Patent Office

September 30, 2013

Government Shutdown May Soon Affect USPTO and Federal Courts

Washington, D.C. — The U.S. Patent Office (“USPTO”) and federal courts may be affected by a government shutdown, which will begin tomorrow if Congress does not enact a continuing resolution to fund government operations today.

The federal court system will not be affected immediately. During the first 10 business days of a lapse in appropriations, the judiciary will use available fee and no-year balances to pay judges and court employees, and to maintain court operations. Courts will continue to operate, but court personnel have been instructed to conserve funding as much as possible by delaying or deferring expenses that are not critical to the performance of their constitutional responsibilities.

After the 10-day period, if there is still no appropriation, the judiciary will operate under the terms of the Anti-Deficiency Act, which allows “essential work” to continue during a lapse in appropriations. Among the definitions of “essential work” are powers exercised under the Constitution, which include activities to support the exercise of Article III judicial powers, specifically the resolution of cases.

January 23, 2013

U.S. Patent Office Updates Patent Application Fees Based on America Invents Act

By Overhauser Law Offices, LLC

Washington, DC

On January 18, 2013, the U.S. Patent and Trademark Office on issued final rules setting revised patent fees under Section 10 of the America Invents Act. (78 Fed. Reg. 4211). Section 10 of the AIA permits the USPTO to set or adjust by rule any fee under Title 35 or Title 15 for any services performed by or materials furnished by the Office. According to the statute, the fees may only recover the aggregate estimated costs for patent and trademark processing, activities, services, and materials. In its final rule notice, the Office said the fee-setting authority would permit sustainable funding and reduce the patent application backlog. According to the Federal Register notice:
The fee schedule in this final rule will recover the aggregate estimated costs of the Office while achieving strategic and operational goals, such as implementing a sustainable funding model, reducing the current patent application backlog, decreasing patent application pendency, improving patent quality, and upgrading the patent IT business capability and infrastructure.
For the most part, the fees in the final rules are the same as those in the proposal published last September (77 Fed. Reg. 55028, 9/6/2012). Many of the new front-end fees are reduced, such as the basic filing fee for an original patent application (reduced from $380 to $280), and the new fees include the 50% discount for small entities and 75% discount for micro entities. Among the differences between the proposed and final fees, the following are examples for non-small entity applicants:
• Correction of inventorship after first Office action (§1.17(d))
Proposed: $1,000; Final: $600
• Issue fee paid before January 1, 2014 (§1.18(a)(2))
Proposed: $960; Final: $1,780
• Ex parte reexamination fee (§1.20(c)(1)):
Proposed: $15,000; Final: $12,000
• Ex parte reexamination fee after supplemental examination (§1.20(k)(2))
Proposed: $13,600; Final: $12,000
• Notice of appeal to PTAB (§41.20(b)(1))
Proposed: $1,000; Final: $800
The Patent Public Advisory Council reviewed the September 2012 proposed rules and noted the many of the fees were tied to reducing pendency, using a goal of 10 months to the first Office action by 2015, and a goal of 20 months total pendency by 2016. Under the final rules, achievement of those two goals is pushed back to 2016 and 2017 respectively. In addition, the Office anticipates a reduced backlog and inventory of approximately 335,000 patent applications by 2016. For most of the fees, the effective date is March 19. 2013.

October 19, 2012

Patent Office Proposes New Rules for Patent Attorneys

By Overhauser Law Offices, LLC

Washington, DC. The US Patent Office has released a proposed new set of rules of professional responsibility, completely redrafted from the present professional responsibility rules. The proposed rules would cover patent lawyers in Indiana and elsewhere, and are based on the American Bar Association’s 1983 Model Rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations.

The current Rules have not been revised since 1985 and is also based on the previous ABA Model Rules. Since that time, the vast majority of State bars in the United States have adopted substantive disciplinary rules based on the newer ABA Model Rules of Professional Conduct.

According to the notice from the Office, the extensive changes are meant to bring standards of ethical practice before the Office into closer conformity with the Rules of Professional Conduct adopted by nearly all States and the District of Columbia, while addressing circumstances particular to practice before the Office.

August 9, 2012

Delivery of U.S. Pre-Grant Search Results to the EPO Without Delay Requires Timely Consent From Applicants

By Overhauser Law Offices, LLC

Washington, DC. Current EPO regulations require that search results from an application, to which a European patent application filed on or after January 1, 2011 claims priority, must be filed with the EPO by the patent attorney without delay after the search results are made available to applicants. See Amended Rule 141(1) EPC (European Patent Convention). For the time being, U.S. applicants are exempt from personally providing search results for a U.S. priority application to the EPO as a result of an arrangement worked out between the USPTO and the EPO, whereby the USPTO will electronically deliver search results from priority U.S. applications to the EPO, as a no-charge service to applicants. See Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office, 76 FR 82279 (December 30, 2011).

Maintenance of the exemption, however, is dependent upon delivery of search results by the USPTO to the EPO as soon as they become available, including when search results are available prior to publication of the U.S. application. Because 35 U.S.C. 122 prohibits the USPTO from providing information about an as-yet unpublished application to a third party without the applicant’s consent, timely delivery of pre-publication search results requires applicant cooperation in providing the USPTO with the proper consent to release the search result information to the EPO. Failure of applicants to provide the USPTO with the required consent will prevent the USPTO from delivering the search results in a timely fashion and could result in EPO rescinding the exemption, which would require all U.S. applicants to provide the search result information to the EPO at their own time and expense.

Practice Tip: Inventors should timely file the Certification and Authorization form PTO/SB/69 (available at http://www.uspto.gov/forms/sb0069.pdf) in each application that is intended to form the basis for a claim of priority to a corresponding application filed with the EPO. This form provides applicant’s consent for the USPTO to deliver to the EPO the search results from an unpublished U.S. application. Applicants should file the form prior to filing a European application that claims priority to the U.S. application in order for search results to be delivered to the EPO without delay should they become available prior to publication of the U.S. application. When filing form PTO/SB/69 using EFS-Web, applicants should be careful to select the correct document description,”PTO/SB/69 – Authorize EPO Access to Search Results,” which can be found under the General Transmittal category. Identifying form PTO/SB/69 using any other document description will significantly delay or prevent delivery of the search results from an unpublished U.S. application to the EPO.

July 27, 2012

U.S. Patent Office Publishes Rules Implementing the America Invents Act

By Overhauser Law Offices, LLC

Washington, DC. On Thursday, July 26, 2012, the United States Patent Office published in the Federal Register proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the America Invents Act. The first-inventor-to-file provision converts the United States from a “first-to-invent” to a “first-inventor-to-file” system. The proposed rules and proposed examination guidelines amend the rules of patent practice to implement the conversion and show the Office’s interpretation of how the conversion impacts sections of the Manual of Patent Examining Procedure related to novelty and obviousness. The proposed rules and proposed examination guidelines are accessible here:

First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)

First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 27, 2012)

May 16, 2011

U.S. Patent Office Pre-Examination Interview Program Expanded

By Overhauser Law Offices, LLC

Alexandria, VA – The United States Patent and Trademark Office (USPTO) recently announced its First Full Action Interview Pilot Program, which, unlike a previous test program, applies to all areas of technology.

Under this program, if an eligible utility patent applicant electronically files a request prior to the first Office action on the merits, he or she must be granted an interview with the patent examiner assigned to the case. Traditionally, the grant of such a preliminary interview was with the discretion of the examiner.

To be eligible, the subject patent application must not have more than three independent claims and twenty or fewer total claims that are directed to a single invention.