Patent Docs

Reminder: RCE Docketing Change Effective November 15, 2009

    By Christopher P. Singer --

As reported a few weeks ago, the U.S. Patent and Trademark Office issued a pre-OG Notice regarding the way it will docket requests for continued examination (RCE) beginning on November 15, 2009.  For any RCE that is filed on or after that date, the Office will place that RCE on an examiner's "Special New" application docket, which also includes divisional and continuation applications as well as applications that have been granted petitions to make special under 37 C.F.R. § 102(c).  So if you are planning to file an RCE in the near future, it may be a good idea to file the RCE this week so that it gets placed on the examiner's current "amended docket."

This change, along with changes to the way in which examiners receive counts for RCEs (see "USPTO Proposes Changes to Count System"), may significantly impact the rate at which examiners review and respond to RCEs.  Since applicants do not seem to have any recourse regarding this docketing change, it will likely have little to no effect on prosecution strategy.  And because the claims in an RCE have been prosecuted and examined, it may be that the examiners will be more inclined to review and respond to an RCE than a divisional or continuation application that contains claims that have not yet been examined.  Practitioners may also be more inclined to review Final Office actions more closely to ensure the finality has been properly asserted (see M.P.E.P. § 706.07(a)) as well as more frequently request Examiner interviews in order to discuss potential amendments to place the claims in condition for allowance.

USPTO Schedules Roundtable Discussion on Worksharing

    By Donald Zuhn --

In a Federal Register notice published on Wednesday (74 Fed. Reg. 54028), the U.S. Patent and Trademark Office announced that it plans to hold a roundtable discussion to "obtain input from diverse sources in the patent community and/or the public sector to evaluate views on work sharing."  The roundtable discussion is scheduled for 8:30 am to 1:00 pm (EST) on Wednesday, November 18, 2009 at the USPTO, Madison Auditorium, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, Virginia.

While the roundtable will be open to the public (and made available via webcast), the Office will be inviting a limited number of roundtable participants from patent user groups, practitioners, industry, independent inventor organizations, academia, and Government, as well as selecting a few "at-large" participants based upon requests to Wednesday's notice.  Anyone interested in participating in the roundtable must send a request to the USPTO by e-mail to elizabeth.shaw2@uspto.gov.  The request must include the following:  (1) name of participant and contact information (phone number and e-mail address); and (2) the organization the participant represents.  The deadline for submitting requests to participate in the roundtable is 5 pm (EST) on November 4, 2009.

The Office will also be accepting written comments on issues raised at the roundtable or on any issue pertaining to worksharing.  Written comments should be submitted by e-mail to IP.Policy@uspto/gov, or by mail to Mail Stop OIPPE, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450, ATTN: Elizabeth Shaw.  The deadline for submitting written comments is December 11, 2009.

Dr. Tafas Files Reply to USPTO/GSK Motion to Dismiss Appeal and Vacate District Court Judgment

    By Donald Zuhn –-

On Monday, Counsel for Dr. Triantafyllos Tafas filed a reply to the joint motion to dismiss the appeal in Tafas v. Kappos and for a vacatur of the District Court's injunction and judgment filed by the U.S. Patent and Trademark Office and Appellee GlaxoSmithKline on October 9, 2009.  The joint motion by the USPTO and GSK was filed one day after the Office announced that Director Kappos had signed a new Final Rule rescinding the claims and continuation rules (see "'New Rules' Officially Rescinded").

In his reply brief, Dr. Tafas "applauds the [USPTO] for its recent change in policy direction concerning the claims and continuation rules," and offers to work with USPTO Director Kappos and other patent community stakeholders "toward developing efficient solutions to the PTO's backlog problems."  However, the brief outlines four technical grounds for Dr. Tafas not joining the USPTO and GSK in seeking vacatur of the District Court judgment:

(1)  Consenting to vacatur might impair Dr. Tafas' right to attorneys' fees and costs.

(2)  Supreme Court precedent does not permit the losing party to have a District Court judgment vacated when the losing party merely declines to pursue an appeal.

(3)  Several issues were never reached by the District Court.

