment to PCT Article 22 that changed the time limit for entering the national stage from 20 months from the priority date of the PCT application to 30 month. After the changes to Article 22, a Chapter II Demand for International Preliminary Examination was no longer necessary for entry in the national stage in countries that adopted the changes. After the changes to the U.S. rules, PCT applicants interested in the national stage in the U.S. no longer needed to file a Demand for International Preliminary Examination and pay examination fees in their PCT applications. Not all countries modified their national laws promptly, but the U.S. did modify the patent rules effective April 1, 2002.
The rule changes can be found here:
http://www.patentsusa.com/20020104_30_Mo_National_Stage.pdf
The changes in the rules applied to any international PCT application in which the twenty-month period from the priority date expired on or after April 1, 2002 and in which the applicant had not yet entered the national stage. The rule changes were in response to the amendment to PCT Article 22 that changed the time limit for entering the national stage from 20 months from the priority date of the PCT application to 30 month. After the changes to Article 22, a Chapter II Demand for International Preliminary Examination was no longer necessary for entry in the national stage in countries that adopted the changes. After the changes to the U.S. rules, PCT applicants interested in the national stage in the U.S. no longer needed to file a Demand for International Preliminary Examination and pay examination fees in their PCT applications. Not all countries modified their national laws promptly, but the U.S. did modify the patent rules effective April 1, 2002.
Wednesday, March 7, 2007
2001 Requirements for Claiming Benefit of Prior-Filed Application
The U.S. Patent and Trademark Office revised the rules of practice relating to the requirements for claiming the benefit of the filing date of a prior-filed application, in view of provisions of the American Inventors Protection Act relating to 18 month publication. The provisions were effective December 28, 2001.
The changes can be found here:
http://www.patentsusa.com/20011228_Requirements_18mo.pdf
These rule changed amended 37 C.F.R. Sections 1.55 and 1.78 to revise the requirements for claiming the benefit of a prior-filed application in a PCT application; revised the time period and requirements for filing an English language translation of a non-English language provisional; and indicated that the time period requirements to implement the provisions of the AIPA did not apply to applications filed before November 29, 2000 or to design patent applications.
Among other things, 1.78 was amended to make its provisions applicable to international applications that designated the U.S. However, the reference requirement (that an application claiming the benefit of a prior-filed application or international application must contain a reference to the prior-filed application) did not apply to an international application that does not enter national stage processing in the U.S.
1.55 was amended to make clear that a petition to accept a delayed claim for priority must also be accompanied by the claim for priority.
The changes can be found here:
http://www.patentsusa.com/20011228_Requirements_18mo.pdf
These rule changed amended 37 C.F.R. Sections 1.55 and 1.78 to revise the requirements for claiming the benefit of a prior-filed application in a PCT application; revised the time period and requirements for filing an English language translation of a non-English language provisional; and indicated that the time period requirements to implement the provisions of the AIPA did not apply to applications filed before November 29, 2000 or to design patent applications.
Among other things, 1.78 was amended to make its provisions applicable to international applications that designated the U.S. However, the reference requirement (that an application claiming the benefit of a prior-filed application or international application must contain a reference to the prior-filed application) did not apply to an international application that does not enter national stage processing in the U.S.
1.55 was amended to make clear that a petition to accept a delayed claim for priority must also be accompanied by the claim for priority.
Tuesday, March 6, 2007
2001 Anthrax Irradiation Mail Delays
After anthrax was found in some mail delivered to the U.S. government, mail addressed to the U.S. Patent and Trademark Office was irradiated prior to delivery. Some such mail was returned to patent practitioners charred beyond recognition. Attorneys became concerned with delivery of mail and took to alternate delivery means. Some attorneys would fax documents to the U.S. Patent and Trademark Office or would fax the documents to local associates for hand delivery. Attorneys also submitted duplicate filings for submissions presumed to be lost, often by fax. The U.S. Patent and Trademark Office put liberal procedures into place to help applicants whose mail was not delivered due to irradiation. These procedures can be found here:
http://www.patentsusa.com/20011220_Anthrax_Irradiation.pdf
If a duplicate was filed, along with a signed statement in a fax cover sheet saying that the fax was a copy of correspondence mailed on a previous date, the U.S. Patent and Trademark Office considered the submission to be filed on the stated earlier date.
http://www.patentsusa.com/20011220_Anthrax_Irradiation.pdf
If a duplicate was filed, along with a signed statement in a fax cover sheet saying that the fax was a copy of correspondence mailed on a previous date, the U.S. Patent and Trademark Office considered the submission to be filed on the stated earlier date.
