Deepak Malhotra's History of Patent Rule Changes

First to File Patent Reform Act Signed September 16, 2011

2011-09-16T13:19:00.000-07:00

Today, September 16, 2011, President Obama signed the "America Invents" Act into law. Among other things, this will change the United States from a "first to invent" patent system to a "first to file" patent system.

Changes to the definition of prior art and new post-grant review proceedings will not take effect for 18 months (March 16, 2011). The first-to-file provisions and changes to the grace period go into effect then. The one year grace period has been substantially eliminated except that certain disclosures made by the inventor will not be considered to be prior art if they were made a year or less before the patent application filing date. Of course, such disclosures may well result in a loss of ability to file valid foreign applications so inventors should plan to maintain secrecy until a patent application is filed, and should not rely on having a one year grace period in which to attempt to market their invention.

Some other changes take effect immediately. Other changes take effect in a year. Others take effect at other times.

A section-by-section summary is as follows:

Under Section 4, a person to whom an inventor has assigned (or is under an obligation to assign) an invention can make an application for patent. Assignees will now be able to sign Declarations where inventors refuse to sign, are deceased, or cannot be found. These provisions take effect in one year.

Section 5 changes the prior commercial use defense for business method patents. Section 5 is effective now, on the date of enactment.

Section 6 provides a variety of post-grant review procedures including inter-partes review and post-grant review petitions. A petition for a post-grant review may not be filed more than 9 months after the date of the grant of the patent or of the issuance of a reissue patent. A petition for inter partes review must be filed after the later of either--(1) the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review. These provisions take effect in one year.

Section 7 sets for the composition and duties of the Patent Trial and Appeal Board.

Section 8 allows any third party to submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before a certain deadline. These provisions take effect in one year.

Section 10 authorizes the Director, for a seven-year period and subject to conditions, to set or adjust fees charged by the USPTO under specified federal patent and trademark laws. Section 10 also specifies that fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 50 percent with respect to small entities, and shall be reduced by 75 percent with respect to any "micro entity."

A micro entity is defined as an applicant who makes a certification that the applicant--
(1) qualifies as a small entity, as defined in regulations issued by the Director;
(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
Section 10 also requires an additional fee of $400 for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means. Section 10 takes effect on enactment.

Section 11 sets forth new government fees. Section 11 also establishes a fee of $4800 for prioritized examination, and establishes a 15% surcharge for specified fees to be credited to the U.S. Patent and Trademark Appropriation Account, remain available until expended, and used only for specified expenses relating to patent applications. Section 11 takes effect on enactment (September 16, 2011).

Section 12 provides for supplemental examination. A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability. Section 12 takes effect in one year.

Section 13 decreases the percentage of certain invention-related royalties and income that must be paid to the federal government and increases the percentage that must be given to small business firms when a nonprofit organization has a funding agreement with the government for the operation of a government-owned, contractor-operated facility. Section 13 takes effect on enactment.

Section 14 deems tax strategies to be within the prior art (unpatentable). Any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. Section 14 takes effect on enactment (September 16, 2011).

Section 15 prohibits using a failure to disclose the best mode as a basis to invalidate patent claims. Section 15 takes effect on enactment (September 16, 2011).

Section 17 prevents using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced.

Section 18 requires the Director to establish an eight-year transitional post-grant review proceeding for reviewing the validity of covered business-method patents not later than one year after enactment.

Section 19 amends federal judicial code to state that no State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. Section 19 grants the Federal Circuit exclusive jurisdiction of appeals relating to patents or plant variety protection. Section 19 applies to any civil action commenced on or after the date of the enactment of this Act (September 16, 2011).

Section 20 makes various minor technical amendments.

Section 21 authorizes the U.S. Patent and Trademark Office to pay subsistence and travel-related expenses of persons attending certain USPTO-conducted intellectual property programs who are not federal employees. It also authorizes the Director to fix a basic pay rate below a certain level for administrative patent and trademark judges. Section 21 is effective October 1, 2011.

Section 22 establishes in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. The amendments made by this section shall take effect on October 1, 2011.

Section 23 states that the Director shall, not later than three years after enactment, establish at least three U.S. satellite offices for the U.S. Patent and Trademark Office.

Section 24 states that the satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, shall be known and designated as the ‘Elijah J. McCoy United States Patent and Trademark Office’

Section 25 Authorizes the USPTO to establish regulations providing, at the request of the applicant, prioritized examination of applications for products, processes, or technologies important to the economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.

Section 26 requires the Director to make a study on the manner in which this Act and the amendments made by this Act are being implemented by the Office, and to make a report to Congress within four years after enactment.

Section 27 requires the Director to conduct a study on effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.

Section 28 requires the Director to establish and maintain in the Office a Patent Ombudsman Program. The duties of the Program’s staff shall include providing support and services relating to patent filings to small business concerns and independent inventors.

Section 29 requires the Director sto, not later than the end of the 6-month period beginning on the date of the enactment of this Act, establish methods for studying the diversity of patent applicants, including those applicants who are minorities, women, or veterans. The Director shall not use the results of such study to provide any preferential treatment to patent applicants.

Section 30 states that it is the sense of Congress that the patent system should promote industries to continue to develop new technologies that spur growth and create jobs across the country which includes protecting the rights of small businesses and inventors from predatory behavior that could result in the cutting off of innovation. Apparently, lobbying by large companies to push through patent reform is not considered predatory behavior.

Section 31 requires the Director to, in consultation with the Secretary of Commerce and the Administrator of the Small Business Administration, carry out a study
to determine how the Office, in coordination with other Federal departments and agencies, can best help small businesses with international patent protection.

