Update on Implementation of American Invents Act Effective As of September 16, 2012

By Dennis Clarke and James McEwen

On September 16, 2011, the “Leahy-Smith America Invents Act” (AIA) was signed into law. The AIA makes the most substantial changes in U.S. patent law in decades and sets various dates on which these changes are to take effect.

The most profound of those changes is the switch to a first-inventor-to-file system, in place of the current first-to-invent practice in the U.S. This change takes effect only for applications originally filed on or after March 16, 2013. However, on September 16. 2012, other major changes will take effect, including the possibility of requesting inter partes review and other post-grant trial procedures before the newly renamed “Patent Trial and Appeal BoarcL” This paper will predominantly relate to the new requirements relating to declarations and assignments and other miscellaneous provisions that have an effective date of September 16, 2012. The new trial proceedings are discussed briefly hereinbelow.

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USPTO Issues Proposed Rules for Implementing the America Invents Act

Charles Pierce and James G. McEwen

On July 25, 2012, the United States Patent and Trademark Office (USPTO) announced proposed rules as a result of changes in the America Invents Act (AIA) converting the U.S. patent system from a first to invent to a first to file system.  These changes will take place on March 16, 2013.

The proposed rules are intended to promote consistency caused by the changes in the AIA for pending applications, and to implement the AIA for future applications.  Comments on the proposed rules are open until October 5, 2012.  Below is a summary of significant elements of the proposed rules.

The proposed rules will treat commonly owned or joint research agreement patents and patent application publications as having the same inventive entity for the purposes of 35 U.S.C. §§ 102 and 103 as required under 35 U.S.C. § 102(c) of the AIA.  35 U.S.C. §102(c) of the AIA essentially broadens the current 35 U.S.C. §§ 103(c) by making these provisions usable for novelty.  The broadened use of this exclusion should be beneficial to holders of large families of patents.

Since new 35 U.S.C. §102(b) provides exceptions to 35 U.S.C. §102(a) based upon prior disclosure by the inventor, the rule changes also allow the submission of affidavits or declarations to show that a disclosure upon which a claim rejection is based was made by an inventor, joint inventor, or someone who obtained the disclosed subject matter from the inventor or a joint inventor.  These provisions will also allow the submission of affidavits to show that there was a prior public disclosure by an inventor, joint inventor, or someone who obtained the disclosed subject matter from the inventor or a joint inventor.  This will be codified in 37 CFR §§ 1.104, 1.130, and 1.131.

Another change being implemented relates to using the effective dates of foreign priority applications against third party patents.  In order to ensure that the foreign priority documents are received in time for publication and use, the USPTO is now requiring that the certified copy be received within the deadline now only required for submitting the priority claim: the later of four months from the filing date or sixteen months from the foreign priority date.  The claim must also be included in an Application Data Sheet.  While these changes are likely not an issue where the applicant is able to retrieve priority documents using the priority document exchange (PDX) system, this timing will be an issue for all other applications.  Therefore, applicants need to ensure that the certified copies are provided as soon as possible in the prosecution process or be required to file a Petition for late acceptance.

The last major change in this round of AIA rulemaking is relate to the transitional period between first to invent and first to file, and probably will have the greatest short term impact on patent practitioners.  In order to ensure that the USPTO can properly evaluate which set of rules to apply when faced with priority claims for applications filed prior to March 16, 2013, the USPTO is requiring the applicants identify which rules will apply.

Specifically, where the application is filed after March 16, 2013, but claims the benefit of a foreign, provisional, or nonprovisional application having an effective filing date prior to March 16, 2013, the applicant will need to provide a statement whether the claims in the application are entitled to the earlier effective filing date.  Also, if the nonprovisional application that claims such benefit does not contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013, but discloses subject matter not also disclosed in the prior application, the applicant must provide a statement to that effect.  For example, under proposed 37 C.F.R. 1.55, where the application claims priority to a foreign application filed prior to March 16, 2013, the applicant will need to specify if there is new matter in the application, and whether the claims are supported by the foreign priority date.  Examples of such statements include “upon reasonable belief, this application contains subject matter not disclosed in the foreign application” or “upon reasonable belief, this application contains at least one claim that has an effective filing date subject matter on or after March 16, 2013”.

These statements will have to be filed within the later of four months from the actual filing date of the later application, four months from the date of entry into the national stage in an international application, or sixteen months from the filing date of the prior filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013 is presented in the application.  Failure to make such a statement after these deadlines will require a Petition, and any changes will result in the Examiner issuing a Request for Information under 37 CFR 1.105 to require the applicant to prove by line and element number where support is found.  For continuations, divisionals, and continuation in part applications, this requirement will be codified in 37 CFR § 1.78.