(4)  It is unclear whether the USPTO's motion to dismiss the appeal was truly voluntary in light of a direction by the White House Office of Management and Budget (OMB) that the USPTO withdraw the claims and continuation rules pursuant to the Paperwork Reduction Act (see "Response to Rescission of Claims and Continuations Rules" for an explanation of the circumstances surrounding Dr. Tafas' last ground).

On the basis of these four grounds, Dr. Tafas requests that the Federal Circuit dismiss the USPTO's appeal as moot, deny the vacatur request as contrary to controlling law, and remand the case to the District Court.

While acknowledging that "the substantive issues raised by the PTO on appeal . . . have now been rendered moot by virtue of the PTO's voluntary removal from the Code of Federal Regulation on October 14, 2009 of the changes in the Claims and Continuation Final Rules dated August 21, 2007," the brief states that the USPTO's decision to rescind the claims and continuations rules "while again commendable and praiseworthy, does not, and cannot, render moot [Dr.] Tafas' right to apply either in this Court or at the district court -- after the entry of final judgment dismissing the appeal -- for an award of fees and costs as a prevailing party."

The brief also states that "vacatur of the district court's judgment by this Court would be directly contrary to U.S. Supreme Court precedent, which plainly provides that any mootness caused while the case is on appeal by the unilateral act of the losing party in the district court below (i.e., the PTO) is not a proper grounds for a court of appeals to vacate the underlying district court judgment."  Arguing that "[w]here an agency of the federal government, such as the PTO here, has been adjudicated to have engaged in dubious actions that supersedes its authority," the brief contends that "equity mandates that the ruling not simply be erased as if it never happened."

The reply brief concludes by offering one example of an issue that was uniquely raised by Dr. Tafas, not joined by GSK, and not rendered moot by the Office's rescission of the claims and continuations rules (i.e., Dr. Tafas' challenge to the USPTO's "long-standing practice" of permitting the issuance of first action final rejections after the filing of an RCE as being contrary to 35 U.S.C. § 132(a)).  "[I]n gratitude to the PTO for finally rescinding the Rules, and in the interests of engendering a new spirit of cooperation and rapprochement with the PTO," the brief states that Dr. Tafas will withdraw the above challenge when the case is remanded to the District Court.

Patent Docs thanks James Nealon of Kelley Drye & Warren LLP for kindly providing us with a copy of Dr. Tafas' Reply to Motion for Dismissal of Appeal and Request for Remand.

Response to Rescission of Claims and Continuations Rules

    By Donald Zuhn –-

Earlier today, the U.S. Patent and Trademark Office issued a press release announcing that Director David Kappos had "signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property" (see "'New Rules' Officially Rescinded").  Not surprisingly, reaction to the Office's announcement has been positive and swift.

One of the first groups to issue a statement regarding the rescission of claims and continuations rules was the Biotechnology Industry Organization (BIO).  In a press release entitled "BIO Commends PTO Director for Withdrawal of Harmful Rules," BIO President and CEO Jim Greenwood stated that the group "applauds the action by Under Secretary Kappos today to formally withdraw the controversial and harmful proposed rules that would have limited the ability of biotechnology applicants to secure full coverage of their inventions."  Mr. Greenwood noted that the action was "a positive sign that the new Administration wants to work in a constructive manner with the patent applicant community to address the serious challenges facing the PTO," and said the group "stands ready to work with Under Secretary Kappos and others at the PTO to do so."

The American Intellectual Property Law Association (AIPLA) also issued a quick response to the news.  In its announcement, AIPLA Executive Director Todd Dickinson stated that the group "applauds the decision of Director Kappos to rescind this hugely unpopular rules package."  Mr. Dickinson added that the AIPLA viewed the action as "a significant step by Director Kappos towards rebuilding the relationship between the USPTO and the user community," and offered "to move forward and work with the Director in a constructive way to address the challenges facing the USPTO."