2001 Examination Guidelines for 35 U.S.C. 102(e)(2)
On February 2, 2001, the U.S. Patent and Trademark Office published a paper summarizing their interpretation of 35 U.S.C. 102(e)(2) as amended by the American Inventors Protection Act. This paper can be found here:
http://www.patentsusa.com/20010202_Examination_Guidelines_35USC102e.pdf
Post-AIPA 102(e)no longer recognized the date of fulfillment of 35 U.S.C. Section 371 (c)(1), (2) and (4) requirements for prior art purposes. Post-AIPA 102 also precluded the use of the international filing date as a United States filing date for purposes of determining the earliest effective prior art date of a patent. Patents issued directly from the National Stage of International Applications are not available as prior art as they have no 102(e)(2) date at all.
All applications filed on or after November 29, 2000 (including International Applications that fulfilled the National Stage requirements) and applications filed before November 29, 2000 that were voluntarily published would be examined in view of patents with effective prior art dates per post-AIPA 102(e)(2).
All applications filed before November 29, 2000, and not voluntarily published, would be examined under pre-AIPA 102(e).
RCEs filed on or after November 29, 2000 did not trigger the new treatment, but CPAs did.
http://www.patentsusa.com/20010202_Examination_Guidelines_35USC102e.pdf
Post-AIPA 102(e)no longer recognized the date of fulfillment of 35 U.S.C. Section 371 (c)(1), (2) and (4) requirements for prior art purposes. Post-AIPA 102 also precluded the use of the international filing date as a United States filing date for purposes of determining the earliest effective prior art date of a patent. Patents issued directly from the National Stage of International Applications are not available as prior art as they have no 102(e)(2) date at all.
All applications filed on or after November 29, 2000 (including International Applications that fulfilled the National Stage requirements) and applications filed before November 29, 2000 that were voluntarily published would be examined in view of patents with effective prior art dates per post-AIPA 102(e)(2).
All applications filed before November 29, 2000, and not voluntarily published, would be examined under pre-AIPA 102(e).
RCEs filed on or after November 29, 2000 did not trigger the new treatment, but CPAs did.
Saturday, March 3, 2007
2000 Patent Business Goals
A large number of rules were changed with this package.
More significant changes included the ability of the U.S. Patent and Trademark Office to request information from applicants, and a drastic change to the manner of making amendments, requiring a clean copy as well as a version containing mark-ups.
The final rule package generally had an effective date of November 7, 2000, though some changes took effect earlier. The final rule package can be found here:
http://www.patentsusa.com/20000908_PBG.pdf
The changes are very well summarized in this slide show: http://www.patentsusa.com/20000913_PBG_Slides.pdf
37 C.F.R. Section 1.105 was amended to state that an Examiner could require the submission of
information reasonably necessary to properly examine or treat a matter in an Office Action. The Examiner could ask about the existence of any particularly relevant commercial database known to any of the inventors; whether a search of the prior art was made and, if so, what was searched; for a copy of any non-patent literature related to the invention; about information used to draft the application; about information used in the invention process; for an identification of what was being improved; and for identification of any use of the claimed invention. This requirement, if imposed, could cause a lot of file wrapper estoppel problems for a patent applicant.
The manner of making amendments was changed to require both clean versions and marked up versions of amended claims. Amendments to the specification were to be paragraph by paragraph or section by section. This would make it easier for the USPTO when it became time to publish issued patents, as they would have a clean version to scan, and the Examiner had a marked up version showing them the changes that were made. However, it was quite a bit of work for applicants. If a client requested a change, or the attorney decided to change the amendment strategy, changes had to be made in two places. Luckily, this amendment practice is no longer in use.