As these rules are still only being proposed, applicants and the legal community are reviewing the proposed changes and preparing comments.  While many of the changes seem consistent with the requirements of the AIA, the transitional requirement for identifying whether disclosures and claims can have an effective filing date in a prior application are likely the most controversial and the most likely to cause significant problems for applicants having families of patents.  Therefore, as a short term solution, in order to avoid these potential issues should the USPTO not retract this provision, applicants should ensure that they file applications prior to March 16, 2013 if any priority claim is going to be made to an application filed prior to March 16, 2013.

Feature Comment: Updated USPTO Program to Accelerate Examination of Green Technologies

By James G. McEwen[1]

I.        INTRODUCTION

With the average pendency for patent applications now 35.3 months and applicants waiting on average 25.7 months for even a first action[2], patent applicants have been searching for new ways to accelerate their applications in order to ensure that the patent protection that they need is acquired within the timeframe needed to protect their commercial embodiment.  Such acceleration is performed by getting an application labeled as Special, which allows the Examiner to examine the application ahead of older applications.  Thus, there is a strong incentive for applicants to find a mechanism to get their application designated Special.

However, the United States Patent and Trademark Office (USPTO) places strict limits on which applications can be designated Special.  Specifically, outside of reissue applications and participants in the Patent Prosecution designated Special using a Petition to Make Special.[3]  While the Petition to Make Special can be an attractive option, the cost and risks of filing the Petition to Make Special (and particularly the cost and risks associated with filing the search document explaining the distinctions between the claimed invention and the prior art) usually outweigh the benefits of immediate examination.  Thus, applicants have not typically used these Petitions except in very exceptional circumstances.

At the same time, there is an increased emphasis on creating and encouraging domestic development of green technologies.  These technologies, however, are subject to the same patent pendency problem.  Arguably, green technologies actually faired worse than average in regards to patent pendency.  According to the USPTO, the “average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision.”[4]  As a result, the USPTO implemented a pilot program to accelerate the patenting of green technology, and thus “accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.”[5]

In order to ovecome these problems, the USPTO first implimented a Pilot Program in December 8, 2009 to encourage technology investment in green technologies.  While moderately successful initially, the USPTO has broadened the qualifications to now allow larger categories of applicants to participate in the program.  The below article discusses both the original program, how the USPTO has broadened the qualification requirements, and how applicants can take advantage of these changes.

II.       Original Requirements for Participation in Pilot Program for Green Technologies

When the Pilot Program was first announced, the United States Patent and Trademark Office had not yet indicated how the program was to be run, or even what technologies would be considered a “green technology.”  This deficiency was resolved on December 29, 2009, when the United States Patent and Trademark Office published a Notice for the requirements for participation in the Pilot Program for Green Technologies.[6]

In this Notice, the Pilot Program was limited to the first 3,000 Petitions for previously filed new applications, and is effective as of December 8, 2009 through December 8, 2010.  Further, the application cannot contain more than one invention, and no more than twenty claims and three independent claims.  However, the application can be amended with a Preliminary Amendment accompanying the Petition in order to comply with this requirement.

Scope of Green Technology

As set forth in the Notice, the scope of the program encompasses any green technologies which provide for greenhouse gas reduction.  Specifically listed are technologies related to

  • environmental quality,
  • energy conservation,
  • development of renewable energy resources, or
  • greenhouse gas emission reduction.

The Notice specifically lists the patent classifications which are currently considered within these categories, which therefore define the scope of the Pilot Program.    While technologies such as biofuels, wind turbines, fuel cells and solar cells are obviously included in the scope of green technologies, the Notice shows that the USPTO has taken a broad view of what constitutes a green technology.  For instance, examples of Energy Conservation includes “Cathode ray tube circuits (USPC 315/150, 151, 199)”, “Commuting, e.g., HOV, teleworking (USPC 705/13),” and “Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/32-46).”  Thus, merely because a technology is not always thought of as a green technology does not mean that an applicant should not take a closer look to determine whether their pending applications qualify as a green technology for purposes of the Pilot Program.

General Petition Requirements

If a technology is a green technology, the applicant can file a Petition to Make special under the Green Technology Pilot Program.  The Petition itself does not require a fee as the “$130.00 fee for a petition under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for petitions to make special based upon the procedure specified in this notice.”

The Petition must be electronically filed prior to December 8, 2010 or prior to the first Office Action, whichever comes first.  When filing electronically, the applicant needs to label the filing as “Petition for Green Tech Pilot”, and should use the newly-created form PTO/SB/420.  However, applicant created forms can be used.

The Petition needs to include a request for early publication with accompanying fee.  Further, the applicant needs to agree to elect between inventions pursuant to a telephone interview should the Examiner determine that the application contains more than one invention.

The Petition needs to include evidence as to how the technology meets one of the two Eligibility requirements.  Specifically, the Petition or the underlying application must indicate how the invention is material to advancing green technology as defined under one of the Eligibility requirements.  Ideally, an applicant should include such a statement in the Petition in order to ensure that the materiality is demonstrated even where the applicant believes that the application clearly indicates how the invention is material to the development of green technology.

