WASHINGTON — The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) today announced early publication of a classification system meant to speed the patent granting process for applicants to both Offices. The Cooperative Patent Classification (CPC) system and finalized CPC definitions are now available in advance of the January 1, 2013, official launch. The CPC is a joint USPTO-EPO project aimed at developing a common classification system for technical documents in particular patent publications, which will be used by both offices in the patent granting process.
“This is an important milestone for the USPTO and EPO as we continue to eliminate duplication of work between the two Offices,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.
USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)
On August 1, 2012, I interviewed Bernard Knight and Raymond Chen at the United States Patent and Trademark Office. Knight is the General Counsel of the USPTO and Chen is Solicitor. I spent approximately one hour on the record with them in Knights Office.
In part 1 of the interview we discussed a wide range of issues, including where they got their start in the legal profession and how they rose to where they are, who they view as the client, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.
In this segment, which is the interview finale, we discuss the heightened expectation of fairness placed on government attorneys, what it is like to work for USPTO Director David Kappos, how the USPTO determines when to give guidance to examiners to reconcile case law, specifically using the KSR Guidelines as an example. Before Knight and Chen had to go I also managed to ask a few of those familiar “get to know you” questions at the end. Wait until you hear Knight’s answer for favorite pastime or hobby. Talk about a Renaissance man! The interview does end rather abruptly, but that was because we literally kept talking through the last minute they were available and on to their next set of meetings.
USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)
On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both Bernie Knight and Ray Chen, the top two attorneys who represent the United States government at the U.S. Patent and Trademark Office. This starts the next phase of USPTO 2.0 interviews, which started earlier in the year.
Knight is the General Counsel at the USPTO, and Chen is the Solicitor. I have known each for a few years now, and I can’t tell you how many times I have asked them to go on the record for an interview. Obviously, they were cautious; uncertain what I would want to talk about. It would have been great to get into a substantive discussion about rules, law and legislation. That, however, would simply not be appropriate.
So my philosophy going into this interview was this: It wouldn’t be right for me to place Knight and Chen in a position where they had to say, “sorry, I can’t answer that question.” There is no point asking a question to which an answer could not realistically be expected, and which could violate attorney-client privilege if given. I don’t play those types of games, period. Furthermore, that isn’t why I have wanted to interview Knight and Chen. Knight and Chen represent the United States government and work for the people of the United States, but are stationed at the USPTO. I suspected at times that might put them at odds with the Administration. It also means their job as attorneys is different than what most of us will ever experience. So even if I hadn’t agreed to steer clear of substantive legal questions there were just too many process, procedure and ethics questions I wanted to ask.
Washington – The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.
Some of the new rules are as follows:
Three new administrative trial provisions — inter partes review, post-grant review, and the transitional program for covered business method patents—will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent. Additional information on third party submissions can be found here.
The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.
Earlier today, while working on revamping the PLI Patent Bar Review Course, I needed a citation to the MPEP and an associated Code of Federal Regulations cite. It was as this time I noticed there has been a change to how the MPEP is presented on the USPTO website. Perhaps others have noticed and this is not news, but it is the first time I’ve encountered an issue finding information in the MPEP from the USPTO for a very long time.
One of my responsibilities is to write exam level difficult questions for the newly testable material, which will be tested starting October 2, 2012. This means questions relative to the changes in the rules of practice effective September 16, 2012. This requires me to not only write the questions, but also create model answers. We strive not only to explain generally what the right answer is, but to also provide a greater opportunity for learning, which requires detailed explanations.
It was at this time that I realized that the USPTO has reclassified the Manual of Patent Examining Procedure, changing the URLs where sections were located previously, making them unfindable if you use a search engine. In some instances my search even leads to “Page Not Found” errors when searching on the USPTO website itself.
The “miscellaneous” final rules primarily implement two things. First, section 6 of the AIA to provides for an estoppel that may attach to the filing of an ex parte reexamination request subsequent to a final written decision in a post grant review or inter partes review proceeding. See 37 CFR 1.510(b)(6). Second, the final rules expand the scope of information that a person may cite in the file of a patent to include written statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent.
