And round 2 of the implementation of the America Invents Act (AIA) at the United States Patent and Trademark Office (USPTO) has begun.  Earlier today the USPTO published final rules to implement the preissuance submission provisions of the AIA. The preissuance submission final rules appear in the Federal Register and set forth the procedure that a third party must follow to submit patents, published patent applications, or other publications of potential relevance to the examination of another’s pending patent application.

“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The agency is please to publish the preissuance submission final rules in the Federal Register several weeks before September’s effective date of the provision to give stakeholders ample time to learn the requirements of the final rules.”

USPTO Publishes Proposed Rules for Supplemental Examination and to Revise Reexamination Fees

Changes will implement provisions of the America Invents Act

Washington – The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the America Invents Act. The USPTO is also proposing to adjust the fee for filing a request for ex parte reexamination and to set a fee for petitions filed in ex parte and inter partes reexamination proceedings to more accurately reflect the cost of these processes. The USPTO published these proposed rules in the Federal Register on January 25, 2012.

The United States Patent and Trademark Office was busy last week with Federal Register Notices while most of the business world seemed to be slowing down for the Thanksgiving holiday in the United States. Look for more on the various USPTO Federal Register Notices for November 2011 in the coming days, but let’s focus our attention on what most will likely consider the “big-ticket” item to emanate from the USPTO last week — changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, which were announced in the Federal Register on Tuesday, November 22, 2011.

First and foremost, it is worth saying that the PTO has finally withdrawn the previously published final rule set relative to ex parte appeals before the Board, which never went into effect.  This withdrawal of the failed 2008 changes to PTO appeals is effective November 22, 2011.  For more on these previously published rules and the procedural background leading up to these amendments to USPTO appellate practice see PTO Proposes Rescission of Stayed Ex Parte Appeals Rules. The remainder of these new rules will go into effect on January 23, 2012.

The tragedy unfolding in Japan currently is nearly unthinkable. One of the most powerful earthquakes ever recorded, followed by a tsunami which has devastated the country and brought the nation to the brink of nuclear disaster. At this time of crisis most, if not all, are focused on only the essentials. But life goes on elsewhere and with the law, particularly patent law, what that means is on top of this tragedy companies and inventors in Japan might find rights they have compromised in the United States. There is little that the United States Patent and Trademark Office can do, but yesterday they announced that they would offer whatever accommodations they can under the law. This is typical for natural disasters, and accommodations were given during Hurricane Katrina and several of the most recent earthquakes in California, although those are now years ago.

“Our thoughts and prayers are with the people of Japan who continue to suffer from the effects of the earthquake and resulting tsunami,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The USPTO is offering assistance in the form of flexibility on deadlines to the full extent allowable under our laws to Japanese applicants.”

The United States Patent and Trademark Office will soon unveil a pilot program that is aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. USPTO Director David Kappos wrote about this in the November edition of Inventors Eye, see Providing Inventors More Time and Options. In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months.  That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

USPTO Director David Kappos

The United States Patent and Trademark Office today issued a Notice of Proposed Rulemaking that proposes changes to the rules governing ex parte patent appeals before the Board of Patent Appeals and Interferences. The notice requests public comment on the proposed changes, which include rescinding the highly unpopular 2008 Final Rule, implementation of which has been stayed.  According to the Patent Office, this latest proposal to change appeals practice comes after consideration of the comments USPTO received at a public roundtable held in January and in response to an Advance Notice of Proposed Rulemaking in December 2009.

“We hear often from stakeholders that the patent appellate process is too complicated and burdensome,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The goal of this proposed rulemaking is to simplify the appellate process in a way that reduces the burden on appellants and examiners to present an appeal to the Board.”

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

These interim guidelines build upon the memo sent to the examining corps the day the Supreme Court issued its decision in Bilski v. Kappos, and is intended for use by Office personnel when determining subject matter eligibility under 35 U.S.C. 101. According to the Federal Register Notice, this guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.

Yesterday the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle.  On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts.  This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments.  For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.

One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3).  The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address.  In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful.  I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive.  What a refreshing change that will be!

Earlier today the official notice promised regarding the introduction of a Three-Track patent processing initiative was published in the Federal Register. It was not exactly what I expected, and perhaps I jumped the gun a bit, believing that what was to be published would be proposed rules. Instead, what was published was a detailed call for comments and the announcement of a public meeting to discuss the proposals sketched out. The public meeting will take place at the United States Patent and Trademark Office on July 20, 2010.

Reading the Federal Register Notice made me realize just how much things have changed over the last 18 months at the USPTO. During the Bush Administration the Patent Office largely treated patent professionals and applicants as the enemy; the ones really to blame for all the problems facing the Patent Office and the patent system. Odd coming from a Republican Administration, but that was indeed what we lived with. Now, however, the Patent Office seems to realize that they do not have a monopoly on good ideas, listen, act on what good ideas they like and seek further input from the community in order to refine and build out the ideas and initiatives they seek to implement. The flip in policy and approach is almost surreal.

Kappos speaking at Center for American Progress, 6/2/2010, hinted of a major rulemaking announcement.

UPDATE: For discussion of the Federal Register Notice see USPTO Announces New Examination Rules, Seeks Comment on 33 Questions.