Notably, neither Eligibility requirement requires the conducting of a pre-examination search and examination support document.  Thus, the Petition should be cheaper and less risky to file as compared to where a Petition to Make Special is used.

The two Eligibility requirements are set forth below.

 

1.       Eligibility Requirement for Applications Pertaining to Environmental Quality

For applications whose eligibility is related to Environmental Quality, the Petition needs to set forth how the technology will “materially enhance the quality of the environment under the conditions specified in item V of MPEP Sec. 708.02.”  Under this standard, the Petition must specifically state that the Special status is appropriate since the invention “materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements.”  The materiality standard can be met if the application itself clearly demonstrates the importance of the technology, or if there is a statement included in the Petition which demonstrates how the invention is material.

2.      Eligibility Requirement for Applications Pertaining to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction

For applications whose eligibility is related to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction, the applicant needs to demonstrate that the invention “materially contribute” to the “The discovery or development of renewable energy resources; the more efficient utilization and conservation of energy resources; or the reduction of greenhouse gas emissions.”

A “renewable energy resource” includes “hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources.

For “energy conservation”, the invention must relate to reducing energy consumption in some form of system, including “combustion systems, industrial equipment, and household appliances.”

The reduction of greenhouse gas emissions includes technologies which advance nuclear power generation technology, or “fossil fuel power generation or industrial processes with greenhouse gas-abatement technology.”  Moreover, the technologies need not be directed only to improvements in these technologies, and can also include “inventions that significantly improve safety and reliability of such technologies).”

Where the Petition relates to this second ground of Eligibility, the Petition needs to explain that the Special status is deserved by demonstrating how the materiality requirement is met for these categories.  As with the first Eligibility requirement, where the materiality requirement is not evident from the application itself, the applicant needs to include in the Petition an explanation as to how the technology materially aids in the development of these categories of inventions.

 

III.      NEW CHANGES

Recognizing that the Green Technology program was under performing, the USPTO enacted changes to help stimulate participation.  Specifically, according to the USPTO’s own statistics, the technical requirements of the Petitions had allowed only 48% of all received petitions to be granted participation, whereas 35% were dismissed and 8% were denied.[7]  Indeed, the number of denied petitions exceeded the number of patents issuing under the program. To enhance participation to meet its own expectations, the USPTO has since expanded the program in three significant ways.

First, the USPTO withdrew the requirement that the application fit within pre-determined patent classifications as discussed above.  As noted in the comments accompanying the change, the purpose of using the patent classifications had been to balance the workload within the USPTO, but the requirement had resulted in “denials of petitions for applications that are drawn to green technologies” even though the workload balance had been achieved.[8]  As such, the USPTO eliminated a procedural hurdle which was preventing full use of the program.

Second, the USPTO expanded the program by filing date requirement.  As noted above, the original program only applied to applications filed prior to the start of the pilot program (i.e., filed prior to December 8, 2009).  This change allowed applicants to ensure new inventions can participate in the program, and allows applicants whose petition was refused solely due to the filing date to renewed petition.  The renewed petition was given “priority” over other petitions if the renewal was filed by December 10, 2010.[9]

Third, the USPTO extended the duration of the program for another year.  As such, the program will be closed after December 31, 2011, but will remain limited 3000 granted petitions.[10]  This extension was made to allow further participation in the program since, as of December 13, 2010, only 917 petitions had been granted and only 148 petitions were awaiting a decision.[11]

 

IV.      CONCLUSION

Petitions to Make Special have traditionally been a way for the United States Patent and Trademark Office to ensure that the most important inventions are examined in advance of all inventions.  With the costs and burdens associated with Petitions to Make Special, applicants are generally reluctant to file such Petitions.   However, by making broad categories of green technologies available for Petitions to Make Special without the cumbersome pre-examination searches and supporting documentation, the United States Patent and Trademark Office has taken the unusual step of allowing entire categories of technology to be treated in advance at a relative low cost. Further, through removal of man of the procedural complexities which previously existed, such Petitions are now easier to obtain and simpler to prepare.  Given the uniqueness of this opportunity, applicants would be well advised to review their pending applications to determine if their invention qualifies for this inexpensive mechanism to ensure that their technology is timely protected

 


[1] James G. McEwen is a partner at Stein McEwen, LLP.  The opinions in this article do not represent the official positions of Stein McEwen, LLP.

[2] FY 2010 USPTO Performance and Accountability Report, Table 4: Patent Pendency Statistics (FY2010) (http://www.uspto.gov/about/stratplan/ar/2010/index.jsp) .

[3] MPEP 708.01.

[4] The U.S. Commerce Department’s Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain green technology patent applications (December 7, 2009) http://www.uspto.gov/news/pr/2009/09_33.jsp.

[5] Id.

[6] 1349 Official Gazette 362

[7] USPTO, Green Petition Report Summary (December 13, 2010).

[8] Elimination of Classification Requirement in the Green Technology Pilot Program, 75 Fed. Reg. No. 98, p. 28554 (May 21, 2010).