Section 32 requires the Director to work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

Section 33 states that notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Section 34 directs the Comptroller General to conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims.

Section 35 states that except as otherwise provided in this Act, the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued on or after that effective date.

Section 37 sets forth a provision concerning calculation of the filing period for patent extension applications related to drug products and certain other items subject to regulation under the Federal Food, Drug, and Cosmetic Act.

Many changes will be subject to implementation rules drafted by the U.S. Patent and Trademark Office. These rules have not yet been written.

Pilot Program to Extend Provisional Patent Applications One Year

2010-12-24T10:01:00.000-08:00

There is a new pilot program by the U.S. Patent and Trademark Office that is being described as a way to extend provisional patent applications for a year, to allow extra time for marketing and commercialization.

This pilot missing parts program described in the Federal Register on December 8, 2010:

http://edocket.access.gpo.gov/2010/pdf/2010-30822.pdf

I strongly recommend that any applicant considering this method use caution. The applicant will have to file a non-provisional application in condition for publication and including at least one claim, a declaration, and basic filing fee. The applicant will still have to make foreign filing decisions within a year of filing of the first provisional application.

To avoid a risk of invalidity and unenforceability, this non-provisional, "missing parts," application should be written by an attorney.

If an applicant files a do-it-yourself application as part of this program, and later decide to pay the rest of the fees (search and publication fees), there is a strong risk of having problems with the application. The problems will be part of the file history and may result in invalidity of any resulting patent (i.e., may be impossible to fix).

Of course I always recommend that any provisional application be drafted as if it were a regular application to reduce risks of invalidity and unenforceability.

Bilski Supreme Court Decision

2010-06-28T10:32:00.000-07:00

The Bilski Supreme Court Decision is out. The invalidity of claims to a method of hedging were affirmed. The Supreme Court declined to generally invalidate software patents and instead held that the Federal Circuit's Machine-or-Transformation test is not the exclusive test to determining if a method is statutory.

July 2009 Rule on Amending PCT Applications Revised

2009-07-07T10:27:00.000-07:00

In a Federal Register notice on July 1, 2009, the U.S. Patent and Trademark Office announced a revision to PCT procedures to conform U.S. patent rules to changes in PCT practice.

Under the PCT, applicants are required to submit replacement pages for only those pages which contain changes. The revision of PCT rules requires applicants to submit a complete set of the claims when amending any of the claims. 37 CFR §1.485 is amended as well to conform to the PCT changes. The changes to 37 CFR 1.485 are effective on July 1, 2009, and apply to any amendment filed in an international application on or after that date regardless of the filing date of the international application.

The Federal Register Notice can be found here:
http://edocket.access.gpo.gov/2009/pdf/E9-15303.pdf

2008 Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals

2008-12-06T13:25:00.000-08:00

On June 10, 2008, the USPTO issued new Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals.

The notice can be found here:
http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf
The effective date of these rules was to be December 10, 2008, however:

The effective date for the final rule published at 73 FR 32938, June 10, 2008, is delayed, pending completion of OMB review of the proposed information collection under the PRA. The Office will issue a subsequent notice identifying a revised effective date on which the final rule shall apply.

The final rules recognize that the Board is experiencing a rapid increase in ex parte appeals. This is no surprise considering that allowance rates are at record lows.

Assuming that the new rules eventually do go into effect, practitioners contemplating filing appeals under the new rules should consider the increased estoppel risk, which will become apparent after reviewing the summary below.

The amended rules make clear that the Board is not a tribunal for de novo examination. A stated objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board.

A 30 page limit to appeal briefs is being imposed. The amended rules also require a `statement of facts' section where the appellant is required to set out the material facts relevant to the rejections on appeal.

The amended rules require an `argument' section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner.

The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.

A detailed discussion follows. Skip to the discussion of 41.37, below, if you are only interested in how to prepare an appeal brief.

Bd.R 41.31(a) provides that the following language would be acceptable to take an appeal: 'An appeal is taken from the decision of the examiner mailed [specify date appealed rejection was mailed].' Papers filed in connection with an appeal, including the notice of appeal, need to be signed.

An applicant or patent owner dissatisfied with a decision of an examiner on a non-appealable issue is required to seek review by petition before an appeal is considered on the merits.
Bd.R. 41.31(e) defines a `non-appealable issue' as an issue that is not subject to an appeal under 35 U.S.C. 134. Non-appealable issues are issues (1) over which the Board does not exercise authority in appeal proceedings and (2) which are handled by a petition. Non-appealable issues include such matters as an examiner's refusal to (1) enter a response to a final rejection, (2) enter evidence presented after a final rejection, (3) enter an appeal brief or a reply brief, or (4) withdraw a restriction requirement. The rules contemplate that some petitions relating to non-appealable issues are to be decided by the Chief Administrative Patent Judge. Some of those non-appealable issues include: (1) A petition to exceed the page limit and (2) a petition to extend the time for filing a paper in the appeal after the filing of the appeal brief. Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered. For example, Rule 1.181(f) provides that any petition under Rule 181 not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely. The Office intends to strictly enforce the waiver provisions of Bd.R. 41.31(e). While the Office will retain discretion to excuse a failure to timely settle non-appealable issues, it is expected that exercise of that discretion will be reserved for truly unusual circumstances.

Bd.R. 41.33(d) provides that evidence filed after a notice of appeal is filed and before an appeal brief is filed may be admitted if (1) the examiner determines that the evidence overcomes at least one rejection under appeal and (2) appellant shows good cause why the evidence was not earlier presented.