Other changes included the introduction of paragraph numbering in patent specifications in place of the previous line numbering. The requirement for a statement from an inventor being deleted that the error occurred without deceptive intent was eliminated. Expedited prosecution of design applications was introduced if a search was performed and IDS was submitted with the application. Also, computer program listings could be submitted on electronic media instead of microfiche.
More significant changes included the ability of the U.S. Patent and Trademark Office to request information from applicants, and a drastic change to the manner of making amendments, requiring a clean copy as well as a version containing mark-ups.
The final rule package generally had an effective date of November 7, 2000, though some changes took effect earlier. The final rule package can be found here:
http://www.patentsusa.com/20000908_PBG.pdf
The changes are very well summarized in this slide show: http://www.patentsusa.com/20000913_PBG_Slides.pdf
37 C.F.R. Section 1.105 was amended to state that an Examiner could require the submission of
information reasonably necessary to properly examine or treat a matter in an Office Action. The Examiner could ask about the existence of any particularly relevant commercial database known to any of the inventors; whether a search of the prior art was made and, if so, what was searched; for a copy of any non-patent literature related to the invention; about information used to draft the application; about information used in the invention process; for an identification of what was being improved; and for identification of any use of the claimed invention. This requirement, if imposed, could cause a lot of file wrapper estoppel problems for a patent applicant.
The manner of making amendments was changed to require both clean versions and marked up versions of amended claims. Amendments to the specification were to be paragraph by paragraph or section by section. This would make it easier for the USPTO when it became time to publish issued patents, as they would have a clean version to scan, and the Examiner had a marked up version showing them the changes that were made. However, it was quite a bit of work for applicants. If a client requested a change, or the attorney decided to change the amendment strategy, changes had to be made in two places. Luckily, this amendment practice is no longer in use.
Other changes included the introduction of paragraph numbering in patent specifications in place of the previous line numbering. The requirement for a statement from an inventor being deleted that the error occurred without deceptive intent was eliminated. Expedited prosecution of design applications was introduced if a search was performed and IDS was submitted with the application. Also, computer program listings could be submitted on electronic media instead of microfiche.
2000 Changes to Application Examination and Provisional Application Practice
The U.S. Patent and Trademark Office revised the rules of practice to implement certain provisions of the American Inventors Protection Act of 1999. Please see the previous AIPA post. This rule change package had an effective date of May 29, 2000. The rule changes extended the pendency of a provisional application if the date that is 12 months after the filing date of the provisional application falls on a Saturday, Sunday, or Federal Holiday within the District of Columbia. There had previously been a trap with provisionals--if the 12 months after filing fell on a holiday, it was not possible to file the nonprovisional on the next business day and obtain the benefit of the filing date of the provisional. These rule changes also provided for conversion of a provisional application into a nonprovisional application, and provided a prior art exclusion for certain commonly assigned prior art.
Details can be found at:
http://www.patentsusa.com/20000529_changes.pdf
37 C.F.R. Section 1.17 was amended to add a new paragraph (b) that provided that if the day that is twelve months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency would be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or Federal Holiday.
Section 1.17(c) set forth the fee for a request for continued examination. 1.17 was also amended to include a reference to a fee to convert a provisional application to a non-provisional.
Section 1.53 was amended to redesignate paragraph (3) as paragraph (4) and to add a new paragraph (3) to provide for the conversion of a provisional application to a nonprovisional application. Such a conversion requires a fee and an amendment including at least one claim unless the provisional included a claim.
Section 1.53(d) was amended to describe phase-out of CPAs. The continued prosecution application practice would not apply to applications (other than design applications) if the prior application had a filing date on or after May 29, 2000.
Section 1.78 was amended to require that for a nonprovisional to claim the benefit of a provisional application, the provisional application had to be entitled to a filing date and the filing fee had to have been paid. Translations also would have had to be filed.
Section 1.97(b) was amended to indicate that an information disclosure statement would be considered if filed before the mailing of a first Office Action after filing of an RCE.
Section 1.114 was added to describe the RCE procedure.
Additional changes were also made.