David Boundy (at right), one of the architects of the campaign against the claims and continuations rules, asserted via e-mail that although the USPTO had announced the formal withdrawal of the rules in today's press release, "[t]he Continuations and Claims rules had been effectively killed eighteen months ago, along with the IDS rule, by the White House Office of Management and Budget."  Mr. Boundy noted that the claims and continuations and IDS rules packages had all come under review pursuant to the Paperwork Reduction Act (PRA) in September 2007, and that this review required a notice and comment period.  Between November 2007 and January 2008, Mr. Boundy, Richard Belzer, and Dr. Ron Katznelson (names that should be quite familiar to Patent Docs readers) filed letters with the Office of Management and Budget (OMB) "showing that PTO had underestimated the paperwork burdens of the Continuations and Claims Rule by billions of dollars per year, and had failed to comply with procedural requirements of the [PRA]."  Mr. Boundy states that because the USPTO was unable to secure PRA clearance from the OMB for the claims and continuations rules, "even if the PTO had won the Tafas case, the PTO would have been forbidden by law from demanding this information from patent applicants."  While he acknowledges that "the information on OMB's web site is not crystal clear on dates," Mr. Boundy says that "it appears that the directive from the White House to PTO to withdraw the rules was issued no later than late January 2008, and that PTO had fully acquiesced by mid-April."  The OMB's final determination regarding PRA review of the claims and continuations, which was issued on July 1, 2009, can be found here.

"New Rules" Officially Rescinded - Updated

    By Kevin E. Noonan --

The infamous "claims and continuation" rules promulgated over the vocal protests of patent applicants and the patent bar by the Dudas administration of the U.S. Patent and Trademark Office have been officially rescinded by Director David Kappos.

In a press release expected to be issued shortly, the Office will announce that the Director has signed a new Final Rule rescinding the rules, originally published in the Federal Register on August 21, 2007.  The rules were never implemented as the result of a preliminary injunction granted by the U.S. District Court for the Eastern District of Virginia on October 31, 2007 (the day before they were scheduled to come into effect), which injunction was made permanent by the District Court on April 1, 2008.  The government appealed this decision, which was overturned in substantial part by the Federal Circuit earlier this year (see "Tafas v. Doll (Fed. Cir. 2009)".  The CAFC had accepted review en banc, but briefing was postponed on motion of all parties (see "Federal Circuit Grants Stay in Tafas v. Kappos").

In the press release, the Office proffers the following rationale for its decision:

"The USPTO should incentivize innovation, develop rules that are responsive to its applicants' needs and help bring their products and services to market," Kappos said.  "These regulations have been highly unpopular from the outset and were not well received by the applicant community.  In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public."
 
"We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the rules and vacate the district court's decision.  This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address."

The Office plans on filing a joint motion with plaintiff GlaxoSmithKline, asking the Federal Circuit to "dismiss and vacate" the District Court decision, thereby mooting the question of the precedential effect of the lower court's decision on the scope of the Office's rulemaking authority (and, possibly by implication, the scope of other Executive agencies' rulemaking authority).  This question has been raised as a reason for the government to pursue the case, which risk now seems to have been avoided.

It is fervently to be hoped that this is the beginning of renewed cooperation between the Office and its constituency in resolving the real problems plaguing the patent system.

UPDATE:  The Patent Office's press release regarding the rescission of the claims and continuations rules has now been posted on the USPTO website.

USPTO Expands First Action Interview Pilot Program

    By Donald Zuhn –-

On Thursday, the U.S. Patent and Trademark Office announced that it was expanding the First Action Interview pilot program to encompass additional technology areas effective October 1, 2009.  The pilot program, which began on April 28, 2008, allows applicants of certain applications to interview their cases prior to the issuance of a first Office action on the merits.

Under the initial pilot program, an examiner assigned to a participating application conducts a prior art search and provides the applicant with a pre-interview communication containing a condensed preview of objections or rejections against the claims of the participating application.  Within 30 days from the issuance of the pre-interview communication, the applicant then either schedules a first action interview or chooses not to have the interview.  If the applicant chooses the latter option, the examiner issues a First Action Interview Office action giving the applicant the longer of one month or 30 days to reply.  If agreement cannot be reached during the first action interview, the First Action Interview Office action is issued (with the reply period specified above).  Under the extended pilot program, the Office has made a few improvements to the process, including allowing applicants to extend the above reply period by 30 days.  Other changes can be found here.  Additional information regarding the expanded pilot program can also be found here.

