USPTO News: Update Your Inventor Oath Forms

The Patent Office continues to beef-up its discussion of how to enforce Rule 1.56 duties of disclosure.  The most recent announcement declares that the Office will reject any inventor oath or declaration submitted after July 2008 that does not acknowledge a duty to disclose information material to patentability as defined in Rule 1.56.

37 CFR 1.63(b)(3) expressly requires that the oath include a statement that “acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.” Thus, this notice by the PTO can be seen simply as a nice way to announce future enforcement of the law.

The problem: Apparently, many of the oaths currently submitted only acnowledge a slightly narrower duty to disclose information “material to examination in accordince with 1.56(a).” 

Of course, all applicants (and individuals involved in prosecution) have the same duty to disclose regardless of which oath was signed.

• PTO Notice of Oath Enforcement
• Forms are available here: LINK
• Query: Should 1.56 be modernized to include a duty on the company filing the patent allowing us to break free from “the antiquated notion that it is the inventor who files the application, not the company-assignee.”

LISTING OF COMMONLY OWNED APPLICATIONS AND PATENTS UNDER 37 CFR 1.78(f)

In November 2007, 37 CFR 1.78(f) will become effective (along with a host of other rules).

Recently, the PTO made public its draft form SB206 for complying with rule 78(f).

The instructions for completing the form are as follows:

Notes

Under 37 CFR 1.78(f)(1), applicant in a nonprovisional application that has not been allowed (37 CFR 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:

• (A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
• (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and
• (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.

Under 37 CFR 1.78(f)(2)(i), a rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:

• (A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
• (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
• (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
• (D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.

Instructions:

1. In the column on the right, list the numbers of the applications and patents that meet the conditions set forth in 37 CFR 1.78(f)(1)(i). For supplemental lists, please do not list previously submitted applications and patents.
2. In the first column on the left, place a check mark in the box if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached an explanation of how the application contains only claims that are patentably distinct from the claims in the cited application or patent.
3. Place a check mark in the box in the second column on the left, if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached a terminal disclaimer in accordance with 37 CFR 1.321(c).
4. Place a check mark in the box in the third column on the left, if applicant also attached an explanation why there are two or more pending nonprovisional applications containing patentably indistinct claims. See 37 CFR 1.78(f)(2)(ii)(B).

USPTO Guidelines for Examination Support Documents (ESD)

New Rule 256 (37 CFR 1.256) allows patent applicants to submit more than five independent claims or twenty-five total claims in an application if supported by a proper examination support document (ESD) prior to the first Office Action. The USPTO has released a set of guidelines for ESD content. [LINK]

An ESD has five substantive sections:

• Preexam search statement;
• Listing of closest references;
• Identification of claim limitations found in references;
• Detailed explanation of patentability; and
• Showing where each limitation of each claim is supported in the specification.

The preexamination search statement must include searches directed to each limitation of each claim. Additionally, if the claims are amended to include further limitations, the search statement must then be updated. It is advisable to hire a professional searcher to conduct the search. (Before hiring ensure they understand that the search must be fully documented.)

The office only wants a listing of the most closely related references. The best closest reference is the one that discloses the most claimed limitations. Other closest references will disclose a claimed limitation not shown in any other listed reference. References that do not meet this criteria may not be cited i the ESD, but rather must be submitted in an IDS.  If the applicant later discovers an even better reference, the ESD must be updated.

Small entities will not be required to file the identification of claim limitations.

 

New Proposed Rules: Maiming Markush Claims

A new set of proposed rules were published in the Federal Register on August 10, 2007. The new anti-Markush rules would close down a potential loophole in the soon-to-be-finalized claim limitation rules. 

Highlights:

• An intra-claim restriction is proper unless all species share a feature that is substantial and essential for common unity.
• A claim may not incorporate part of the specification by reference unless absolutely necessary.
• Markush alternatives must be substitutable; may not encompass other alternatives; may not be a set of further alternatives; and must not make the claim difficult to construe.