Bd.R. 41.35(a) provides that the Board acquires jurisdiction when the Board mails a docket notice. By delaying the transfer of jurisdiction until the appeal is fully briefed and the position of the appellant is fully presented for consideration by the examiner and the Office reviewers (appeal conferees), the possibility exists that the examiner will find some or all of the appealed claims patentable without the necessity of proceeding with the appeal and invoking the jurisdiction of the Board. For this reason, jurisdiction transfers to the Board only after (1) the appellant has filed an appeal brief, (2) the examiner's answer has been mailed, and (3) the appellant has filed a reply brief or the time for filing a reply brief has expired.

Bd.R. 41.35(b) provides that the jurisdiction of the Board ends when (1)the Board mails a remand order, (2) the Board mails a final decision (see § 41.50(a) and judicial review is sought or the time for seeking judicial review has expired, (3) an express abandonment is filed, or (4)a request for continued examination is filed. The Board knows when it mails a remand order and when it mails a final decision. The Board does not know if an express abandonment or a request for continued examination is filed. One problem the Board has had in the past is that an appellant does not notify the Board that it has filed an express abandonment or a request for continued examination and the Board continues to work on the appeal. Accordingly, an appellant should notify the Board immediately if an express abandonment or a request for continued examination is filed.

Bd.R. 41.35(c) continues current practice and provides that the Director could sua sponte order an appeal to be remanded to an examiner before entry of a Board decision has been mailed.

Bd.R. 41.37 provides for filing an appeal brief to perfect an appeal and sets out the requirements for appeal briefs.

Bd.R. 41.37(e) provides that an appeal brief must contain, under appropriate headings and in the order indicated, the following items: (1) Statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) [reserved], (7) status of amendments, (8) grounds of rejection to be reviewed, (9) statement of facts, (10) argument, and (11) an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section. The items are otherwise defined in other subsections of Bd.R. 41.37 and, where applicable, would apply to appeal briefs and reply briefs (Bd.R. 41.41).

Bd.R. 41.37(f) requires a `statement of real party in interest' which would include an identification of the name of the real party in interest. Since a real party in interest can change during the pendency of an appeal, there is a continuing obligation to update the real party in interest during the pendency of the appeal. If an appeal brief does not contain a statement of real party in interest, the Office will assume that the named inventors are the real party in interest.

Bd.R. 41.37(g) requires an appeal brief to include a `statement of related cases.' The statement of related cases identifies related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. The statement encompasses all prior or pending appeals, interferences or judicial proceedings known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal. A related case is one which would directly affect, or would be directly affected by or have a
bearing on the Board's decision in the appeal. A copy of any final or significant interlocutory decision rendered by the Board or a court in any proceeding identified under this paragraph shall be included in the related cases section in the appendix. A related case includes any continuing application of the application on appeal. If an appellant fails to advise the Board that it has filed a continuing application or a request for continued examination, or that it has filed an express abandonment of the application on appeal and the Board mails a decision on appeal in the application on appeal, the appellant should expect that the decision will not be removed from the file. The time to update a statement of related cases, or notify the Board that an application on appeal has been abandoned, is when the continuing application, request for continued examination, or express abandonment is filed. Appellant would be under a continuing obligation to update a statement of related cases during the pendency of the appeal. If an appeal brief does not contain a statement of related cases, the Office will assume that there are no related cases.

Bd.R. 41.37(h) requires an appeal brief to contain a `jurisdictional statement'. The jurisdictional statement is to include a statement of (1) the statute under which the appeal is taken, (2) the date of the decision from which the appeal is taken, (3) the date the notice of appeal was filed, and (4) the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate (1) the date an extension of time was requested, and (2) if known, the date the request was granted. A jurisdictional statement will minimize the chance that the Board will consider an appeal when the application on appeal is abandoned or a reexamination proceeding on appeal has terminated.

An example of a jurisdictional statement is: `The Board has jurisdiction under 35 U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, setting a three-month shortened statutory period for response. The time for responding to the final rejection expired on November 1, 2006. Rule 134. A notice of appeal and a request for a one-month extension of time under Rule 136(a) was filed on November 15, 2006. The time for filing an appeal brief is two months after the filing of a notice of appeal. Bd.R. 41.37(c). The time for filing an appeal brief expired on January 16, 2007 (Monday, January 15, 2007, being a Federal holiday). The appeal brief is being filed on January 16, 2007.'

Bd.R. 41.37(i) requires an appeal brief to contain a `table of contents' identifying the items listed in Bd.R. 41.37(e) along with a page reference where each item begins. In the case of a reply brief, the table of contents will identify the items required by the reply brief rule (Bd.R. 41.41(d)).

Bd.R. 41.37(j) requires an appeal brief to contain a `table of authorities.' This item would list (1) court and administrative decisions (alphabetically arranged), (2) statutes, and (3) other authorities, along with a reference to the pages of the appeal brief where each authority is cited. A similar requirement applies to a reply brief.

Bd.R. 41.37(l) requires an appeal brief to indicate the `status of amendments' for all amendments filed after final rejection (e.g., entered or not entered). Examples of a status of amendments might read as follows: (1) `No amendment was filed after final rejection.' (2) `An amendment filed October 31, 2006, was not entered by the examiner.' (3) `An amendment filed November 1, 2006, was entered by the examiner.' (4) `An amendment filed October 31, 2006, was not entered by the examiner, but an amendment filed November 1, 2006, was entered by the examiner.'