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The United States Patent and Trademark Office is seeking public comment on a major new patent examination initiative that would provide applicants greater control over the speed with which their applications are examined and promote greater efficiency in the patent examination process.  This newly proposed Three-Track program aims to provide applicants with the ability to go faster or slower through the patent process, which will in turn hopefully reduce the pendency of those patent applications that are the most time sensitive.

There will likely be those who oppose this Three-Track proposal, but as far as I can tell what is being proposed is a mechanism to speed your application up or slow your application down. Up until I attended the BIO International Conference in early May 2010 I couldn’t imagine why anyone would want to slow the process down, but there are indeed many who would prefer a slower patent process. I most often work in the software, computer and Internet technology areas where the patent process is extremely slow and getting fast patents is extremely important to attract investors and gain traction. In the biotech, pharma and University sectors, however, there is a great preference for a slower process because basic research is being undertaken and that might not ultimately prove fruitful.

On January 20, 2010, the Patent Office is hosting a 3-hour “roundtable” to discuss the Advanced Notice of Proposed Rulemaking (ANPRM) regarding Rules of Practice Before the Board of Patent Appeals and Interferences. USPTO published this ANPRM on December 22, 2009.  The roundtable will be held at the USPTO’s Madison Auditorium located at 600 Dulany Street, Alexandria, Virginia.

The public event is a major step forward for the Office in terms of transparency and willingness to consult. USPTO has been sharply criticized for failures in these areas over the past few years, so it is extremely important for inventors and the patent bar to meet them halfway by participating. If you cannot attend the roundtable in person, be sure to submit comments by 5 o’clock Eastern Standard Time February 25, 2010. Submit by email to BPAI.Rules@uspto.gov.

On the other hand, I am disturbed that the Patent Office is allowing just one month to comment. Normally, agencies give the public 60 or 90 days to respond to ANPRMs. That’s especially so when the public comment period occurs during the holidays. There is no obvious urgency to this matter, so it’s hard to come up with a good reason why USPTO is being miserly with respect to the deadline.

PRESS RELEASE:

GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and Trademark Office). GSK and the USPTO will file a joint motion with the U.S. Court of Appeals for the Federal Circuit to dismiss the litigation and to vacate the previous decision in this case by the U.S. District Court for the Eastern District of Virginia. The USPTO is withdrawing all regulations under dispute.

I am still in San Diego, California at the Annual Conference of the National Association of Patent Practitioners, which is being held at the Embassy Suites Hotel, which is roughly across the street from the U.S.S. Midway.  The conference has been a good one with some excellent presentations.  This morning there was a Bilski presentation, and since then we have been talking about KSR v. Teleflex.  Right now Bruce Stoner, the former Chief Judge of the Board of Patent Appeals and Interferences, is talking about Reexamination generally, and discussing the impact KSR has had on Reexamination decisions.  As it turns out, very few inter partes Reexaminations have reached the BPAI to date, with only 11 decisions having been reached by the Board relating to inter partes Reexaminations, with 10 cases still pending.  With a limited data set it is hard to make broad generalizations, but it seems that in about half of the cases where the examiner has rejected claims during inter partes Reexaminations those rejections have been reversed by the Board.  In a handful of other case the examiner has been affirmed, and in a few cases the examiner was reversed but the claims were rejected on other grounds.  Perhaps this is a self selecting sample, or perhaps the sample is just too small.  It is a little surprising to see the Board reversing examiner rejections in inter partes Reexamination at such a high rate.

I am extremely encouraged by the fact that the US Patent Office seems to be increasingly coming under the direction of those who have a sincere desire to see the system succeed and be better.  I think Acting Commissioner Peggy Focarino is making real progress with important initiatives, I think it is a step in the right direction for President Obama to appoint a Patent Attorney to run the Patent Office, which as odd as it sounds is a revolutionary concept.  I think bringing people like Nick Godici back is a great step, and like I have said on numerous times in my writing we need to leverage the collective experience of the many talented folks who have left the USPTO or been forced out for political reasons.  Having said all this, good people who understand the system are only the first step to regaining control of the destiny of the Patent Office.  Given the chaos that has lead to unbelievable and counter-productive delays in getting a patent application examined and issued, there needs to be creative outside-the-box thinking in order to get the PTO back on track and innovation flowing to the point where we can dig ourselves out of this horrible recession.  Toward that end, I submit the follow recommendations.

On Monday, July 6, 2009, the United States Court of Appeals for the Federal Circuit (minus Judge Lourie who did not participate in the poll of judges) decided to rehear the claims and continuations rule challenge of Tafas and GlaxoSmithKline en banc.  Additionally, the CAFC has vacated the panel decision that awarded a victory to the USPTO.  The date of oral arguments in front of the entire Federal Circuit is as yet to be determined.

The CAFC will hear the case sitting as one based on the briefs already submitted, but is providing a limited opportunity for additional briefs.  The Appellant’s additional brief is due within 30 days, followed by a 20 day period within which the Appellee may then file a subsequent brief, followed by a 7 day period within which the Appellant may file a reply.  Additional briefs are limited to 7,000 and any reply brief limited to 3,500 words.

What follows is the text of the Federal Circuit Order.