With respect to the first, relating to ex parte reexamination, USPTO rules will now require that a third party request for ex parte reexamination contain a certification by the third party requester that the statutory estoppel provisions apply to completed inter partes reviews and post grant reviews do not bar the third party from requesting ex parte reexamination. Cosmetically, the final rules also implement Section 3(i) of the AIA, which replaces interference proceedings with derivation proceedings, and replaces the title ‘‘Board of Patent Appeals and Interferences’’ with ‘‘Patent Trial and Appeal Board.”
President Obama signs the AIA. September 16, 2011.
The America Invents Act (AIA) was signed into law by President Obama on September 16, 2011. The AIA ushered in numerous changes to patent law, but there will be even more changes to patent practice and procedure. The way many things are done at the USPTO on behalf of clients will change, with the next wave of changes becoming effective on September 16, 2012, on the one year anniversary. Over the next several weeks we will be taking some detailed looks at these changes, as well as flashing back to remember the passing of patent reform.
We begin our journey today with the Supplemental Examination Final Rules, which were published in the Federal Register on August 14, 2012. Section 12 of the AIA amended chapter 25 of title 35, United States Code, to add new 35 U.S.C. 257, which permits a patent owner to request supplemental examination of a patent by the United States Patent and Trademark Office. The purpose of supplemental examination is to provide an avenue for the patent owner to ask the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. Although supplemental examination goes into effect on September 16, 2012, it can be used for any patent issued on, before or after September 16, 2012.
The United States Patent and Trademark Office (USPTO) announced today that it is creating a new proceeding designed to ensure the first person to file a patent application is actually the true inventor. The new proceeding will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. If a true inventor is not the first to file, the true inventor may challenge the first applicant’s right to a patent by demonstrating that the first application is claiming an invention derived from the true inventor.
This new procedure, called a derivation proceeding, is required thanks to the enactment of the Leahy-Smith America Invents Act (AIA), which went into effect on September 16, 2011. The AIA ushers in a great many changes to patent law and procedure, with the most significant being the change from first to invent to first to file, which does not actually become effective until March 16, 2013. The flavor of first to file adopted by the AIA is not the typical first to file system seen in many other jurisdictions around the world. The American flavor still provides a grace period, although it is peculiar to the inventors own disclosures and can be defeated by subsequent disclosures of third parties. The grace period is, therefore, quite fragile to the point that it is virtually non-existent. Much concern was voiced, however, over whether one could learn of an invention and then win a race to the USPTO. That is where the derivation proceedings come into play. The U.S. version of first to file is better stated as “first inventor to file.”
One of the primary objectives of the America Invents Act (AIA) was to streamline the filing and prosecution of patent applications. Under the AIA, the oath or declaration requirements for applicants have been substantially modified, with assignees now being permitted to apply for patents effective September 16, 2012. Provisions of the AIA (35 USC § 118) allow an assignee, or one to which the inventor is obligated to assign the invention, to make an application for patent. Additionally, a party who has a “sufficient proprietary interest” in the invention may make an application for patent as an agent of the inventor upon “proof of pertinent facts” of such interest.
35 USC § 115(d) permits the “applicant” to make a substitute statement in lieu of an oath/declaration under certain permitted circumstances, such as the death or incapacity of an inventor or an inventor’s refusal to sign an oath/declaration when the inventor is under obligation to assign the invention to the applicant. Also, an “individual” under obligation to assign can now, in an assignment document, make the required oath/declaration and other requirements as instituted by the Director under §§ 115(b) and 115(c).
On September 6, 2012, the United States Patent and Trademark Office published proposed rules in the Federal Register setting or adjusting fees for patent related services. In proposing patent fees the USPTO is for the first time seeking to exercise the fee setting authority established under Section 10 of the America Invents Act (AIA). According to the Federal Register Notice, the proposed fees are appropriate to cover patent operations at the Office, as well as create a “sustainable funding model” that will work toward further reduction in the patent application backlog. The fees are also set with an eye toward a necessary “upgrade [of] the Office’s patent business information technology (IT) capability and infrastructure.”
Now begins a two month public comment period. In order to ensure consideration, those wishing to submit written comments must do so no later than November 5, 2012. Comments should be sent by electronic mail message over the Internet addressed to: email@example.com. Further, these proposed fees will be fair game for discussion at the AIA Roadshows scheduled throughout the United States during the month of September.
The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. Decreased fees for micro-entity status are appreciated, but they will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.