Bd.R. 41.37(m) requires an appeal brief to set out the grounds of rejection to be reviewed, including the claims subject to each rejection. Examples might read as follows: (1) `Rejection of claim 2 as being anticipated under 35 U.S.C. 102(b) over Johnson.' (2) `Rejection of claims 23 as being unpatentable under 35 U.S.C. 103(a) over Johnson and Young.' (3) `Rejection of claim 2 as failing to comply with the written description requirement of the first paragraph of 35 U.S.C. 112.' (4) `Rejection of claim 2 as failing to comply with the enablement requirement of the first paragraph of 35 U.S.C. 112.' (5) `Rejection of claim 3 under 35 U.S.C. 251 based on recapture.'

Bd.R. 41.37(n) requires a `statement of facts.' Appellant will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs. A clear, concise and complete statement of relevant facts will clarify the position of an appellant on dispositive issues and assist the examiner in reconsidering the patentability of the rejected claims. A significant requirement of Bd.R. 41.37(n) is that a fact is to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record (see Bd.R. 41.37(t)). Statements of facts should be set out in short declarative sentences, and each sentence should address a single fact.

For example, `In rejecting claims 15, the examiner cites Jones (col. 4, lines 1-4).' `Jones describes a widget (col. 5,lines 56-61 and Figure 1, elements 12 and 13).' A compound statement of fact is not proper, e.g., `Jones describes a widget (col. 8, lines 3-4) and Smith does not describe a widget.'

A statement of facts has to be non-argumentative. In the case of a rejection for obviousness under section 103, the facts should address at least the scope and content of the prior art, any differences between the claim on appeal and the prior art, and the level of skill in the art.

A statement of fact based on the specification would be proper if supported by a reference to page and line or paragraph (and where appropriate also to drawing figure and element number). A statement of fact based on a patent would be proper if it is supported by a reference to a column and line (and where appropriate also to a drawing figure and element number). A statement of fact based on an affidavit would be proper if supported by a reference to a page and line number or to a page and paragraph number of the affidavit and the affidavit would appear in the evidence section (Bd.R. 41.37(t)) in the appendix.

Bd.R. 41.37(o) requires that an appeal brief contain an argument comprising an analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. The analysis has to address all points made by the examiner with which the appellant disagrees. Where an argument has previously been presented to the examiner, the analysis has to identify where any argument being made to the Board was made in the first instance to the examiner. Where an argument has not previously been made to the examiner, an appellant would be required to say so in the appeal brief so that the examiner would know that the argument is new. Bd.R. 41.37(o) also requires that each rejection for which review is sought shall be separately argued under a separate heading. Also, Bd.R. 41.37(o) provides that any finding made or conclusion reached by the examiner that is not challenged would be presumed to be correct.

Bd.R. 41.37(o)(1) provides that when a ground of rejection applies to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group. For each claim argued separately, a subheading identifying the claim by number is required. In the past, appellants have been confused about whether a statement of what a claim covers is sufficient to constitute an argument that the claim is separately patentable. It is not. A statement that a claim contains a limitation not present in another claim would not in and of itself be sufficient to satisfy the requirement of Bd.R. 41.37(o)(1) that a separate argument be made.

Unless an appellant plans to argue the separate patentability of a claim, the appellant should not discuss or refer to the claim in the argument section.

Bd.R. 41.37(o)(2) provides that the Board will only consider arguments that (1) are presented in the argument section of the appeal brief and (2) address claims set out in the claim support and drawing analysis section in the appendix. Appellant waives all arguments which could have been, but were not, addressed in the argument section of the appeal brief. A first example would be where Argument 1 and Argument 2 are presented in response to a final rejection, but only Argument 1 is presented in the appeal brief. Only Argument 1 would be considered. Argument 2 would be waived.

Bd.R. 41.37(o)(3) requires that when responding to points made in the final rejection, the appeal brief shall specifically (1) identify each point made by the examiner and (2) indicate where appellant previously responded to each point or state that appellant has not previously responded to the point. In supporting any argument, the appellant shall refer to a page and, where appropriate, a line or paragraph, of the Record.

Examples of argument formats that are acceptable under Bd.R. 41.37(o)(3) follow.

Example 1, where an argument had been previously presented to the examiner:
`The examiner states that Reference A teaches element B. Final Rejection mailed [insert date], page x, lines y-z. In response, appellant previously pointed out to the examiner why the examiner is believed to have erred. Amendment filed [enter date], pages 89. The response is [concisely state the response].'

Example 2, where an argument has not been previously made to the examiner:
`In response to the examiner's reliance on Reference C for the first time in the final rejection (page 4), appellant's response includes a new argument which has not been previously presented to the examiner. The response is [concisely state the response].'

Bd.R. 41.37(p) requires an appeal brief to contain a `claims section' in the appendix which consists of an accurate clean copy in numerical order of all claims pending in the application or reexamination proceeding on appeal. The claims section in the appendix would include all pending claims, not just those under rejection. The status of each claim would have to be indicated, (e.g., 1 (rejected), 2 (withdrawn), 3 (objected to), 4 (cancelled), and 5 (allowed)).

Bd.R. 41.37(r) requires an appeal brief to contain a `claim support and drawing analysis section.' The claim support section, for each independent claim involved in the appeal and each dependent claim argued separately would consist of an annotated copy of the claim indicating in bold face between braces ({ }) after each limitation where, by page and line or paragraph numbers, the limitation is described in the specification as filed. Braces ({ }) are used instead of brackets ([ ]) because brackets are used in reissue claim practice. Unlike the `claims section', only those independent claims and dependent claims being argued separately, need to appear in the `claim support and drawing analysis section.'