1999 American Inventors Protection Act
Substantial changes to U.S. patent practice took effect on May 29, 2000 to implement provisions of the American Inventors Protection Act of 1999. Provisions relating to a narrow first inventor defense with respect to business method patents were also put into place. Provisions relating to 18 month publication took effect on November 29, 2000. Exclusions of certain commonly owned prior art were applied to applications filed on or after November 29, 1999.
The act can be found at www.patentsusa.com/AIPA.pdf and is summarized below.
The changes provided requirements on invention promoters and called for the Commissioner of Patents to record complaints.
The changes provided for a procedure, called a Request for Continued Examination, to replace Continued Prosecution Applications; extended the pendency of a provisional application if a date that is twelve months after the filing date of the provisional falls on a Saturday, Sunday, or a federal holiday within the District of Columbia; provided for conversion of a provisional application to a non-provisional application; provided a prior art exclusion for certain commonly assigned patents; provided changes with respect to amendments after allowance and withdrawal from issue; and provided for term additions for patent office delays subject to reductions for applicant delays giving rise to potential dire consequences for those who are not diligent. These are discussed in greater detail below.
Requests For Continued Examination
A procedure was created to cover "requests for continued examination" (RCEs). This procedure, still in practice, is a procedure under which an applicant may obtain continued examination of an application by filing a "submission" and paying a specified fee, even if the application is under a final rejection, appeal, or has been allowed. If the subsequent rejection or action is made final or the application is allowed, the applicant may again obtain continued examination (i.e., consideration of a submission), upon filing of a submission and additional payment of the specified fee prior to abandonment of the application.
A proper "submission" may be, among other things, an information disclosure statement, an amendment to the written description, claims, drawings, new arguments, or new evidence in support of patentability.
Appeal briefs, reply briefs, and related submissions are expressly excluded from the list of possible submissions for the purpose of RCEs. The submission may, however, consist of the same arguments submitted as a reply to the final rejection or may simply consist of a submission that incorporates by reference the arguments in a previously filed appeal brief or reply brief.
The RCE procedure differs from the previous Continued Prosecution Application (CPA) procedure (which replaced the previous File Wrapper Continuation procedure) in that the mere payment of the fee for continued examination does not operate to toll the running of any time period set in the previous Office Action for reply to avoid abandonment of the application. Similarly, payment of the fee and filing of a submission in an allowed application without a petition to withdraw the application from issue will not operate to toll the period for payment of the issue fee.
The RCE procedure may not be used when claims are newly presented that are independent and distinct from the claims that were previously claimed and examined. A continuation or divisional application should instead be filed if presenting such claims.
It became impossible to file a CPA off of an application (other than a design patent application) filed on or after May 29, 2000. If an applicant files a request for a CPA of a utility or plant application that was filed on or after May 29, 2000, the U.S. Patent and Trademark Office will automatically treat the improper request for CPA as an RCE.
An applicant in a utility or plant application filed on or after June 8, 1995 but before May 29, 2000 could obtain further examination by filing either a CPA or an RCE. There are term adjustment provisions that apply to CPAs properly filed after May 29, 2000 but not to RCEs. The patent term adjustment provisions do not apply to applications filed before May 29, 2000. A request for continued examination (unlike a CPA) is NOT the filing of a new application.
An applicant cannot request continued examination of an application until after the U.S. Patent and Trademark Office acts on the application by mailing at least one of an Office Action or a Notice of Allowance.
There are other differences between RCEs and CPAs. For example, the fee for an RCE does not require additional claims fees; the fee for an RCE may not be deferred; a certificate of mailing under 37 C.F.R. 1.8 may be used with RCEs, as opposed to the more expensive Express Mail procedure used with CPAs; an applicant may not obtain examination of a different or non-elected invention; and any change of inventors must be via the procedure set forth in 37 C.F.R. 1.48.
Conversion of Provisionals Into Non-Provisionals
37 C.F.R. 1.53 was amended to provide for the conversion of a provisional application to a non-provisional application. However, the resulting non-provisional application would have the filing date of the original provisional application. Thus, the term of the application resulting from the conversion from a provisional to a non-provisional application would be measured from the original filing date.
