Beginning September 16, 2012, some patents can be challenged under the transitional post-grant review proceedings for "covered business method patents." We now have a better idea of what types of patents the USPTO will initially accept in the proceedings.Continue Reading...
Last, week, the United States Patent and Trademark Office issued a press release indicating that it had "hosted a two-day meeting with representatives from Asia-Pacific economies to discuss the importance and future of substantive patent law harmonization."
Next month, Commissioner Robert Stoll will be speaking at a conference in Bangalore, India. When I spoke at an International Technology Law Association's conference in the same city last month, I was surprised to see so many practitioners from the United States as well as several European and Asian jurisdictions -- both speaking and attending.
Many countries -- including the United States -- are attempting to harmonize patent laws, and these cross-jurisdictional meeting opportunities facilitate that goal.
The USPTO on Tuesday announced a second "Peer to Patent Pilot" program for peer review of patent applications to begin on Monday, October 25.
Under the pilot program, inventors can opt to have their patent applications posted on the www.peertopatent.org website. Volunteer scientific and technical experts then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires. After the review period, the prior art is sent to the USPTO patent examiners for their consideration during examination.
The Peer To Patent pilot is a collaboration with the USPTO and New York Law School, and is funded by GE, HP, IBM, Article One Partners, Microsoft, Open Invention Network, and Red Hat.
In late October, the United States Patent and Trademark Office (USPTO) announced a pilot patent ombudsman program and requested comments. According to the USPTO's notice, the ombudsman's role will be to assist "with application-specific issues including prosecution advancement concerns."
The American Bar Association (ABA) provided its comments last week. In its comments, the ABA outlined the key requirements for an effective ombudsman. These include:
- independence from USPTO interference;
- impartiality as between the applicant and the USPTO; and
- ability to keep applicants' communications confidential.
An ombudsman is generally considered to be a trusted intermediary. It will be interesting to see whether the USPTO's implementation of the program will lead applicants to trust USPTO ombudsmen.
Upon receiving a "Final Rejection" from a patent examiner, patent applicants have several options. One option is to file a Request for Continued Examination (RCE). The United States Patent and Trademark Office (USPTO) changed how it handles RCEs as of last Monday. It published the following document (available at the USPTO web site) that provides patent attorneys and agents some useful insight into how the new procedures are implemented. (Warning: it is dry reading if you are not a patent attorney or agent). I've quoted the document in its entirety below.
Changing the Patent Examiner Count System: New Rules for Docketing Requests for Continued Examination (RCEs)
The United States Patent and Trademark Office (USPTO) has had the same examiner production (or count) system for over thirty years. The USPTO recently worked with the leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners, to develop a new examiner production system.
One of the purposes of the new examiner production system is to reduce the instances in which it is necessary for an applicant to file a request for continued examination (RCE) to complete prosecution of his or her application. Although the USPTO recognizes that RCEs are necessary in some cases, the new count system provides incentives to examiners to conduct early interviews with applicants in the hope that RCE filings will become less necessary in many cases. The USPTO’s current examiner production system provides equal credit for first actions on the merits (FAOMs) in the application and for each first action after the filing of an RCE. The new examiner production system provides a greater amount of credit for the FAOM in the application but provides comparatively less credit for the first action after the filing of the first RCE, and less credit for the first action after the filing of any subsequent RCE. The new examiner production system also provides time-credit for initiating substantive interviews with applicant and/or applicant’s representative.
RCEs are currently placed on the examiner’s Regular Amended docket, which means that examiners have two months from the date the RCE is forwarded to them in order to act on the application. Due to concerns of POPA and USPTO Management regarding examiners having sufficient flexibility to handle such applications, RCEs will no longer be placed on the examiner’s Regular Amended docket. Instead, under the new examiner production system, RCEs will be placed on the examiner’s “Special New” application docket. Examiners must act on the application having the oldest effective filing date on their Special New docket at least every other pay period. Additionally, examiners should take-up applications on their Special New docket that they believe are in condition for allowance and give action to these applications without making them await their turn (MPEP 708.01). When applicant believes that an application on an examiner’s Special New docket is in condition for allowance, applicant can request an interview to explain to the examiner that the application is in condition for allowance, and request that the application be taken up for examination out of turn. Examiners will be encouraged to fairly consider these requests.
Applicants who file an RCE where the application is clearly in condition for allowance should not experience a change in the time it takes the USPTO to issue a Notice of Allowance responsive to the RCE. Conversely, when an application with an RCE is not clearly in condition for allowance, such as when the RCE submission includes a large number of references or extensive claim amendments adding limitations not previously considered by the examiner, the time between the filing of the RCE and when an examiner acts on it will be influenced by the number of cases on that examiner’s Special New Docket. Therefore, while some applicants will see no change, or possibly a reduction, in the time it takes for the USPTO to issue an Office action in response to an RCE, others may see an increase in this time depending on the number of cases on an examiner’s Special New docket.