The `claims support and drawing analysis section' also requires for each independent claim on appeal and each dependent claim argued separately, that a drawing analysis consist of an annotated copy of the claim in numerical sequence, indicating in bold face between braces ({ }) after each limitation where, by reference or sequence residue number, each limitation is shown in the drawing or sequence.

Bd.R. 41.37(s) requires an appeal brief to contain a `means or step plus function analysis section.' The means or step plus function analysis section replaces the requirement of Rule 41.37(c)(1)(v) relating to identification of structure, material or acts for means or step plus function claim limitations contained in appealed claims. Under Bd.R. 41.37(s), the means or step plus function analysis section includes each independent claim and each dependent claim argued separately that contains a limitation that appellant regards as a means or step plus function limitation in the form permitted by the sixth paragraph of 35 U.S.C. 112. Further, for each such claim, a copy of the claim is to be reproduced indicating in bold face between braces ({ }) the specific portions of the specification and drawing that describe the structure material or acts corresponding to each claimed function.

Bd.R. 41.37(t) require an appeal brief to contain an `evidence section' in the appendix. The evidence section includes (1) table of contents, (2) affidavits and declarations upon which the appellant relied before the examiner, (3) other evidence upon which the appellant relied before the examiner, and (4) evidence relied upon by the appellant and admitted into the file pursuant to Bd.R. 41.33(d). Documents in the evidence appendix would not have to be reformatted to comply with format requirements of the appeal brief. However, the affidavits, declarations and evidence required by Bd.R 41.37(t) which is otherwise mentioned in the appeal brief, but which does not appear in the evidence section will not be considered.

Bd.R. 41.37(u) requires an appeal brief to contain a `related cases section' in the appendix. The related cases section consists of copies of orders and opinions required to be cited pursuant to Bd.R. 41.37(g).

Bd.R. 41.37(v) requires an appeal brief to be presented in a particular format. The appeal brief would have to comply with the format of Rule 52 as well as with other requirements set out in Bd.R. 41.37(v)(1), (2) and (4) through (6).

Bd.R. 41.37(v)(1) requires that the pages of an appeal brief, including all sections in the appendix, be consecutively numbered using Arabic numerals beginning with the first page of the appeal brief, which would be numbered page 1. If an appellant chooses to number the lines, line numbering may be within the left margin.

Bd.R. 41.37(v)(2) requires that text in an appeal brief be double spaced except in headings, tables of contents, tables of authorities, signature blocks and certificates of service. Block quotations would be indented, but could be presented in double spaced or space and a half format. Footnotes, which are discouraged, would be double spaced.

Bd.R. 41.37(v)(4) requires that the font size be 14 point, including the font for block quotations and footnotes.

Bd.R. 41.37(v)(5) provides that an appeal brief may not exceed 30 pages, excluding any (1) statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) status of amendments, (7) signature block and (8) appendix. To give meaning to the 30-page limitation, an appeal brief would not be permitted to incorporate by reference arguments from other papers in the evidence appendices
or from any other source.

A request to exceed the 30-page limit would be made by petition under Bd.R. 41.3 at least ten calendar days prior to the date an appeal brief is due. Bd.R. 41.37(v)(6) requires a signature block which would identify the appellant or appellant's representative, as appropriate, and a mailing address, telephone number, fax number and e-mail address.

Other new rules relate to Examiner's Answers, Reply Briefs, Examiner's Responses to Reply Briefs, Oral Hearings, and Decisions and other actions by the Board.

Examination Guidelines for Determining Obviousness in View of the Supreme Court's KSR v Teleflex Decision

2007-10-16T15:13:00.000-07:00

In the October 10, 2007 Federal Register, the U.S. Patent and Trademark Office published a notice titled "Examination Guidelnes for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v Teleflex"

The notice can be found here:
http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf

“The Guidelines stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), remain the basis for every decision regarding obviousness,” noted Commissioner for Patents John Doll. “That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.”

The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.

To help patent examiners make obviousness rejections that are supported by appropriate facts and reasoning, the Guidelines identify a number of rationales suggested by the Supreme Court in the KSR decision. For each rationale, the Guidelines explain the underlying factual findings required, and provide guidance about how to reason from the facts to the legal conclusion of obviousness. The Guidelines emphasize, however, that the identified rationales are only examples, and that any explanation of facts and reasoning based on the Graham inquiries may be used to support a rejection for obviousness.

These rationales are:
(A) Combining prior art elements according to known methods to yield
predictable results;

(B) Simple substitution of one known element for another to obtain
predictable results;

(C) Use of known technique to improve similar devices (methods, or
products) in the same way;

(D) Applying a known technique to a known device (method, or product)
ready for improvement to yield predictable results;

(E) ``Obvious to try''--choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for
use in either the same field or a different one based on design incentives or other
market forces if the variations would have been predictable to one of ordinary
skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would
have led one of ordinary skill to modify the prior art reference or to combine
prior art reference teachings to arrive at the claimed invention.

Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims

2007-08-21T10:58:00.000-07:00

In the August 21, 2007 Federal Register, the U.S. Patent and Trademark Office published Final rules titled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications"

The changes in the claims and continuation rules were enjoined in Tafas v. Dudas, 350 F. Supp.2d 786 (E.D. Va. 2008). In the event that the injunction is lifted, applicants will only need to comply with the identification requirements of 37 CFR 1.78(f)(1) in applications having an actual filing date on or after a new effective date that would be published by the USPTO after the removal of the injunction. Likewise, applicants will only have to identify other commonly owned applications that satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in applications that have a filing date on or after this new effective date. Similarly, the rebuttable presumption of 37 CFR 1.78(f)(s) will only apply to applications having an actual filing date on or after the effective date and will only exist with respect to an application that satisfies the conditions set forth in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new effective date.