[9] Expansion and Extension of the Green Technology Pilot Program, 75 Fed. Reg. No. 217, pp. 69049-50 (November 10, 2010).

[10] Id.

[11] USPTO, Green Petition Report Summary (December 13, 2010).

Feature Comment: New USPTO Program to Accelerate Examination of Green Technologies

By James G. McEwen[1]

I.        INTRODUCTION

With the average pendency for patent applications now 34.6 months and applicants waiting on average 25.8 months for even a first action[2], patent applicants have been searching for new ways to accelerate their applications in order to ensure that the patent protection that they need is acquired within the timeframe needed to protect their commercial embodiment.  Such acceleration is performed by getting an application labeled as Special, which allows the Examiner to examine the application ahead of older applications.  Thus, there is a strong incentive for applicants to find a mechanism to get their application designated Special.

However, the United States Patent and Trademark Office (USPTO) places strict limits on which applications can be designated Special.  Specifically, outside of reissue applications and participants in the Patent Prosecution designated Special using a Petition to Make Special.[3]  While the Petition to Make Special can be an attractive option, the cost and risks of filing the Petition to Make Special (and particularly the cost and risks associated with filing the search document explaining the distinctions between the claimed invention and the prior art) usually outweigh the benefits of immediate examination.  Thus, applicants have not typically used these Petitions except in very exceptional circumstances.   

At the same time, there is an increased emphasis on creating and encouraging domestic development of green technologies.  These technologies, however, are subject to the same patent pendency problem.  Arguably, green technologies actually faired worse than average in regards to patent pendency.  According to the USPTO, the “average pendency time for applications in green technology areas is approximately 30 months to a first office action and 40 months to a final decision.”[4]  As a result, the USPTO implemented a pilot program to accelerate the patenting of green technology, and thus “accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.”[5] 

II.       Requirements for Participation in Pilot Program for Green Technologies

When the Pilot Program was first announced, the United States Patent and Trademark Office had not yet indicated how the program was to be run, or even what technologies would be considered a “green technology.”  This deficiency was resolved on December 29, 2009, when the United States Patent and Trademark Office published a Notice for the requirements for participation in the Pilot Program for Green Technologies.[6] 

In this Notice, the Pilot Program was limited to the first 3,000 Petitions for previously filed new applications, and is effective as of December 8, 2009 through December 8, 2010.  Further, the application cannot contain more than one invention, and no more than twenty claims and three independent claims.  However, the application can be amended with a Preliminary Amendment accompanying the Petition in order to comply with this requirement.

Scope of Green Technology

As set forth in the Notice, the scope of the program encompasses any green technologies which provide for greenhouse gas reduction.  Specifically listed are technologies related to

  • environmental quality,
  • energy conservation,
  • development of renewable energy resources, or
  • greenhouse gas emission reduction.

The Notice specifically lists the patent classifications which are currently considered within these categories, which therefore define the scope of the Pilot Program.    While technologies such as biofuels, wind turbines, fuel cells and solar cells are obviously included in the scope of green technologies, the Notice shows that the USPTO has taken a broad view of what constitutes a green technology.  For instance, examples of Energy Conservation includes “Cathode ray tube circuits (USPC 315/150, 151, 199)”, “Commuting, e.g., HOV, teleworking (USPC 705/13),” and “Roadway, e.g., recycled surface, all-weather bikeways (USPC 404/32-46).”  Thus, merely because a technology is not always thought of as a green technology does not mean that an applicant should not take a closer look to determine whether their pending applications qualify as a green technology for purposes of the Pilot Program.

General Petition Requirements

If a technology is a green technology, the applicant can file a Petition to Make special under the Green Technology Pilot Program.  The Petition itself does not require a fee as the “$130.00 fee for a petition under 37 CFR 1.102 (other than those enumerated in 37 CFR 1.102(c)) is hereby sua sponte waived for petitions to make special based upon the procedure specified in this notice.” 

The Petition must be electronically filed prior to December 8, 2010 or prior to the first Office Action, whichever comes first.  When filing electronically, the applicant needs to label the filing as “Petition for Green Tech Pilot”, and should use the newly-created form PTO/SB/420.  However, applicant created forms can be used.

The Petition needs to include a request for early publication with accompanying fee.  Further, the applicant needs to agree to elect between inventions pursuant to a telephone interview should the Examiner determine that the application contains more than one invention.

The Petition needs to include evidence as to how the technology meets one of the two Eligibility requirements.  Specifically, the Petition or the underlying application must indicate how the invention is material to advancing green technology as defined under one of the Eligibility requirements.  Ideally, an applicant should include such a statement in the Petition in order to ensure that the materiality is demonstrated even where the applicant believes that the application clearly indicates how the invention is material to the development of green technology. 

Notably, neither Eligibility requirement requires the conducting of a pre-examination search and examination support document.  Thus, the Petition should be cheaper and less risky to file as compared to where a Petition to Make Special is used.

The two Eligibility requirements are set forth below.