Applicants are reminded that it is not always necessary to file an RCE to obtain consideration of an information disclosure statement after allowance of an application. An information disclosure statement in compliance with 37 CFR 1.98 filed on or before payment of the issue fee will be considered if it is accompanied by: (1) the statement set forth in 37 CFR 1.97(e), and (2) the fee set forth in 37 CFR 1.17(p). See 37 CFR 1.97(d).
The USPTO also has a number of other initiatives, such as training on both compact prosecution and effective interview practice, directed at encouraging a prompt indication of allowable subject matter or reaching of issues in an application. These initiatives dovetail with the new examiner production system by encouraging the indication of allowable subject matter or reaching of issues earlier during prosecution. Despite the placement of RCEs on the examiner’s Special New docket, the USPTO believes these initiatives and the new examiner production system will work together to reduce the overall pendency of applications and the instances in which an RCE is necessary to complete prosecution of an application. Additionally, applicants seeking early allowance of an application can help eliminate the need for the filing of an RCE by addressing all issues in the application early in the prosecution. If an RCE is needed, as is the case with some applications, cooperative efforts between the examiner and the applicant will go a long way toward obtaining early action of the RCE. Of course, for those applicants who do not desire fast action of their applications, the placement of RCEs on the examiner’s Special New docket will afford them the flexibility to better control the rate at which their cases are handled by the USPTO.
The shifting of production credit towards the FAOM and time-credit for initiating substantive interviews, in combination with the other initiatives, should serve to diminish any incentive for prolonging examination or “churning” applications. These initiatives, coupled with the flexibilities already provided by the USPTO, should permit applicants to prosecute their applications at varying rates based on their business needs. However, the USPTO will monitor the effects of RCE handling under the new production system, and in combination with the other USPTO initiatives, and will reevaluate the program and make any changes needed to ensure it best balances the needs of applicants and operation of the Office.
USPTO Director David Kappos started a blog this past week: http://www.uspto.gov/blog/director/entry/director_s_forum_david_kappos. In his first blog posting, he explains his reasons for preferring a first-to-file patent system:
The truth is that only .01 percent of all patent applications could be affected by a change to first inventor to file. The interference system is already biased in favor of the first inventor to file and 70 percent of the extremely small number of cases that get into the interference process are decided in favor of the first inventor to file.
Tech Daily Dose (National Journal) reports that Peter Pappas, previously of the Clinton administration, will head the USPTO's communications and public outreach activities. I guess that makes sense because, according to the article,
Pappas was associate chief of the FCC's international bureau, developing international telecommunications policy on a broad range of issues, including satellite regulation and licensing, international spectrum management, and third generation wireless standards and licensing, according to a bio. He also served as the State Department's director of communications for economic affairs and at one point was assistant White House counsel.
The USPTO yesterday rescinded its controversial rules that the Federal Circuit ruled on earlier this year. The USPTO's announcement also indicates that it will file a motion in the pending appeal to dismiss and vacate the district court's rulings. That's great news for most patent applicants and a promising, significant step for Kappos.
The Senate today confirmed the appointment of IBM's David Kappos to the position of Director, USPTO. It is likely that Mr. Kappos will overhaul aspects of the USPTO's practice.
Judiciary Committee Chairperson Patrick J. Leahy (D-Vt.) issued a statement that he looks forward to working with the new Director on patent reform.
Law360 reports that David Kappos, who President Obama and Gary Locke have nominated to head the USPTO, will implement various changes at the USPTO, including an overhaul of the "count" metric that the USPTO uses to evaluate and incentivize patent examiners.
Sister blog ChipLawBlog reports that IBM's David Kappos has been nominated to be the new Commissioner of the Patent and Trademark Office. Several commentators reported about a month ago that he was being considered, including IPWatchdog, Dennis Crouch, and others.
ChipLawBlog summarized some points Mr. Kappos made during his testimony on patent reform. As he awaits Senate confirmation, it may be interesting to consider these additional points he made when he summarized IBM's patent strategy in an IPReview article published in February, 2007:
- Patent applicants are responsible for the quality and clarity of their patent applications.
- Patent applications should be available for public examination.
- Patent ownership should be transparent and easily discernable.
- Pure business methods without technical merit should not be patentable.
If Mr. Kappos helped to craft this strategy for IBM, it may be an indication of the patent policy he could strive to implement.
The Federal Circuit finally spoke on the "Continuation Rules" that some patent holders have been worrying about for months. In Tafas and GlaxoSmithKline v. Doll, the plaintiffs sued the USPTO over its new continuation rules. Briefly, the rules would have severely limited the rights of patent holders to file "continuation" applications to pursue subject matter they feel are not adequately covered by their previously filed claims. After losing at the District Court level, the USPTO appealed to the Federal Circuit.
The Federal Circuit held that:
1) applicants can file as many continuation applications as they want;
2) the USPTO can limit the number of Requests for Continued Examinations; and
3) the USPTO can require Examination Support Documents.