Documents:

• File Attachment: Markush Rules.pdf (96 KB)

Other upcoming finalized rules:

• Rules limiting continuations are expected to be finally implemented within the next few weeks.
• Rules limiting the number of claims being examined are expected to be finally implemented within the next few weeks.
• Rules requiring more extensive IDS submissions are being reviewed by White House staff and are expected to be finally implemented in early 2008.

 

Accelerated Examination Success for Business Method Applicant

Although the procedure is expensive and full of potential pitfalls, applicants continue to use the PTO’s accelerated examination program. 

Some of the largest backlogs are found on the desks of examiners handling business method patent applications. Technology Center 3620 (e-commerce), for instance, is currently issuing first office actions on applications filed about four years ago.

Now, the first business method patent has issued under the accelerated examination program. U.S. Patent No. 7,251,621 – a “Method and apparatus for the home delivery of local retail e-commerce orders” – was filed on December 29, 2006 and issued July 31, 2007.  The applicant used a smart approach of first filing an original application; then filing a continuation application along with the request for accelerated examination.

According to reports that I have received, the PTO commonly rejects requests for accelerated examination based on deficient element-by-element analysis of the claims with reference to the cited prior art. (The original application has not yet been examined).

Many patent attorneys appear quite afraid of providing an element-by-element analysis of the submitted prior art. However, on examination of the ‘621 prosecution history, the analysis does not appear to significantly differ from what is commonly included in an office action response.

Notes & Documents

• Thanks to Aaron Feigelson for submitting this tidbit.
•  File Attachment: Accelerated Exam Petition (1MB) (Original) (corrected was also filed…)
• Find it on PAIR

Two new USPTO Notices

• e-Office Actions:  The PTO is continuing its e-Office Action pilot project with a few modifications. [Link] [Contact ebc@uspto.gov].

• Public Submission of Peer Reviewed Prior Art begins JUNE 15, 2007: "This project will test whether [a loose public] collaboration can effectively locate prior art that might not otherwise be located by the Office during the typical examination process." Documents will be submitted by the Peer-to-Patent project "under a waiver of certain sections of both 37 CFR 1.99 and 1.291." [USPTO Notice] [Peer-to-Patent Website]
  

PTO: Electronic Filing Update

Midnight Filing: The USPTO continues to changes its rules and regulations to favor electronic filing. Now, users of the electronic filing system (EFS) get a last minute bonus: Correspondence submitted via EFS-WEB will now be considered timely if submitted on the due date. (The old rule required it to be received at the PTO on the due date).

You should be cautious and retain  your USPTO E-filing acknowledgment. Filings should be immediately available for review on Private PAIR.

Finally if EFS-WEB is not working, the practitioner should be ready with an alternative method of filing such as fax or snail mail.

National Stage Evidence: The PTO has also given notice that the EFS-WEB acknowledgment receipt will be sufficient to show that correspondence submitted in a national stage application was actually received by the Office.

Link: Read the USPTO Notice

USPTO Announces Release of Private PAIR 7.0: Live Online Launch and Training

The PTO asked me to do a press release on the newest release of the PTO’s online patent prosecution database: Private PAIR 7.0.  New features include:

Customer Number Details Online Self-Administration

Attorney Docket Number Online Self-Administration

Pending Non-Published PCT Application Search

Ordering of Certified Copies for Private Applications via Private PAIR

XML Application Data Download

Display References Tab will have two more sections of references

The PTO will hold a 90 minute interactive web-event discussing the new features. Sign up here.

Lets hear from Experienced PTO Examiners: Are you willing to move?

Serious engineers and scientists don’t necessarily fit well in the policy-wonk culture of DC. Rumor has it that the whole Potomac area is a bit of a revolving door with the transient politico-intelligencia moving in-and-out as politics shift and families grow.  The USPTO is no different, and it is no secret that the agency is having trouble hiring qualified patent examiners as well as retaining those who are there and doing a great job.

One serious solution floated in the newest “Strategic Plan” calls for establishing regional offices, perhaps in Denver or Chicago, that could take some of the load.  For these regional offices to be successful, a cadre of experienced examiners would need to make the move to server as leaders in the new officers.  If you are an examiner, would you be willing to move west to the Windy City or Ski country? Comments are open.