 

1.       Eligibility Requirement for Applications Pertaining to Environmental Quality

For applications whose eligibility is related to Environmental Quality, the Petition needs to set forth how the technology will “materially enhance the quality of the environment under the conditions specified in item V of MPEP Sec. 708.02.”  Under this standard, the Petition must specifically state that the Special status is appropriate since the invention “materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements.”  The materiality standard can be met if the application itself clearly demonstrates the importance of the technology, or if there is a statement included in the Petition which demonstrates how the invention is material. 

2.      Eligibility Requirement for Applications Pertaining to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction  

For applications whose eligibility is related to Energy Conservation, Development of Renewable Energy Resources, or Greenhouse Gas Emission Reduction, the applicant needs to demonstrate that the invention “materially contribute” to the “The discovery or development of renewable energy resources; the more efficient utilization and conservation of energy resources; or the reduction of greenhouse gas emissions.”

A “renewable energy resource” includes “hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources.

For “energy conservation”, the invention must relate to reducing energy consumption in some form of system, including “combustion systems, industrial equipment, and household appliances.”

The reduction of greenhouse gas emissions includes technologies which advance nuclear power generation technology, or “fossil fuel power generation or industrial processes with greenhouse gas-abatement technology.”  Moreover, the technologies need not be directed only to improvements in these technologies, and can also include “inventions that significantly improve safety and reliability of such technologies).”

Where the Petition relates to this second ground of Eligibility, the Petition needs to explain that the Special status is deserved by demonstrating how the materiality requirement is met for these categories.  As with the first Eligibility requirement, where the materiality requirement is not evident from the application itself, the applicant needs to include in the Petition an explanation as to how the technology materially aids in the development of these categories of inventions. 

 

 

V.       CONCLUSION

Petitions to Make Special have traditionally been a way for the United States Patent and Trademark Office to ensure that the most important inventions are examined in advance of all inventions.  With the costs and burdens associated with Petitions to Make Special, applicants are generally reluctant to file such Petitions.   However, by making broad categories of green technologies available for Petitions to Make Special without the cumbersome pre-examination searches and supporting documentation, the United States Patent and Trademark Office has taken the unusual step of allowing entire categories of technology to be treated in advance at a relative low cost. Given the uniqueness of this opportunity, applicants would be well advised to review their pending applications to determine if their invention qualifies for this inexpensive mechanism to ensure that their technology is timely protected. 

 


[1] James G. McEwen is a partner at Stein McEwen, LLP.  The opinions in this article do not represent the official positions of Stein McEwen, LLP.

[2] Patent Pendency Statistics – FY09 (http://www.uspto.gov/patents/stats/patentpendency.jsp) (December 30, 2009).

[3] MPEP 708.01.

[4] The U.S. Commerce Department’s Patent and Trademark Office (USPTO) will pilot a program to accelerate the examination of certain green technology patent applications (December 7, 2009) http://www.uspto.gov/news/pr/2009/09_33.jsp.

[5]Id.

[6] 1349 Official Gazette 362 

Practice Tip: Pitfalls of Priority Document Exchange

By James G. McEwen[1]

Background

The Paris Convention for the Protection of Industrial Property allows foreign applicants to claim priority in aUnited Statespatent application to a foreign patent application.  The Paris Convention is implemented at 35 U.S.C. §119.  In order to claim this benefit, 35 U.S.C. §119 requires applicants to complete at least two tasks: 1) making a claim for priority, and 2) filing a certified copy of the foreign priority application.  Ideally, this claim is made during the pendency of theU.S.application.  It is the applicant’s responsibility to ensure that these requirements are met.

If either the claim or the priority document is not filed while the application is pending, it is still possible to rescue the priority claim by filing a reissue application.  MPEP 201.16 (noting reissue applications can be used to perfect priority claims, whereas certificates of correction cannot).  However, this is not a preferred method since reissue applications can be complex to prepare and are expensive to file.  Therefore, it is important for applicants to ensure that both the claim for priority and the certified copy of the foreign priority document are timely filed while theU.S.application is pending.

Traditionally, an applicant complied with these requirements by obtaining a certified copy of the foreign priority document, shipping the certified copy to aU.S.patent attorney, and theU.S.patent attorney would file the certified copy.  This process therefore incurred fees for both obtaining the certified copy, and shipping the certified copy.  Moreover, the United States Patent and Trademark Office (USPTO) was forced to store such documents in their files and repositories.  Also, where the application is stored in the image file wrapper, USPTO was forced to disassemble the certified copy and scan the certified copy.  Therefore, the process incurred a number of costs on both the applicant and the USPTO. Continue reading

Feature Comment: Status of New Rules Affecting Continuation Practice, Claims Practice, and Information Disclosure Statement Practice

By James G. McEwen[1]

Background

Under prior rules, an applicant was entitled to file as many continuation applications as needed to ensure that the invention was properly claimed and to prevent inadvertently narrow limitations from precluding literal infringement.  The only limitation on the number of continuations was generally set by matters of equity or where an applicant was not attempting to advance prosecution by amending the claims.  The applicant could also attempt to ensure such coverage using a single application which included as many claims as needed.  The limitation on the number of claims in a single application was set by the Examiner, who could issue a restriction if the number of claims being examined was deemed too burdensome for a single application. 

