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First and foremost, it is worth saying that the PTO has finally withdrawn the previously published final rule set relative to ex parte appeals before the Board, which never went into effect.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.
The Kappos Administration at the Patent Office has been criticized in some circles for even pursuing this path because it is too complicated, but such criticism smacks of a healthy dose of condescension if you ask me. It seems far too paternalistic to believe that inventors and small businesses are not savvy enough to figure out what they want and what they need. After all, the idea of attempting to extend the effective life of a provisional patent application was proposed to Director Kappos by an inventor. Life is complicated. Life comes with choices. Some people are lazy and don’t care to inform themselves. We ought not dumb down life and/or the law to the lowest common denominator. Rather, what needs to be done is to articulate the choices with clarity and precision such that those who are diligently engaged can determine if they might find one or another path more useful. This is about making educated choices and giving more flexibility, how is that bad?
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.
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.