PTO's Strategic Plan

The PTO has released a draft “strategic plan” for the next five years. (2007–2012). I have not had a chance to review the draft yet except to note that the PTO continues to see human resources as its greatest challenge.  One interesting bit may foreshadow future changes:

An open question that the USPTO will address [is whether] there is some combination of examination processes and patent products that will better allow applicants to choose what determinations and results they need and what are the most efficient processes to pursue those results and at the same time provide a more efficient use of the examination resources of the USPTO by only providing the level of examination required by the applicant. 

Anyone in practice will agree that patents on biotech and pharmaceutical inventions are pursued in a much different fashion than are most mechanical or electrical type applications. An upcoming academic conference at Michigan will focus on this “diversity in innovation” and will focus on whether our current unified system should remain so. As with many of the trends in patent law today, Mark Lemley is out in front on this one as well.

Besides diversity across areas of technology, there is also a diversity amongst what patent owners want from the patent system.  A so-called “gold plated” system was proposed by Lemley, Doug Lichtman, and Bhaven Sampat earlier this year.

The PTO is asking for comments and will hold a public forum on September 26, 2006 at the Office.

Documents:

• Strategic Plan
• PTO’s Strategic Plan Site

Prosecution Tips: Accelerated Examination

On August 25, 2006, the PTO is implementing a new strict practice regarding petitions for accelerated examination (AKA “petitions to make special”).  [information here].  The new requirements require, inter alia, that the patent application be filed electronically along with the petition.  As a Patently-O reader recently discovered, this appears to rule-out filing a petition based on later-discovered infringement.

As a prosecution tip, the way to overcome this difficulty is to electronically file a continuation application along with the petition to make special as soon as the infringement is discovered (and the appropriate search is analyzed). As has been mentioned before, the new rules and restrictions associated with accelerated examination can dramatically increase up-front costs to the client, and they have some potential for loss of rights for your client.

Note: Jim Hawes and I are just now completing the August 2006 updates for Patent Application Practice (West).  The book serves as a single volume daily reference guide for patent practitioners and includes the basics as well as practical tips and advice.  Jim & I keep it up-to-date with twice-yearly updates. (Link).

PTO Proposes New "Accelerated Examination" Procedures

In response to unrelenting criticism of the “backlog,” the USPTO has announced a new “accelerated examination” program that promises a 12–month final decision on patentability. This creative solution will give applicants the chance to cut in line if they meet certain criteria. To qualify, a patent applicant must:

• File the application electronically with a petition to make special (with fees paid and appropriate declaration);
• Conduct a search of prior art;
• Submit all prior art that is closest to their invention;
• Identify all the limitations in the claims that are disclosed in the submitted references (with pin cites to the references)
• Explain what the prior art teaches and how their invention is different (claim by claim);
• Explicitly discuss how the invention is useful and show how the written description supports the claimed invention;
• Include only 20 claims (3 independent);
• Agree to have an interview with the Examiner; and
• Agree to base claims of patentability only on the independent claims.

The applicant will only be given one-month (non-extendable) to reply to any office action. An applicant may abandon the accelerated application in favor of a continuing application, and the continuing application will not be given special status under the accelerated examination program (unless so requested).

The change in examination requirements will apply to all petitions to make special filed on or after August 25, 2006. Comments concerning petition to make special practice may be sent by email to mpepfeedback@uspto.gov.

According to the PTO, the accelerated examination procedure is designed to give applicants quality patents in less time. In exchange for quick examination, patent examiners will receive more focused and detailed information about the invention and the closest prior art from the applicants.  This increased disclosure up-front by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent.

Caution: The rules and restrictions for this procedure are quite specific (onerous?) and have some potential for loss of rights for your clients. Make sure that you understand the rules completely before signing-up.

Link: http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm

Aside: I had heard some rumors that the PTO would be enacting its proposed changes to continuation practice in August of this year.  Those do not appear to be true — Rather, that this change appears to be the August change and the new rules are likely around the end of the year.

New USPTO Website

USPTO has launched a new website design: www.uspto.gov.