I strongly cautioned applicants to consider the patent term implications of converting a provisional application into a non-provisional application rather than simply filing a non-provisional application within twelve months of the filing date of the provisional and claiming the benefit of that provisional application under 35 U.S.C. 119(e). By claiming priority under 35 U.S.C. 119(e) under the old process, instead of converting under the new process, up to one year of additional term is possible. The period during which the provisional application is pending is not counted towards the patent term of 20 years from the earliest filing date. Further, the conversion of a provisional application to a non-provisional application will not result in any savings in filing fees over filing a non-provisional application and claiming the benefit under 35 U.S.C. 119(e) of the earlier provisional application.
Exclusion of Certain Commonly Owned Prior Art
35 U.S.C. 103 was amended to exclude subject matter developed by another person which qualifies as prior art only under one or more of 35 U.S.C. 102(e), (f), or (g) as prior art under 35 U.S.C. 103 against a claimed invention, provided that the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made.
This change applied to any application for patent filed on or after November 29, 1999. Applicants could file continuations or CPAs to remove such commonly owned prior art from consideration. Filing an RCE was not effective to remove such prior art from consideration.
Amendments after Allowance
The rules provided that no amendment could be made as a matter of right in an application after the mailing of a notice of allowance and required that any amendment after allowance be filed before or with the payment of the issue fee. Such amendment could be entered on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the application from issue.
The rules provided that after the issue fee was paid, the application would not be withdrawn from issue upon petition by the applicant for any reason except unpatentability of one or more of the claims, for consideration of a (RCE) submission pursuant to 37 C.F.R. 1.114, or express abandonment of the application. The express abandonment could be in favor of a continuing application.
The rules provided that a petition to withdraw from issue had to be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. A petition to withdraw from issue would not be effective unless actually received and granted by the appropriate officials before the date of issue. Withdrawal from issue after payment of the issue fee may not be effective to avoid publication of application information. I have seen patents issue as quickly as 2 months after payment of the issue fee (I have also seen them issue as late as 8 months after payment of the issue fee).
Patent Term Guarantees
35 U.S.C. 154(b) provided a day-for-day restoration of patent term lost due to delay caused by the U.S. Patent and Trademark Office when the Office fails to:
- issue a rejection, objection or requirement, or give a written notice of allowance, within 14 months after the date of filing of the non-provisional application.
- respond to a reply or to an appeal by an applicant within four months after the reply filing date or the appeal was taken act on the application within four months after a decision by the board of appeals or an interference proceeding or a decision by a federal court; or
- issue a patent within four months after the date on which the issue fee was paid and all outstanding requirements were satisfied.
The statute further provided a day-for-day restoration of patent term if the U.S. Patent and Trademark Office has not issued a patent within three years after the actual date of filing the application in the United States. Periods of time not considered a delay by the U.S. Patent and Trademark Office and not counted for determining whether the patent issued within three years of the filing date included time:
- during the continued examination of the application under new 35 U.S.C. 132(b).
- lost due to an interference, a secrecy order, or appellate review by the Board of Appeals or by a Federal Court;
- incurred at the request of an applicant in excess of the three months to respond to a notice from the U.S. Patent and Trademark Office unless the applicant could not respond within three months in spite of all due care.
Note that, though the three year pendency guarantee does not apply, day-for-day patent term adjustments were provided for delays due to interference proceedings, secrecy orders, and appellate review by the Board of Appeals or a federal court in a case in which a patent was issued pursuant to a decision reversing an adverse determination of patentability.
The term adjustments are subject to any terminal disclaimer filed.
The term adjustments are reduced by a period of time equal to the time in which the applicant failed to exercise reasonable efforts to conclude patent prosecution as determined by regulations developed by the U.S. Patent and Trademark Office. The U.S. Patent and Trademark Office's proposed rules list a variety of acts as failing to constitute reasonable efforts, including:
- suspension of action or requesting a deferral of action;
- abandoning an application or failing to timely request withdrawal of a notice of abandonment;
- conversion of a provisional to a non-provisional application;
- failure in PCT applications to pay processing fees upon entry into the national stage;
- failure to file a declaration or pay fees with the application;
- failure to supply the specification, drawings, etc., in condition for 18 month publication;
- submitting preliminary amendments or other papers requiring remailing of actions;
- submitting incomplete or supplemental replies;
- submitting amendments or other papers after allowance; and
- submitting amendments or other papers reopening prosecution.