The changes can be found here: http://www.uspto.gov/web/offices/com/sol/notices/72fr46716.pdf

The Office revised the rules to require that any third or subsequent continuing application (continuation or continuation-in-part), and any second or subsequent request for continued application in an application family, be filed so as to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

In other words, only two continuations, and only one request for continued application (RCE) can be filed as a matter of right. This was changed from the proposed rule, in which each application was limited to one continuing application. The limitation of only one RCE, as a matter of right, in an entire application family could be a problem for applicants and practitioners in applications where examiners are not inclined to allow claims. An application family is defined as including the initial application and its continuations and CIPs. The office is understandably expecting a surge in Appeals and is proposing to amend the rules pertaining to appeals practice.

In addition, the Office revised the rules of practice to provide that an applicant must provide an "examination support document" (ESD) if the application contains more than five independent claims or more than twenty-five total claims. This was changed from the proposed rule where an application could be filed with any number of claims but the applicant was required to elect 10 representative claims for examination absent the filing of an ESD. An applicant may present up to fifteen independent claims and seventy-five total claims to a single patentably distinct invention via an initial application and two continuation or continuation-in-part applications that are filed and prosecuted serially without an examination support document or justification. 37 CFR 1.265 sets forth what an examination support document entails and is quite onerous. In determining whether an application exceeds the 5/25 claim threshold, withdrawn claims are not taken into account, unless they are reinstated or rejoined. For applications filed on or after November 1, 2007, a notice will set a two-month time period that is not extendable, if the 5/25 claim threshold is exceeded, requiring applicant to amend or file an ESD. For applications in which a First office action was not mailed before November 1, 2007, the notice will set a two-month time period that IS extendable up to a maximum of six months.

First actions in continuation applications may be made final as in current practice. Applicants may guard against first action final rejections in continuing applications by first seeking entry of the amendment, argument, or new evidence after final in the parent, under 37 CFR 1.116. Inclusion of a new double patenting rejection in a second or subsequent Office action will not preclude the Office action from being made final.

The Office also revised the rules of practice for divisional applications. Under these revisions, an applicant is permitted to file a divisional application only in response to a restriction requirement. Applicant cannot rely upon a restriction requirement to file a divisional application if applicant traverses the restriction requirement; or the restriction requirement is provisional, such as in a requirement for election of species. When a restriction requirement is withdrawn, any divisional application will not be proper, and the applicant may either delete the benefit claim or change the benefit claim to a continuation or CIP. The USPTO suggests that for an application that contains a generic claim, applicant should conclude prosecution of the generic claim in the initial application and its continuing applications, including any appeals, before filing a divisional application. Applicant also cannot rely upon the restriction requirement in these situations to avoid the requirement of an ESD. Applicant may file a suggested requirement for restriction (SRR). A suggested requirement for restriction must be accompanied by an election of an invention to no more than 5/25 claims, identifying the elected claims; and filed before the earlier of a First office action or restriction requirement. The divisional need not be filed during the pendency of the application subject to a requirement for restriction, as long as the copendency requirement of 35 U.S.C. 120 is met. In other words, an applicant may file the divisional application during the pendency of the application that was subject to a requirement for restriction or the pendency of any continuing application of such application. Divisionals may be filed in parallel or in series. Applicant may also file two continuation applications (but not CIPs) from a divisional application plus just one request for continued examination in the entire divisional application family without any justification. The divisional application family includes the divisional application as well as its continuation.

Applicants must now identify the claims in a CIP application that are supported by the prior-filed application. Any claims that are not identified will be subject to prior art based on the actual filing date of the CIP application.

The Office also revised the rules of practice with respect to multiple applications that have patentably indistinct claims and a common assignee by either requiring that all patentably indistinct claims in such applications be submitted in a single application or effectively treating the multiple applications as a single application. The applicant must submit the serial numbers of all other applications filed within two months having the same assignee and at least one inventor in common. Applicants must identify any other commonly owned application or patent that has an inventor in common with the application; and a claimed filing or priority date within two months of the claimed filing or priority date of the application. An appropriate form for identifying such commonly owned applications will be available on the USPTO web site. For commonly owned pending applications that contain at least one patentably indistinct claim, the USPTO will treat each application as having the total number of claims of all of the applications for considering whether the 5/25 claim threshold has been exceeded. For those applications that additionally have a common effective filing date and substantially overlapping disclosures, the rule creates a rebuttable presumption of obviousness-type double patenting between them.

37 CFR 1.265 provides:

§ 1.265 Examination support document.

(a) An examination support document as used in this part means a document that includes the following:

(1) A statement that a preexamination search in compliance with paragraph (b) of this section was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;

(2) A listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with paragraph (c) of this section;

(3) For each reference cited, an identification of all of the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;

(4) A detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and

(5) A showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

(b) The preexamination search referred to in paragraph (a)(1) of this section must involve U.S. patents and patent application publications, foreign patent documents, and non-patent literature, unless the applicant justifies with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source and includes such a justification with the statement required by paragraph (a)(1) of this section. The preexamination search referred to in paragraph (a)(1) of this section must be directed to the claimed invention and encompass all of the limitations of each of the claims (whether in independent or dependent form), giving the claims the broadest reasonable interpretation.