Under the initial pilot, the program was limited to two technology areas:  Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and Class 707 (data processing: database and file management or data structures).  Because the initial program "has shown that the patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one," the program is being expanded to encompass the following art units:

• 161X -- applications filed on or before November 1, 2006
• 1795 -- appilications filed on or before October 1, 2006
• 215X and 216X -- applications filed on or before February 1, 2008
• 244X and 245X -- applications filed on or before July 1, 2008
• 2617 -- applications filed on or before June 1, 2007
• 2811-2815, 2818, 2822-23, 2826, and 2891-2895 -- applications filed on or before May 1, 2008
• 3671 -- applications filed on or before December 1, 2007
• 3672 -- applications filed on or before January 1, 2008
• 3673 -- applications filed on or before November 1, 2007
• 3676 -- applications filed on or before February 1, 2008
• 3677 -- applications filed on or before July 1, 2007
• 3679 -- applications filed on or before November 1, 2007
• 3735 -- applications filed on or before May 1, 2006
• 3736 -- applications filed on or before April 1, 2007
• 3737 -- applications filed on or before December 1, 2006
• 3768 -- applications filed on or before August 1, 2006
• 3739 -- applications filed on or before December 1, 2006
• 3762 and 3766 -- applications filed on or before September 1, 2007
• 3769 -- applications filed on or before September 1, 2006

In its announcement regarding the expansion of the program, the USPTO indicated that the allowance rate for applications involved in the pilot program was six times higher than the allowance rate for applications in the same technology area that were not involved in the pilot program.  Explaining the success of the pilot program, USPTO Director David Kappos said that "[w]hen people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real-time," and added that "interviews present a clear path to resolve issues and move prosecution forward quickly."

For additional information regarding this topic, please see:
• "PTO Announces New Program to Reduce Pendency and Improve Patent Quality," April 15, 2008

USPTO Proposes Changes to Count System

    By Donald Zuhn --

On Wednesday, U.S. Patent and Trademark Office Director David Kappos announced a number of proposals for changing the examiner "count system," the methodology for determining the amount of time an examiner is given to complete a patent examination and the amount of credit an examiner is given for completing various stages of an examination.  The count system, which was created in the 1960's, was last revised in 1976.

The proposals announced by Director Kappos were developed by a task force consisting of USPTO senior managers and leadership from the Patent Office Professional Association (POPA) -- the examiner's union.  Pursuant to a directive from Secretary of Commerce Gary Locke to "adopt an ambitious agenda to address the significant challenges at USPTO," Director Kappos stated that USPTO senior management had "worked closely with labor representatives to propose a long-overdue transformation of the count system."  During his nomination hearing before the Senate Judiciary Committee in July, Director Kappos testified that he planned to raise morale by completely remaking the count system, which he said "needs to be fixed" (see "Senate Judiciary Committee Hears from Director Nominee").  During the hearing, Director Kappos stated that "as I understand it, the examining corps hates the count system the way it is," and "the applicant community . . . hates the count system the way it is because it results in dysfunctional behavior."  He also informed the Committee that Secretary of Commerce Gary Locke had specifically asked him to fix the count system.

The count system has been long been the target of criticism by many in the patent community.  In a BIO 2009 panel session in Atlanta last May, Q. Todd Dickinson, the Executive Director for the American Intellectual Property Law Association (AIPLA) and former Director of the USPTO, contended that the count system was in need of an update (he also advised session attendees that such an update would not come cheap, as the 1976 update of the system cost $20 million) (see "Docs at BIO: Panel Offers Suggestions for Fixing the USPTO").  A year earlier at a BIO 2008 panel session, Esther Kepplinger, the Director of Patent Operations for Wilson Sonsini Goodrich & Rosati and a former USPTO Deputy Commissioner, noted that a George Mason study found that while divisional and continuation filings had remained fairly stable over the past seven years, RCEs had increased from 8.3% to 19.6% of total filings.  Ms. Kepplinger asserted that this result was an indication that some examiners had been "gaming the count system" (see "Docs at BIO: Panel Discusses Impact of USPTO Rules Changes and Patent Reform Legislation on Biotech Patenting").  During an oversight hearing on the USPTO held by the House Subcommittee on Courts, the Internet, and Intellectual Property in February 2008, the count system also drew criticism from POPA President Robert Budens (see "POPA President Critical of USPTO During House Subcommittee Oversight Hearing").  Earlier today, Hal Wegner, a partner at Foley & Lardner LLP and professor at George Washington University Law School, noted in his e-mail newsletter that the proposed changes come "[a]fter more than a generation of recognition by all insiders in the patent field that the 'count' system is at the very heart of the backlog problem at the PTO with a ripple effect that has led to desperate measures such as the notorious 'Continuation Rules' and the Tafas litigation."