Note that filing a continuation application results in a loss of all patent term additions accrued, while filing an RCE tolls the three year pendency patent term addition. Filing an RCE cuts off additional patent term additions against the 3 year pendency period, but does not otherwise affect patent term additions.
The applicant has an opportunity to request reconsideration of the patent term adjustment determination made by the director. Payment of the issue fee ends the period for filing reconsideration requests for allegedly miscalculated patent term adjustments and for due care showings where extensions of time were filed. An appeal of the final determination of a patent term adjustment must be taken to federal court within 180 days after the patent is granted.
Therefore, consider whether you would like to incur the expense of independently calculating whether any term adjustment should be granted and comparing that calculation to the U.S. Patent Trademark Office's calculation on a routine basis or case-by-case basis.
Also, it would be wise to endeavor to ensure that Declarations are promptly executed by inventors, and that Office Actions are promptly reviewed by inventors and that procedures are streamlined to ensure that Office Action responses are prepared and filed as quickly as possible.
Optional Inter Partes Re-examination Procedure
The new procedure provided a third party with an opportunity to participate throughout the inter partes re-examination procedure. The determination of whether a new question of patentability is raised is the responsibility of the director, who will often likely delegate the responsibility to the examiner who prosecuted the patent application.
The statute explicitly estops a third party from further litigating issues that were or could have been addressed during re-examination if the third party participates in an appeal to the Federal Circuit. The statute denied a third party from requesting an inter partes re-examination upon a final decision of a civil action. The statute further precludes a third party from initiating multiple concurrent re-examinations or from initiating a second re-examination on the same issues resolved in an earlier re-examination proceeding initiated by the same third party. Further, any party who requests inter partes re-examination is estopped from challenging in a civil action any fact determined during the re-examination proceeding, except for a fact determination later proved to be erroneous based on information not available at the time. Under the new procedure, the third party cannot remain anonymous. In view of the risk of estoppel, it may not be wise for third parties to use this procedure instead of litigating patent invalidity in the federal courts.
Note that the old ex-parte re-examination procedure was not eliminated by the enactment of this statute.
First Inventor Defense against Business Method Patents
In the past, if an inventor had been using a method as a trade secret, that prior use did not provide a defense against another inventor who later obtained a patent covering the method. 35 U.S.C. 273 provides a narrow prior user defense for prior users of patented methods for doing or conducting business. This defense requires actual reduction to practice of the subject matter at least one year before the effective filing date of the patent and commercial use of the subject matter at least one day before the effective filing date, established by clear and convincing evidence. Success of the defense does not invalidate the patent. The defense fails if the party asserting it derived the subject matter from the patentee. Also, the defense must be considered claim by claim. The defense is not generally applicable to the patent as a whole.
In view of this defense, I recommended seeking at least one set of apparatus claims in patent applications that could be construed as relating to business methods.
The provisions establishing this new defense took effect on November 29, 1999.
Additional changes took effect on November 29, 2000 relating to early publication of U.S.
applications.
Domestic Publication of Foreign Filed Patent Applications
The act provided that eighteen (18) months from the earliest filing date to which a patent application claims benefit, the U.S. Patent and Trademark Office would publish the application unless it is abandoned, a provisional application, a design application, or subject to a secrecy order or a request not to publish.
An applicant may avoid publication by certifying upon filing of the application that the invention has not been and will not be the subject of an application filed in another country or under an international agreement that requires publication 18 months after filing (e.g., a PCT application).
The request may be rescinded, after which the U.S. Patent and Trademark Office will proceed to publish the application after 18 months. If the applicant files an application that would be published in another country or under an international agreement, the applicant must notify the U.S. Patent and Trademark Office of the filing within 45 days or the application shall be regarded as abandoned unless the applicant can show that the failure to notify was unintentional.
If the filing in another country or under international agreement is less extensive than the U.S. specification, the applicant may submit a redacted copy of the U.S. application, eliminating any part that will not be found in the foreign or international application.