Likewise, applicants were strongly encouraged, through court decisions, to submit, in an Information Disclosure Statement, any information which could be deemed material.  Due to the influence of cases such as McKesson Information Solutions v. Bridge Medical, Inc., 487 F3d 897; 82 USPQ2d 1865 (Fed. Cir. 2007) and Nilssen, et al. v. Osram Sylvania, Inc., et al., 504 F.3d 1223; 84 USPQ2d 1811 (Fed. Cir. 2007), the standard for when documents and arguments need to be presented has been greatly expanded.  As such, practitioners have generally been highly inclusive in  determining what documents need to be submitted in order to ensure that, during enforcement proceedings, a court does not find the resulting patent unenforceable for failure to submit material prior art.

In an effort to reduce the number of outstanding applications, application pendency, and the claims for each application, the United States Patent and Trademark Office (USPTO) attempted to institute a new rule package to be effective on November 1, 2007.  As previously reported in Volume 3, Issue 3, of the Stein McEwen Newsletter, the new rule package was designed to change existing patent prosecution strategies by effectively limiting the number of continuations and claims.  

Similarly, on July 10, 2006, the USPTO proposed changing the Information Disclosure Statement requirements in order to reduce the burden on the Examiner due to large submissions.  As previously reported in Volume 2, Issue 3 of the Stein McEwen Newsletter, the USPTO proposed these rule changes as part of the USPTO’s Focus the Patent Process in the 21st Century plan, and are designed to “encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.”  In order to achieve this goal, the USPTO is proposing applicants submit additional information about the submitted documents which varies dependent on the timing of the submission, as well as the number of submissions.

Status of Changes to Claim and Continuation Rules

As previously reported in Volume 3, Issue 4 of the Stein McEwen Newsletter, in order to prevent the new continuation and claims rules from becoming effective, a suit was brought under the Administrative Procedures Act to enjoin their enactment.  The suit was brought in the Eastern District of Virginia first by an individual inventor, Triantafyllos Tafas.  This suit was later joined by Glaxo Smithkline.  On October 31, 2007, the District Court issued a preliminary injunction preventing the USPTO from implementing the rules as planned on November 1, 2007.  While not permanent, the preliminary injunction indicates that the rules may be reversed in at least certain areas. 

Recently, the Federal Circuit reversed the District Court, finding that the USPTO the rules were within the powers delegated to the USPTO under 35 U.S.C. §2(b).  Specifically, in Tafas et al. v. Dudas, Civ. Case No. 2008-1352 (Fed. Cir. March 20, 2009), the Federal Circuit found that, while the USPTO cannot enact substantive rules which preclude a change in substantive standards by which an applicant’s application is judged, it can enact procedural rules which do not “foreclose effective opportunity to make one’s case on the merits.” Quoting JEM Broad. Co. v. FCC, 22 F.3d 320, 327-28 (D.C. Cir. 1994) quoting Lamoille Valley R.R. Co. v. Interstate Commerce Comm’n, 711 F.2d 295, 328 (D.C. Cir. 1983)).  By this standard, the Federal Circuit found that the new continuation rules do not effectively preclude all opportunities for filing continuations and RCEs since applicants can still comply with the procedures set forth in proposed Rules 78 and 114 to ensure that additional continuations and RCEs are filed.  Moreover, the filing of an ESD is similarly procedural such that proposed Rules 75 and 265 provide a remedy to allow more than 25 patentably indistinct claims in a family of applications. 

While the Federal Circuit did note that the USPTO had threatened to make the rules so draconian as to effectively preclude an applicant’s ability to claim an invention or otherwise obtain coverage using RCEs and continuation applications in excess of the proposed rule limits, the Federal Circuit held that such interpretations are purely speculative.  However, should such interpretations come to realization, applicants would be entitled to have such interpretations reviewed under the APA.

Next, even though the Federal Circuit found that the USPTO had the power to enact these sorts of rules, the Federal Circuit noted that such rules must not be arbitrary and capricious or contrary to law.  On review under this standard, the Federal Circuit found that the continuation rules in proposed Rule 78 were contrary to law.  Specifically, the Federal Circuit found that 35 U.S.C. §120 allows for unlimited continuation applications, and the proposed Rule 78 would have added a substantive requirement not required by statute.  As such, the Federal Circuit found that proposed Rule 78 was contrary to law, and cannot be enacted in its present form.