According to the USPTO release, the proposed changes are intended to:

• Set the foundation for long-term pendency improvements.
• Increase customer satisfaction by incentivizing quality work at the beginning of the examination process.
• Encourage examiners to identify allowable subject matter earlier in the examination process.
• Rebalance incentives both internally and externally to decrease rework.
• Increase examiner morale and reduce attrition.

The Office announcement also notes that the proposed changes are "intended to be part of an iterative process of improvements to the count system," and that "[t]he task force will measure the effects of these changes and gather internal and public feedback, and will meet on a regular basis to monitor progress and consider additional changes."

A 25-page presentation regarding the task force's proposal can be found here.  The proposed changes discussed in the presentation include:

• Shifting more credit to a First Action on the Merits (FAOM) to support compact prosecution.
• Reducing credit for Requests for Continued Examination (RCEs).
• Allotting more examination time per application (adding 2 hours per "Balanced Disposal").

Among the many details provided in the presentation is a comparison of the current count system with the system being proposed (see p. 6 of presentation; click on table to enlarge):

 

USPTO and ARIPO Sign Bilateral Cooperation Agreement

    By Donald Zuhn --

The U.S. Patent and Trademark Office announced today that it had signed a Workplan for Bilateral Cooperation on intellectual property issues with the African Regional Intellectual Property Organization (ARIPO).  The Workplan, which will serve to promote the development of effective intellectual property systems in ARIPO member countries, was signed by Under Secretary of Commerce for Intellectual Property David Kappos and Director General of ARIPO Dr. Gift Huggins Sibanda on Thursday in Geneva.  ARIPO is an intergovernmental organization consisting of 16 African countries that operates as a central intellectual property filing system.  The USPTO press release noted that the Workplan would strengthen the bilateral relationship between ARIPO and USPTO and increase public awareness about the importance of intellectual property issues.  Under the Workplan, the USPTO will also train ARIPO patent and trademark examiners to further develop their technical expertise and capacity to respond to increasing workloads.

USPTO Seeks Comments Regarding Sequence Listing Rules - Updated

    By Donald Zuhn --

The U.S. Patent and Trademark Office recently published a notice in the Federal Register inviting public comment regarding the Requirements for Patent Applications Containing Nucleotide Sequence and/or Amino Acid Sequence Disclosures (74 Fed. Reg. 40163).  David Boundy, the Vice President of Intellectual Property for Cantor Fitzgerald L.P. and one of the architects of the campaigns against the USPTO's claims and continuations, IDS, Markush, and appeals rules packages, brought the six-week-old notice to our attention.  Earlier today, we had an opportunity to discuss the sequence listing notice with Mr. Boundy, Dr. Richard Belzer (a former civil service staff economist in the Office of Information and Regulatory Affairs within the OMB and another architect of the aforementioned campaigns), and Stephen Albainy-Jenei (author of the Patent Barristas weblog).  While Mr. Boundy and Dr. Belzer agreed that the sequence listing notice was fairly noncontroversial, they wanted to remind patent practitioners about the importance of providing comments, if for no other reason then to let the Patent Office know that the patent community was paying attention.

As for the notice itself, it briefly describes the ways in which a sequence listing may be submitted to the USPTO (i.e., in paper form, on electronic media, or via the EFS-Web) and the types of statements that may be required depending on the form of the submission.  In the notice, the Office also proposes adding a new sequence listing-related form -- a Request for Transfer of a Computer Readable Form Under 37 CFR 1.821(e) (PTO/SB/93) -- to be used when the computer-readable form (CRF) of an application's sequence listing is identical to the CRF of a sequence listing submitted in another application.