The act provided that a patent owner has the provisional right to obtain a reasonable royalty for the period beginning on the date of publication to the date of issue of the patent. The provisional right matures only upon issuance of a patent. The provisional right is also extended to publication of a PCT application designating the U.S. The right to a reasonable royalty is limited by the requirement that the invention as claimed in the patent be "substantially identical" to the invention as claimed in the published patent application, and the requirement that an action for reasonable royalty be brought within a certain time period. The published applicant must give actual notice of the published application to an accused infringer and explain what acts are regarded as giving rise to provisional rights. In view of this, applicants should consider filing a range of claims including more narrow claims to increase the chance of obtaining allowance of claims that are substantially identical to the published claims.
Published applications have prior art effect as of their earliest effective U.S. filing date. PCT international applications published in English and designating the U.S. are given prior art effect as of the international filing date.
For applications that may be entitled to the benefit of foreign priority, 35 U.S.C. 119(b) is amended to permit the U.S. Patent and Trademark Office to set a deadline for claiming such benefit. The current proposal is to require that priority claims be made within 16 months from the claimed priority date or within four months from the application filing date, whichever is later.
1997 Changes to Patent Practice and Procedure, CPAs, Inventorship, Appeals, Reissues
This was a major rule change package that was not adopted in response to any change in the patent statutes.
Details can be found here:
www.patentsusa.com/19971201_Final.pdf
and a correction can be found here:
www.patentsusa.com/19971201_corr.htm
This rule change package makes significant changes such as introducing Continued Prosecution Applications. A Continued Prosecution Application was much like a file wrapper prosecution application--prosecution of a patent application could be continued by paying an additional fee. No new specification was needed. A CPA could name the same or fewer inventors listed in the prior application. A reference to the prior application was not to be added to the first line of the application.
Three previous rules relating to different types of new filings were consolidated into one rule, 37 C.F.R. Section 1.53. Prior rules 60 and 62 were deleted. The stated benefit was that applicants would not need detailed knowledge of the rules--when in doubt, or if in a hurry, applicants could file under 1.53 and the office would process the application based on actual papers submitted. (More recently, the office has been requiring applicants to have a detailed understanding of hyper-technical rules.) Former rule 1.60 required "a true copy of prior application as filed" which was difficult to meet years later because of extraneous markings and pagination problems. New 37 C.F.R. 1.53 did not require a true copy. Filing of a continuation or divisional using a copy of the Oath or Declaration from the prior application was still permitted. A clean divisional or continuation application could be generated by computer as long as no new matter was added, and it was recommended that such applications contain a sentence incorporating the prior application by reference to guard against filing a specification that was missing a page.
Another big change was that the naming of actual inventors was dropped as a requirement for obtaining a filing date.
Another big change was a reduction in several requirements for reissue applications. 37 C.F.R. Section 1.175 was amended to require the identification of only one error as the basis for reissue, instead of the prior requirement to particularly and distinctly specify all errors being corrected.
1.175 was also amended to require only a general statement that errors arose without deceptive intent, instead of the prior requirement for a detailed showing of facts and circumstances as to how each error arose or occurred.
1.175 was also amended to require submission of a supplemental Oath or Declaration prior to allowance generally stating that all errors being corrected which were not covered by the original or a previously submitted Oath or Declaration arose without deceptive intent. This was instead of the previous requirement for supplying a supplemental Oath or Declaration specifically identifying all subsequent errors being corrected every time an amendment was submitted.
37 C.F.R. Section 1.63 was revised to require that the post office address of inventors appear in the Oath or Declaration rather than elsewhere. And the requirement that the Oath or Declaration contain the full names of the inventors was transferred to 1.63 from 1.41(a).
The rule changes eliminated the requirement that statements of facts by non-practitioners be verified. In the past, if a practitioner submitted a statement of facts, they were not required to be verified but submissions by non-practitioners had to be verified.
Additional big changes related to simplification of the procedure for correction of inventorship. 37 C.F.R. Section 1.48 (a) was revised to delete the diligence requirement. The former requirement for a factual showing as to lack of deceptive intent in 1.48(a) was deleted in favor of a general statement as to lack of deceptive intent. 1.48(a) was also revised such that a verified statement was no longer required from each original named inventor. The new requirement was only for a non-verified statement from each inventor being added or deleted.