In contrast, the Federal Circuit found that proposed Rule 114, which required a specific petition for an additional RCE per patent family, was not in conflict with 35 U.S.C. §132.  Specifically, while 35 U.S.C. §132 created RCEs, it does not unambiguously require the USPTO to grant unlimited RCEs.  Therefore, the USPTO’s interpretation of the statute for the purposes of limiting RCEs in proposed Rule 114 was entitled to deference and is thus not in conflict with the law.

Similarly, the Federal Circuit also held that, while 35 U.S.C. §112 ¶ 2 does allow an applicant to claim unlimited numbers of claims, the proposed Rules 75 and 265 do not actually limit the numbers of claims an applicant can have.  Instead, the proposed Rules 75 and 265 merely trigger an additional submission of information via an ESD, and therefore do not provide a limit on the number of claims per se. 

As such, the Federal Circuit held that only the continuation rules were contrary to the Patent Act, and the remaining proposed rules were within the rule-making authority of the USPTO.  However, for purposes of remand, the Federal Circuit noted that the decision did not address many issues remaining and directed that the District Court further evaluate the rules for the following issues:

whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically  addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

As such, the Federal Circuit acknowledged that merely indicating that the rules are procedural in nature does not represent an end of the discussion, but merely a beginning of the more substantive conflicts between the APA and the remaining proposed Rules.  Since there is ongoing litigation over whether the remaining rules are compliant with the APA, it remains unclear as to when such remaining rules on the RCEs and claim number limitations will be effective, and in what form.  For instance, it is conceivable that only certain remaining rules will be enjoined, while others remain compliant with the Administrative Procedures Act.  As a result, any implementation will be subject to the District Court’s final decision on whether to permanently enjoin the rules.  As such, applicants cannot anticipate, with reasonable certainty, which portions of the rules will be implemented (if any) and when.

Status of Changes to Information Disclosure Statement Rules

Since the close of the comment period for the information disclosure statement rule changes, the rules have been submitted to the Office of Management and Budget (OMB) for final review, which is required by Executive Order 12866 for all new rules.  While an effort was made to have the rules revised or rejected while under review at the OMB, OMB approved the information disclosure statement rule changes on December 12, 2007.  However, in view of the Federal Circuit’s opinion in Tafas, it is uncertain as to when or if these rules would be issued, and in what form.  

Conclusion

As the final form of each rule change is uncertain, any suggestions in order to address the rule changes would be speculative at best.  However, it would seem advisable to assume, as a worst case scenario, that some form of the claims or RCEs rule changes will be implemented.   Thus, it would be generally advisable to file any new RCEs or applications with large numbers of claims prior to the final decision by the Eastern District of Virginia.  Moreover, in view of the impending changes to the rules for information disclosure statements and to the extent possible, any such information disclosure statements should be filed in an expedited fashion in case the final rules otherwise require the detailed explanations and updating originally proposed by the USPTO. The changes to the information disclosure statement, RCE and claims practices represent one of the largest attempts to change patent prosecution practice in the past ten years.  These changes present specific challenges to the way in which patents have been prosecuted in the past, and the interlocking features of the potential rules make it especially challenging to formulate an effective strategy without substantial study of the policies and the language of the rules.  However, once such a review is done and after the final versions of the rules are implemented, it is apparent that applicants can still protect their inventions through aggressive combinations of restrictions, petitions, appeals, and possible accelerated examinations.  Thus, while the changes are substantial, applicants still have the ability to strategically protect their patentable inventions by adapting to the rule changes and taking advantage of the potential workarounds reported in previous articles of the Stein McEwen Newsletter or to be developed.


[1] The opinions in this article do not represent the official positions of Stein McEwen, LLP.

Implementation of New Appeal Rules Delayed

On December 10, 2008, the United States Patent and Trademark Office (USPTO) issued a Notice in the Federal Register indicating that the new rules applicable to the patent appeals process are not being implemented as originally planned.  According to this Notice, the Office of Management and Budget (OMB) has not completed its review of the rules and is still reviewing information on the proposed rules.  The delay is likely due to substantial questions being raised as to the USPTO’s estimates for the cost applicants will incur in complying with the new rules.  BREAKING NEWS: USTPO Appeal Rules Delayed by OMB (December 9, 2008) (http://www.pli.edu/patentcenter/blog.asp?view=plink&id=385).  It is estimated that the OMB action will delay implementation until at least late January 2009.  As previously noted in Fadi N. Kiblawi and James G. McEwen,  An Overview of the New Rules for Appeal Briefs  STEIN, MCEWEN & BUI LLP NEWSLETTER, pp. 18-21  (Vol. 4, Iss. 3)(September 2008), this rule package had encountered substantial objections from the Intellectual Property community due to the substantial new risks and burdens being visited on the applicants.  Therefore, until further notice, applicants need not comply with the proposed new rules for cases on appeal.

Feature Comment: An Overview of the New Rules for Appeal Briefs

By Fadi N. Kiblawi and James G. McEwen[1]

Introduction

Beginning on December 10, 2008, the United States Patent and Trademark Office (USPTO) will be implementing new rules applicable to the patent appeals process.  Specifically, the new rules will be effective for all appeals filed on or after this date. As such, this rule will potentially affect all pending applications.