(c) The listing of references required under paragraph (a)(2) of this section as part of an examination support document must include a list identifying each of the cited references in compliance with paragraphs (c)(1) and (c)(2) of this section, a copy of each reference if required by paragraph (c)(3) of this section, and each English language translation if required by paragraph (c)(4) of this section.

(1) The list of cited references must itemize U.S. patents and U.S. patent application publications (including international applications designating the U.S.) in a section separate from the list of other references. Each page of the list of the cited references must include:

(i) The application number, if known, of the application in which the examination support document is being filed;

(ii) A column that provides a space next to each cited reference for the examiner’s initials; and

(iii) A heading that clearly indicates that the list is part of an examination support document listing of references.

(2) The list of cited references must identify each cited reference as follows:

(i) Each U.S. patent must be identified by first named patentee, patent number, and issue date.

(ii) Each U.S. patent application publication must be identified by applicant, patent application publication number, and publication date.

(iii) Each U.S. application must be identified by the applicant, application number, and filing date.

(iv) Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.

(v) Each publication must be identified by publisher (e.g., name of journal), author (if any), title, relevant pages of the publication, date, and place of publication.

(3) The listing of references required under paragraph (a)(2) of this section must also be accompanied by a legible copy of each cited reference, except for references that are U.S. patents or U.S. patent application publications.

(4) If a non-English language document is being cited in the listing of references required under paragraph (a)(2) of this section as part of an examination support document, any existing English language translation of the non-English language document must also be submitted if the translation is within the possession, custody, or control of, or is readily available to any individual identified in § 1.56(c).

(d) If an information disclosure statement is filed in an application in which an examination support document is required and has been filed, the applicant must also file a supplemental examination support document addressing the reference or references in the manner required under paragraphs (a)(3) and (a)(4) of this section unless the information disclosure statement cites only references that are less closely related to the subject matter of one or more claims (whether in independent or dependent form) than the references cited in the examination support document listing of references under paragraph (a)(2) of this section.

(e) If an examination support document is required, but the examination support document or preexamination search is deemed to be insufficient, or the claims have been amended such that the examination support document no longer covers each of the claims, applicant will be notified and given a two-month time period that is not extendable under § 1.136(a) within which, to avoid abandonment of the application, the applicant must:

(1) File a corrected or supplemental examination support document in compliance with this section that covers each of the claims (whether in independent or dependent form); or

(2) Amend the application such that it contains no more than five independent claims and no more than twenty-five total claims.

(f) An examination support document, or a corrected or supplemental examination support document, is not required to comply with the requirements set forth in paragraph (a)(3) of this section if the examination support document is accompanied by a certification that any rights in the application have not been assigned, granted, conveyed, or licensed, and there is no obligation under contract or law to assign, grant, convey, or license any rights in the application, other than a security interest that has not been defaulted upon, to any entity other than:

(1) A business or other concern:

(i) Whose number of employees, including affiliates, does not exceed 500 persons; and

(ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under paragraph (f)(1)(i) of this section.

(2) A not-for-profit enterprise which is independently owned and operated and is not dominant in its field; or

(3) A government of a city, county, town, township, village, school district, or special district, with a population of less than fifty thousand.

Most changes are effective on November 1, 2007 with some retroactivity. For example, rule changes to continuing application practice are applicable to applications filed on or after November 1, 2007; and applications entering the national stage on or after November 1, 2007. An applicant may file one more continuing application for applications filed before August 21, 2007 without a petition and showing, even if it exceeds the limits under the new rules. An applicant may file a second or subsequent RCE in an application family on or after November 1, 2007, with a petition and showing. The rule changes to examination of claims practice (5 independent, 25 total without an ESD) are applicable to applications filed on or after November 1, 2007; applications entering the national stage on or after November 1, 2007; and applications in which a First office action was not mailed before November 1, 2007. For example, applicant is required to file an ESD in an application that contains more than 5 independent or 25 total claims if a First office action was not mailed before November 1, 2007. An ESD will not be required in a reissue application if the reissue application does not seek to change the claims in the patent being reissued. A change in the claims in the patent being reissued is sought either by an amendment to a claim or addition of a claim; or an amendment to the specification which changes a claim. The rule changes relating to multiple applications containing patentably indistinct claims are applicable to applications pending on or after November 1, 2007. For applications filed before November 1, 2007, applicant much comply with the requirements within the time periods set forth in 37 C.F.R. 1.78(f)(1) and (f)(2); or by February 1, 2008, whichever is later.

Bill to introduce First-to-File system to U.S.

2007-04-18T17:13:00.000-07:00

A bill has been unveiled to introduce a first-to-file system in the U.S.

Details of the bill can be found here:
http://leahy.senate.gov/press/200704/041807a.html

The bill would give priority to the first applicant to file a patent application regardless of the invention date. This is standard in most other countries in the world.

The bill also tries to limit forum shopping.

2007 Proposed Changes to Representation of Others Before the USPTO

2007-03-30T17:17:00.000-07:00

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.

2007 Guidelines for Accelerated Examination

2007-03-29T14:05:00.000-07:00

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.

2007 Priority Document Exchange System

2007-03-27T17:01:00.000-07:00

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.

2006 Proposed Changes To Information Disclosure Statement Requirements and Other Related Matters

2007-03-23T15:22:00.000-07:00

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

2006 Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office

2007-03-21T21:47:00.000-07:00

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.

2006 Proposed Changes to Practice for the Examination of Claims in Patent Applications

2007-03-20T19:04:00.000-07:00

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.

2006 Proposed Changes To Practice for Continuing Applications, RCE Practice, and Applications Containing Patentably Indistinct Claims

2007-03-19T20:18:00.000-07:00

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.