1.48(b), for correction of inventorship due to a change in claims affecting inventorship, was revised to delete the diligence requirement.
1.48(c), for correction of inventorship due to addition of subject matter to claims, was revised to only require a non-verified statement from each inventor being added, recognizing that the correction was being made in view of the claim amendment, and stating that the error occurred without deceptive intent on the person being added.
37 C.F.R. Section 1.324, for correction of inventorship in an issued patent, was revised to replace the previous "satisfactory proof of facts" standard with specific requirements similar to those in revised 1.48(c). The diligence requirement was deleted. Only a general statement of lack of deceptive intent was required, instead of the previous practice of requiring factual showings of lack of deceptive intent. A non-verified statement from each inventor being added or deleted replaced the previous requirement for a verified statement for each original inventor. The new version of 1.324 also required a non-verified statement from the current inventors agreeing to the change or stating no disagreement with the requested changed. A new Oath or Declaration was no longer required.
Another big change was that 37 C.F.R. 1.137(b), relating to petitions to revive abandoned patent applications for unintentional delay, was revised to delete the one year deadline. The entire period of delay must have been unintentional.
37 C.F.R. Section 1.137(a)(3) was revised to clarify that the time period for petitions to revive for unavoidable delay is from the due date of the reply that was not submitted to the date of filing of a grantable petition.
37 C.F.R. Section 1.28(a) provided that a new small entity statement was no longer required for a continuing application (including a CPA) or reissue. It also provided that payment of the small entity filing fee in a continuing application or in a reissue application would substitute for the reference to the small entity statement in the prior application. It also clarified that the filing of a continuing application requires a new determination by applicant of entitlement to status. It also was amended to provide that an explanation of erroneous payment of a small entity fee was no longer required--payment of a fee deficiency was per se deeded to be a representation that an erroneous prior small entity status request was in good faith.
37 C.F.R. Section 3.73(b) was revised to delete the requirements that an assignee specifically state that evidentiary documents were reviewed, and to certify that the title was in the assignee seeking to take action. It was also amended to provide for partial assignees to submit evidence of ownership.
Appeal practice was changed to place limitations on new grounds of rejection and to increase the admissibility of reply briefs. The former requirement that a Notice of Appeal identify the rejected claim or claims appealed and that the appeal be signed were deleted.
37 C.F.R. Section 1.193(a)(2) prohibited the inclusion of new grounds of rejection in an Examiner's Answer unless an Amendment under 1.116 was approved for entry for appeal purposes. Instead, an Examiner would be required to reopen prosecution to add a new ground of rejection. (An unfortunate consequence of this well-intended rule change is that some Examiners recently seem to have adopted a strategy of repeatedly re-opening prosecution to delay or prevent a case from going to appeal.)
37 C.F.R. Section 1.193(b)(1) was revised to provide appellants with a right to file a reply brief whether or not the Examiner's Answer raised new points of argument.
37 C.F.R. Section 1.196(b) provided authority for the Board of Appeals to reject any pending claim, even if previously allowed an not appealed, in place of the former requirement for a binding recommendation to the Examiner.
37 C.F.R. Section 1.137(c) was revised to expand terminal disclaimer requirements to petitions for unintentional delay, instead of just unavoidable delay, such that a terminal disclaimer would be required for all design applications, as well as for all plant and utility applications that were filed prior to June 8, 1995. The former six month grace period before a terminal disclaimer was required was eliminated.
37 C.F.R. Section 1.136 was revised to provide for up to five months of extensions, subject to any statutory maximums, up from the previous limit of four months.
Significantly, 1.136(a) permitted a general authorization to treat future replies requiring extensions of time as automatically incorporating a request for extension of time. 1.136(a) was also revised to treat a general authorization to charge fees to a deposit account as a constructive petition for extension of time wherever one was needed concurrently or in the future.
The one month time period for correcting incomplete but bone fide responses was eliminated. The new 1.135(c) provided that the reply may be accepted, and an action setting forth a requirement and giving a new period for reply would be mailed. This permitted extensions of time.
37 C.F.R. 1.291(c) eliminated the blanket limitation of one protest per protester, and allowed for entry of additional prior art submissions.
Some other changes were also made.
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