In an effort to better serve those who visit uspto.gov for business and information purposes, we have redesigned our homepage to make it more user-friendly. Our homepage “makeover” is the first step of a larger plan to redesign the entire website over the coming months.

We are very interested in your comments on the changes we have just made and solicit your suggestions for changes to the rest of the website. Please let us hear from you at new_web_look@uspto.gov.

USPTO's Patent Peer Review Pilot Project

Patent peer review is coming!  Later this week, the PTO will announce its pre-grant Patent Peer Review Pilot Project. (Announcement May 12, 9:00am-noon; register here.). 

The USPTO has created a partnership with academia and the private sector to launch an online, peer review pilot project that seeks to ensure that patent examiners will have improved access to all available prior art during the patent examination process.

The peer-review system is not intended to replace patent examiners — what the system will do is allow the public to review pending patent applications and provide relevant prior art.  Using a ranking system (like slashdot), the public will essentially vote to determine which prior art references are the most relevant. The general idea is to help make sure that the best prior art is seen by the patent examiner.

The project is the brain-child of Professor Noveck at NYLS, but IBM and other tech companies have signed-on with their support. The pilot will primarily focus on “technology” patents rather than pharmaceuticals, and will only review applications after receiving inventor permission.

The pilot will not require a rule change because the references will be sent to the examiner without comment — although the examiner could potentially read the comments on the peer review website.

Why volunteer your patent for review: (1)  This could make your patent very strong it makes it through peer review; (2) The pilot will be getting lots of press — publicity for your inventions; (3) PTO will not want to delay examination of the application because it is in the public eye; (4) There is a potential that volunteering for the peer review could serve essentially as a “petition to make special.”

This project is still being developed, so comments at this stage may have a significant impact.

Notes:

• Patent Peer Review Pilot Project
• Beth Noveck’s Blog
• Noveck Paper on Peer to Patent

USPTO News: Proposed Changes to Reexamination Practice

In a 2005 study, attorney Joseph Cohen found that 98% of all inter partes reexamination requests had been granted.  On March 30, 2006, the PTO issued a proposed rule change that might change that outcome. According to the proposal, a patent owner will be given an opportunity to reply to the third-party reexamination request prior to the examiner’s decision on the request.  Thus, a patent holder may be able to convince the PTO of an absence of a “substantial new question of patentability” and avoid the reexamination proceeding altogether.

In a bit of give-and-take, the proposal would also prohibit supplemental patent owner responses to an Office Action without a showing of sufficient cause.*  Comments on the proposed change are due by May 30, 2006 and should be e-mailed to AB77.comments@uspto.gov.

Links:

• Text of Proposed Rule Change
• Cohen article on Inter Partes Reexamination

* Several other formalities regarding reexamination practice are also included in the proposed change.

PTO Rule Change: Reexamination Filing Date

On February 23, 2006, the USPTO published a rule change titled “Clarification of Filing Date Requirement for Ex Parte and Inter Partes Reexamination Proceedings.”  The rules are being revised to specifically require that requests for reexams must “meet all the applicable statutory requirements before a filing date is accorded to the request.”  The rule change will be effective March 27, 2006, although comments will be accepted until April 24, 2006.

According to 37 C.F.R. 1.510(b), a request for reexamination must include the following parts:

(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.

(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.

(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.

(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.

(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.

USPTO NEWS: Changes to private PAIR and electronic filing

The USPTO unveiled yesterday a revised version of private PAIR (PAIR 6.0). A highlight of the updated system includes a direct login feature that allows access to Private PAIR through a web browser window, rather than having to access through USPTO Direct. In theory, this would allow one to access PAIR from a remote computer as long as he or she has copied their EPF file to that particular computer. Another noted feature is an estimated date for issuance of a first Office action. This is intended to save practitioners from having to make status inquiries to the Office by mail.

A replay of yesterday's USPTO presentation can be viewed at: http://webex.client.ninesystems.com/uspto

Also announced in yesterday's presentation, but not in detail, is a new electronic filing system that will allow applicants to file electronically using PDF files. This electronic filing system is scheduled for a March 17 release. The program will also provide nearly instantaneous verification and validation of applications, an option to pay fees by deposit account charge, and a printable filing receipt which will have the same force as an Express Mail filing receipt and stamped postcard. The PTO should have more information on the new electronic filing system in the coming weeks.