2005 Revised Procedure for Preliminary Amendments Presented on Filing of Patent Application

2007-03-18T21:04:00.000-07:00

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.

2005 New Pre-Appeal Brief Conference

2007-03-18T16:18:00.000-07:00

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.

2004 Changes to Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan

2007-03-16T23:35:00.000-07:00

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.

2004 Rules of Practice Before the Board of Patent Appeals and Interferences

2007-03-16T15:34:00.000-07:00

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.

2004 Revision of Power of Attorney and Assignment Practice

2007-03-14T19:44:00.000-07:00

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.

2003 Elimination of CPAs

2007-03-12T22:12:00.000-07:00

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.

2003 Revision of PCT Procedure

2007-03-11T22:01:00.000-07:00

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.

2003 Information Disclosure Statements Without Copies

2007-03-10T12:04:00.000-08:00

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.

2003 Changes To Implement Electronic Maintenance of Official Patent Application Records

2007-03-10T09:52:00.000-08:00

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.

2003 Amendments in a Revised Format Now Permitted

2007-03-08T13:02:00.000-08:00

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.

2002 Revision of Time Limit for National Stage Commencement

2007-03-08T12:17:00.000-08:00

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.

2001 Requirements for Claiming Benefit of Prior-Filed Application

2007-03-07T11:48:00.000-08:00

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.

2001 Anthrax Irradiation Mail Delays

2007-03-06T09:57:00.000-08:00

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.

2001 Examination Guidelines for 35 U.S.C. 102(e)(2)

2007-03-06T07:48:00.000-08:00

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.

2000 Patent Business Goals

2007-03-03T22:12:00.000-08:00

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.

2000 Changes to Application Examination and Provisional Application Practice

2007-03-03T21:55:00.000-08:00

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

2007-03-03T21:53:00.000-08:00

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

2007-03-03T21:51:00.000-08:00

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.

1995 GATT, 20 Year Term, Provisional Patent Applications

2007-03-03T21:49:00.000-08:00

Major changes to U.S. patent law arose from GATT Uruguay Round implementing legislation.

Detailed information can be found at:
http://www.patentsusa.com/19950608_20_year_term.html ;
http://www.patentsusa.com/19950608_GATT.pdf; and
http://www.patentsusa.com/19950608_Presentation.pdf

These changes were significant in that they marked an end to 17 year patent term. Prior to enactment of these changes, patent term was 17 years from the issue date of a patent and continuations and divisionals had terms of 17 years from their issue dates (subject to any terminal disclaimers). After the rule changes, patent term begins on grant but runs 20 years measured from the filing date of a patent application. If continuations or divisionals are filed, their term is measured from the filing date of the parent application.

Design patents were not affected.

Patents that were in force or that would issue on an application filed before June 8, 1995 were given a term that was the greater of the 20 year from filing or 17 year from grant.

Applications filed on or before June 8, 1995 with an effective U.S. filing date prior to June 9, 1992 were given a transition restriction requirement. For those applications, no restriction would be made or maintained except in certain circumstances, such as where the requirement was made prior to April 8, 1995.

Another significant change that resulted from these changes is that provisional patent applications were established. They would provide a domestic priority system to give U.S. applicants the same potential term as foreign applicants. Provisional patent applications are still in use.

These provisional patent applications never issue into a patent, and can never be enforced. If a regular, complete, patent application is prepared and filed within a year from the filing date of the provisional patent application, the regular patent application may be entitled to the filing date of the provisional patent application. The maximum term of any patent that eventually issues will be twenty years from the filing date of the regular patent application (the up to one year period while the provisional application was pending is not counted).

One of the purposes of provisional patent applications was to put U.S. inventors on equal footing with foreign inventors who file in the U.S. Under the Paris Convention, an international treaty, within a year after the foreign inventors file their patent applications in their home country, they can file a U.S. patent application and be entitled to the filing date in their home country. The term of their U.S. patent will be twenty years from filing in the U.S. (the up to one year period after they filed in their home country but before they filed in the U.S. is not counted).

The provisional patent applications have the same effect. An actual U.S. patent application can be filed up to one year from the filing date of a U.S. provisional application, and still be entitled to the filing date of the U.S. provisional application, but the 20 years from filing will be based on the filing date of the actual application, not the provisional application.

The provisional applications were suggested to be potentially useful in obtaining an earlier filing date than would otherwise be possible. However, in order to be valid, the provisional application must comply with the first paragraph of section 112 of the patent law. If the provisional application does not comply with this section, it will be invalid and will not provide a filing date.

As the U.S. Patent and Trademark Office does not examine these applications, it may not become apparent that a provisional application is invalid until after the deadline for filing a patent application has passed. Provisional applications automatically expire one year after filing, and that this deadline is not extendible. Foreign applications must be filed within one year of the filing date of the provisional application in order to be entitled to the filing date of the provisional application. Thus, a disadvantage of provisional applications is that there is no opportunity to receive a first examination by the U.S. Patent and Trademark Office before making the decision of whether or not to file corresponding foreign applications.

Some patent term extensions for delays due to appeals, interferences, and secrecy orders were also provided.

35 U.S.C. 104 was amended to allow invention dates to be established in WTO countries (effective January 1, 1996). Since December 8, 1993, invention dates could be established in NAFTA countries.

37 CFR 1.131 was also amended to allow the use of facts showing completion of an invention in a WTO member country.

The effective date for the change in patent term to 20 years from filing, and for the ability to use provisional applications, was June 8, 1995.

2007-02-27T19:58:00.000-08:00

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