According to the USPTO, a major objective of the amended rules for appeals is to avoid unnecessary returns to examiners by the Appeals Center and the Board of Patent Appeals and Interferences, along with the resulting delays in application and appeal pendency. The stipulations of the amended rules are believed by the USPTO to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required.  Accordingly, the need to hold appeal briefs defective is intended to be minimized, if not altogether eliminated.

When initially proposed, the patent bar, and specifically the American Bar Association and the American Intellectual Property Law Associate, had strenuously objected to a number of the provisions.  Of specific concern was a perceived shift in burden under the rules by which applicants were required to provide additional information on support for the claimed subject matter (and hence providing statements which could be construed to limit the scope of the claims during enforcement),[2] as well as appendices requirements which included a requirement to attach the entire prosecution history to the appeal brief.[3]  Additional concerns raised included a number of formatting changes that, while not addressing any perceived problems, would increase the cost to applicants in pursuing an appeal.[4]  While the USPTO did address certain of these concerns, the USPTO substantially adopted the proposed rules in their presented form.  As such, the below article presents the new rules and provides additional detail on significant new elements to be included in the appeal brief. Continue reading

Applicants Are Reminded of New USPTO Fees

In order to account for changes in the Consumer Price Index (CPI), the United States Patent and Trademark Office, (USPTO) has proposed new fees for patent filings.  While previously reported in the Stein McEwen, LLP Newsletter, Vol. 4, Issue 2 (June 2008) as being a 4% projected change in the CPI for 2009 (73 Fed. Reg. 31656 (June 3, 2008)), the final fees reflect a 5% change in the CPI for 2009 73 Fed. Reg. 47534 (August 14, 2008)).  These new fees will go into effect on October 2, 2008.

Description

2008-2009

New Fee

2007-2008

Fee

Basic filing fee – Utility

330.00

310.00

Utility Search Fee

540.00

510.00

Utility Examination Fee

220.00

210.00

Independent claims in excess of three

220.00

210.00

Claims in excess of 20

52.00

50.00

Basic filing fee – Design

220.00

210.00

Design Examination Fee

140.00

130.00

Basic filing fee – Reissue

330.00

310.00

Reissue Examination Fee

650.00

620.00

Reissue Search Fee

540.00

510.00

Provisional application filing fee

220.00

210.00

Utility issue fee

1510.00

1,440.00

Design issue fee

860.00

820.00

Statutory disclaimer

140.00

130.00

Extension for response within first month

130.00

120.00

Extension for response within second month

490.00

460.00

Extension for response within third month

1110.00

1,050.00

Extension for response within fourth month

1730.00

1,640.00

Extension for response within fifth month

2350.00

2,230.00

Notice of appeal

540.00

510.00

Filing a brief in support of an appeal

540.00

510.00

Request for oral hearing

1080.00

1,030.00

Filing of PCT application-USPTO ISA-national stage

330.00

310.00

National Stage Search Fee – search report prepared and provided to USPTO

430.00

410.00

National Stage Search Fee – all other situations

540.00

510.00

National Stage Examination Fee – all other situations

220.00

210.00

USPTO Proposes New Fees For 2009

In order to account for changes in the Consumer Price Index (CPI), the United States Patent and Trademark Office, (USPTO) has proposed new fees for patent filings.  The fees generally reflect a 4% projected change in the CPI for 2009.  73 Fed. Reg. 31656 (June 3, 2008).  These new fees should go into effect on October 1, 2008.  The proposed changes in the patent fees are as follows. All other fees will generally remain unchanged.

Description

2008-2009

Proposed Fee

2007-2008

Fee

Basic filing fee – Utility

320.00

310.00

Utility Search Fee

530.00

510.00

Utility Examination Fee

220.00

210.00

Independent claims in excess of three

220.00

210.00

Claims in excess of 20

52.00

50.00

Basic filing fee – Design

220.00

210.00

Design Examination Fee

140.00

130.00

Basic filing fee – Reissue

320.00

310.00

Reissue Examination Fee

640.00

620.00

Reissue Search Fee

530.00

510.00

Provisional application filing fee

220.00

210.00

Utility issue fee

1500.00

1,440.00

Design issue fee

850.00

820.00

Statutory disclaimer

140.00

130.00

Extension for response within second month

470.00

460.00

Extension for response within third month

1080.00

1,050.00

Extension for response within fourth month

1690.00

1,640.00

Extension for response within fifth month

2300.00

2,230.00

Notice of appeal

530.00

510.00

Filing a brief in support of an appeal

530.00

510.00

Request for oral hearing

1070.00

1,030.00

Filing of PCT application-USPTO ISA-national stage

320.00

310.00

National Stage Search Fee – search report prepared and provided to USPTO

430.00

410.00

National Stage Search Fee – all other situations

530.00

510.00

National Stage Examination Fee – all other situations

220.00

210.00