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

Noonan's Corner: Changes to Continuation and Examination Practice

From the desk of Kevin Noonan

On February 1, 2006, the U.S. Patent and Trademark Office sponsored a "Townhall Meeting" at the Northwestern University Law School. The meeting was attended by practitioners, patent counsel and corporate executives, and presentations were made by John Doll, Commissioner of Patents, and James Toupin, General Counsel of the Patent and Trademark Office.

The topic was the proposed changes in U.S. patent practice relating to "continuation" applications, which are applications that have been examined without obtaining an allowance (for at least some of the claims), and that are re-submitted to the Office for further examination. These types of applications arise either as the result of patent prosecution strategy by the applicant (who elects to cancel non-allowed claims to have other claims grant, and retain the right to pursue the non-allowed claims in the continuation application), or as the result of unwillingness by the Office to allow claims in an application (where further prosecution is needed to amend claims or present arguments or evidence of patentability). Also included under this definition are requests for continued examination, which are not new filings but rather permit continued prosecution of non-allowed claims in an application.

The proposed changes are dramatic and depart heavily from current practice. Most draconian in effect is to limit the number of continuation applications to one as of right, and to require an applicant who wants an additional continuation to show by petition that the amendments, evidence or argument could not have been previously submitted. This requirement would eliminate the opportunity for strategic decisions to cancel certain non-allowed claims to obtain other claims deemed allowable by the Office. The Examples provided by the Office also make clear that most applicants would be precluded from filing more than one continuation.

PTO extends pre-appeal brief conference pilot program

The PTO’s pilot pre-appeal brief conference program was set to end its six month run today.  Citing the program’s positive potential, the PTO has extended the program “until further notice.”

Although the program certainly has some problems, it has received positive reviews from both applicants and examiners. In all likelihood, in 2006 the pilot program will transition into a permanent one.

Patent Office Proposes Sweeping Changes to Examination Rules (Comments Welcome)

Buoyed by the evidence presented by professors Mark Lemley and Kimberly Moore, the PTO has proposed a set of sweeping changes to curb the “problem of continuation practice.” 

CHANGE IN CONTINUATION PRACTICE: The First proposed rule change would make the following changes: 

1. Any second or subsequent continuation, CIP or RCE must include “a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation, CIP or RCE”; and
2. Multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee must include either (i) an explanation to the satisfaction of the Director of how the claims are patentably distinct, or (ii) a terminal disclaimer and explanation to the satisfaction of the Director of why patentably indistinct claims have been filed in multiple applications.

CHANGE IN EXAMINATION OF CLAIMS: The PTO has proposed that examiners focus their initial examination solely on a set of “representative claims” that are designated by the applicant for initial examination.  According to the PTO,

The changes proposed in this notice will allow the Office to do a better, more thorough and reliable examination since the number of claims receiving initial examination will be at a level which can be more effectively and efficiently evaluated by an examiner.

Applicants that do not include designations of representative claims will be delayed.

The PTO has requested comments that can be e-mailed to AB93Comments@uspto.gov and AB94Comments@uspto.gov for the continuation practice changes and claim examination practice changes respectively by May 3, 2006.

Links:

• Proposed change in continuation practice
• Proposed change in examination practice
• Lemley/Moore Paper

PTO Requests Input on Its Subject Matter Eligibility Guidelines

The USPTO has issued a request for comments on its Interim Guidelines for Patent Subject Matter Eligibility [Link] that were issued in the wake of Ex parte Lundgren [Link Link]. Specific comment is requested on the following topics:

1. Whether transforming data from one value to another value constitutes “physicial transformation.”
2. Is the PTO’s interpretation of State Street correct— that in the absence of physical transformation there must be a useful, concrete, and tangible result (rather than simply a capability of such a result).
3. How should useful, concrete, and tangible be defined?
4. What role should preemption play in determining subject matter eligibility?
5. Is the PTO’s exclusion of signals per se consistent with case law? Are there policy implications?