The part of the notice most likely to trigger comment concerns the USPTO's paperwork burden calculations.  The notice estimates that it will take the public approximately 6 to 80 minutes to gather the necessary information, prepare the Request for Transfer form or a sequence listing, and submit either to the USPTO (see second table below).  Dr. Belzer and Mr. Boundy note that by law, these estimates are required to be objectively supported (i.e., not based on guesswork or the opinion of agency staff), and they must include everything in the expansive list given at 5 C.F.R. § 1320.3(b)(1):

(b)(1)  Burden means the total time, effort, or financial resources expended by persons to generate, maintain, retain, or disclose or provide information to or for a Federal agency, including:
    (i)  Reviewing instructions;
    (ii)[-(iv)]  Developing, acquiring, installing, and utilizing technology and systems for the purpose of collecting, validating, verifying [, processing, maintaining, disclosing and providing] information;
    (v)   Adjusting the existing ways to comply with any previously applicable instructions and requirements;
    (vi)  Training personnel to be able to respond to a collection of information;
    (vii)  Searching data sources;
    (viii)  Completing and reviewing the collection of information; and
    (ix)  Transmitting, or otherwise disclosing the information.

less the time that would be expended on managing the information in the usual and customary course of business.

Mr. Boundy has also provided us with the table of estimates that the USPTO gave in 2006:

which can be compared with the USPTO's current estimates (he notes that the time required to request and assemble the information, format it, burn it onto a CD, and retain all records for the life of the application and patent has dropped from one hour to 15 minutes):

Members of the public wishing to comment on the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information are encouraged to do so.  The notice also invites comment regarding whether the proposed collection of information is necessary for the proper performance of the functions of the agency; ways to enhance the quality, utility, and clarity of the information to be collected; and ways to minimize the burden of the collection of information on respondents.  Written comments can be submitted by e-mail to Susan.Fawcett@uspto.gov (include A0651-0024 comment@ in the subject line of the message), by facsimile to 571-273-0112 (marked to the attention of Susan K. Fawcett), by mail to Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Administrative Management Group, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, or using the Federal Rulemaking Portal at www.regulations.gov, Docket ID: PTO-P-2009-0035 (link).  All comments must be submitted on or before October 13, 2009.

Mr. Boundy predicted that patent practitioners could expect to see more of these types of notices as the Patent Office begins to revise many of its old rulemaking habits -- habits that helped lead to the demise of the claims and continuations, IDS, Markush, and appeals rules packages.  Dr. Belzer noted that the USPTO must comply with these Paperwork Reduction Act procedures in order to obtain a valid OMB Control Number, and that without that number, it could not compel anyone to provide the demanded information.  He also noted that the USPTO had historically complied as minimally as possible with these statutory requirements, and in some cases had not complied at all.  In Dr. Belzer's opinion, this was made possible by the fact that few members of the public understand the Paperwork Reduction Act and fewer still are willing to engage in the public comment process.  It is Mr. Boundy's and Dr. Belzer's hope that the events of the past two years have changed the patent community's willingness to engage in a constructive and timely manner.  They also stressed that the new USPTO administration appears to be very interested in working with members of the patent community to improve all aspects of the examination process. Thus, participating now is the best way to ensure that the patent community's interests and concerns are known and understood as early in the process as possible, thereby making serious controversies unlikely in the future.

Patent Docs thanks Mr. Boundy and Dr. Belzer for their helpful comments and suggestions regarding today's article.

USPTO and EPO Announce Extension of Trial Period for PPH Program

    By Christopher P. Singer --

In a notice dated September 23, 2009, the U.S. Patent and Trademark Office announced that it will extend for one year the trial period for its patent prosecution highway (PPH) program with the European Patent Office.  The extended trial period will expire on September 30, 2010.  As we have noted, the PPH programs are designed to expedite and leverage the examination process for applicants that have received favorable examination in one of the partner countries.