The PTO will not start acting on this issue until June 30, 2006 to avoid conflicting with the the LabCorp case. e-mail comments to AB98.Comments@uspto.gov. (Or post them here).

Pre-Appeal Brief Conference -- Comments?

In July 2005, the PTO initiated its “Pre-Appeal Brief Conference Pilot Program.”  I am planning to put together my comments on the new program, but would like to solicit your comments as well.  Please sent me an e-mail with your experiences to crouch@mbhb.com.  I will not publish your name on the blog unless you give permission in the e-mail.

— Dennis

USPTO Search Templates

[Link] The USPTO has published a set of Search Templates for each of its technology classifications.  The templates define the resources and methodologies for conducting a search.

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

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

 

Manual of Patent Examining Procedure (MPEP)

Link: The USPTO has released a PDF version of the new Manual of Patent Examining Procedure (8th ed., 3rd rev.). This revision incorporates a number of changes that have previously been covered in Patently-O, including:

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

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

USPTO News: Preliminary amendments requiring substitute specification

Link: The USPTO has clarified the requirements for submitting a substitute specification upon the filing of a preliminary amendment to an application, so that publication of applications can proceed smoothly.

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

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

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

USPTO Implements Rules for Cooperative Research and Technology Enhancement (CREATE) Act

The USPTO has issued a set of final rules to implement the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) that amended Section 103(c) of the Patent Act.

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

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

The final rule is effective September 14, 2005.

Links:

• September 14, 2005 Final Rule.
• January 11, 2005 Interim Implementation of CREATE ACT.
• December 10, 2004 CREATE Act Enacted Into Law.

I wrote a short article with Baltazar Gomez on the CREATE Act that was published Spring 2005.  Let me know (crouch@mbhb.com) if you would like a copy of the article.

USPTO Plans to Release PDF-Based Electronic Filing System in Spring 2006

As patent attorneys have been suggesting for some time, the PTO is planning to completely revamp its electronic filing system (EFS) in favor of a system that operates using PDFs and is accessible through Internet Explorer. Limited beta testing will begin in December 2005, and the EFS-WEB is scheduled for a Spring 2006 release.

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

Links:

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

What does this mean for you:

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

Patent Office to Allow Examiners to Make Foreign Prosecution History of Record in Domestic Applications

The USPTO is considering whether to expand its tri-lateral (US, EPO, Japan) document sharing procedures to permit examiners to import published documents donor offices into the application file of the recipient office.

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

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

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

Read the notice.

USPTO Revamps Internal Reexam Procedures

Over the past year, USPTO Director Jon Dudas has given high priority to streamlining the PTO's reexamination procedures.  To that end, on July 29, 2005, the PTO announced a new initiative to ensure that reexaminations are performed in a timely and accurate manner.

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

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

Patent Office to Improve Interference Searching Procedures

The PTO announced that Examiners will now perform interference searches using the electronic PGPub database, instead of using the prior practice of searching through paper application files. The search will be performed when applications are deemed in condition for allowance, and will be text-based. In situations where a particular sequence is claimed, the search will also include the electronic sequence database. While this search will not include unpublished applications, the Office expects that a "new system" will one day allow for them to search unpublished applications as well. Although unstated, it is a logical conclusion that that these broader interference searching procedures will result in more office initiated interferences.

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

By Christopher Singer & Dennis Crouch.

USPTO Implements Pre-Appeal Brief Conference

Effective July 12, 2005, the USPTO begins a new program that allows Applicants to request formal review of the legal and factual basis of pending rejections in an application prior to filing an appeal brief. Under this program, a panel of examiners will review the case and determine whether the status of the application is appropriate for appeal, prior to filing an appeal brief. 

The panel decisions will issue in one of four possibilities:

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

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

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

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

Notes:

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

Inter Partes Reexaminations On The Rise, Becoming Popular Amongst Potential Defendants

The USPTO’s inter partes reexamination procedure has been questioned for its failings, and many potential requesters fear the associated estoppel provisions.* However, a comprehensive analysis of inter partes reexaminations recently updated by Joseph Cohen shows that (1) inter partes reexam filings are clearly on the rise and (2) these reexams are getting good results for the requester (not for the patentee).

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

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

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

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

Links:

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

USPTO News: Electronic Submission of Chemical & Biological Structural Data

To underscore an earlier post, the USPTO is considering enacting a rule that would require Applicants to submit structural data on chemical compounds and biological molecules in electronic format.  The PTO believes that such a rule would aid in the processing and examination of patent applications that include structural data, and the submission of structural data to searchable public databases (upon application publication).

 

From a brief reading of the questions presented for comment (pp. 35575-77 in the Federal Register link below), the PTO appears undecided as to a number of issues, including:

- whether submission of any type of structural data would be required or optional;

- to which type of molecule(s) the new rules would apply (e.g., small inorganic/organic molecules, large biomolecules);

- whether the rules would apply only to new data, or also include compounds/data cited (prior art) in applications;

- whether the PTO would form partnerships with one or more third party database providers (share data upon publication);

- what format/software would become the standard for electronic submission of structural data.

The PTO has set a deadline of August 22, 2005 for comments to its questions. Comments to are preferably sent via e-mail to AB91.Comments@uspto.gov. Federal Register Link.

 

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.  He has also agreed to take a more active role in the blog and will be handling the bulk of USPTO News updates. [Singer Bio].

USPTO Loosens Amendment Procedures

Over the past year, the USPTO has been a stickler for proper amendment practice.  However, the Office has now waived certain requirements of 37 CFR 1.121(c) and may accept non-compliant amendments under 37 CFR 1.121(c) where the non-compliance is limited to:

 

    1) The inclusion of text of a canceled claim, or a not entered claim, and

    2) Use of certain variations of status identifiers in a claim listing.

 

 

Reasons for the waiver: Although the revised amendment practice has been in effect for over 18 months, the Office is apparently still receiving a large number of non-compliant amendments. Correction of the non-compliant items causes extra work for applicants, examiners and the Office’s Technical Support Staff, delays prosecution and increases pendency of applications. Upon review, the Office determined that some of the requirements of 37 CFR 1.121 are not essential and that waiver of certain provisions of 37 CFR 1.121 will still allow an examiner to clearly understand exactly what amendments have been made in an Image File Wrapper application. The Office will propose changes to 37 CFR 1.121 consistent with this notice in a rule making in due course.

• Link

USPTO News: New Rules for Fee Refunds and Electronic Submissions

Rule Change for Refund of National Stage Search Fee: The Office will now refund all or a portion of the search fee associated with a national stage application based on a PCT under certain circumstances (such as filing the search from the International Searching Authority). Link.

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

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

PTO Takes (Baby) Step to Further Limit Submarine Patents

The PTO has changed its “final action” practice for patent applications filed prior to June 8, 1995. 

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

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

Link: USPTO Notice

USPTO Restriction Practice Proposal

The Patent Office is in the midst of reworking its restriction practice.  In a recently published “green paper,” the Office has proposed four “options” and requested public comment. The PTO ranked the options according to its preferences.

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

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

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

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

Links:

• Read the Green Paper on Restrictions

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

Patent Prosecution News: Pay your fees

Earlier in the year, the PTO changed its fee structure to include a Filing Fee, Search Fee, & Examination Fee. Now, the Office has amended the rules so that all three must be paid with the application or else a surcharge will be added. Also, if the basic filing fee is never paid, the file will not be retained for use as a priority document.

 

Read the Notice: http://www.uspto.gov/web/offices/com/sol/notices/70fr30360.pdf

-- Dennis

Patent Appeals via Videoconference

The Board of Patent Appeals and Interferences (BPAI) has begun to allow oral arguments from attorneys in remote locations (such as Chicago) using a video/audio feed.  The PTO has created a new "Electronic Hearing Room" that will allow for oral hearings in both ex parte and inter partes proceedings.

While three administrative patent or trademark judges preside from the USPTO in Alexandria, Va., an attorney can present a client’s case from anywhere around the globe with equipment capable of dialing Standard - H.320 (ISDN) protocol.

As the attorneys make their case, the judges will be able to watch your every move through their 50 inch plasma screen.