We reported last winter about the types of applications that are eligible for participation in the trial PPH, and the requirements for participation (see "Additional Application Types Eligible for Participation in PPH Between USPTO and EPO").  Updated requirements for participation in the USPTO will be available here, and requirements in the EPO will be posted here.

For additional information regarding this and other related topics, please see:

• "USPTO Initiates Patent Prosecution Highway Pilot Program with Finland Patent Office," June 29, 2009
• "USPTO Extends Patent Prosecution Highway Pilot Program with IP Australia; Begins Pilot Program with German Patent Office," April 15, 2009
• "USPTO Begins Pilot Program with the German Patent Office," May 7, 2009
• "Pilot PPH Program between Singapore and U.S.," February 1, 2009
• "Full Time Patent Prosecution Highway between Korea and US," January 28, 2009
• "Patent Prosecution Highway Pilot with CIPO Is Extended," December 23, 2008
• "Additional Application Types Eligible for Participation in PPH between USPTO and WPO," December 11, 2008
• "Patent Prosecution Highway Pilot Program between U.S. and Danish Patent Offices," October 29, 2008
• "Patent Prosecution Highway Expands to Europe," September 25, 2008
• "USPTO and UKIPO Extend Patent Prosecution Highway Pilot Program," September 3, 2008
• "USPTO and EPO to Implement Pilot Patent Prosecution Highway Program," April 29, 2008
• "Patent Prosecution Highway Extended to IP Australia," April 2, 2008
• "Patent Prosecution Highway Network Expands to Canada & Korea," January 29, 2008
• "USPTO Announces Two Additional Partners in the Patent Prosecution Highway Pilot Program," January 17, 2008
• "USPTO and JPO to Implement Patent Prosecution Highway on Full-Time Basis," December 27, 2007
• "USPTO and UK IPO to Collaborate on Patent Prosecution Highway," September 14, 2007

Changes in USPTO Senior Management

    By Christopher P. Singer --

In a press release issued last week, the U.S. Patent and Trademark Office announced that current Commissioner for Patents, John Doll, has indicated that he plans to retire from the agency on October 2, 2009.  USPTO Director David Kappos has nominated Robert Stoll (at right), a current USPTO executive, to take over Mr. Doll's position as Commissioner for Patents.  Mr. Stoll has been with the USPTO for 27 years, and has held a number of management positions including Supervisory Patent Examiner, Executive Assistant to the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, Administrator of the Office of Legislative and International Affairs, and Director of Enforcement.

Mr. Kappos also named Margaret ("Peggy") Focarino (at left) the Deputy Commissioner for Patents.  Ms. Focarino has been with the USPTO for more than 32 years, and has held positions including supervisory patent examiner, technology center director, and Deputy Commissioner for Patent Operations.  As the Deputy Commissioner, Ms. Focarino had oversight of the agency's patent examining corps.  She implemented a new approach to training examiners, and supported telework programs for patent examiners and technical support staff.

According to the press release, U.S. Commerce Secretary Gary Locke expressed support for Mr. Stoll's nomination and is expected to appoint him once Mr. Doll officially retires.

If appointed, Mr. Stoll will serve as Commissioner for a term of five years.

USPTO Says Some Requests for PTA Reconsideration Are Premature

    By Sydney Kokjohn --

We recently received a dismissal of a Request for Reconsideration of Patent Term Adjustment Determination under 37 C.F.R. § 1.705(b).  The Request was filed solely on the basis that the Patent Office had taken more than three years to issue the patent.  The patent application was filed on December 7, 2005.  Thus, a patent should have issued by December 7, 2008.  A Request for Continued Examination (RCE) was filed on February 16, 2009, thus cutting off from that date any additional patent term for failure to issue the patent within three years under 37 C.F.R. § 1.702(b).

The Patent Office notice stated:

Knowledge of the actual date the patent issues is required to calculate the amount, if any, of additional patent term patentee is entitled to for Office failure to issue the patent within 3 years.  See § 1.702(b).  (This is true even where a request for continued examination (RCE) was filed).  The computer will not undertake the § 1.702(b) calculation until the actual date of issuance of the patent has been determined.  Likewise, the computer will not calculate any further Office delay under § 1.702(a)(4) or applicant delay under § 1.704(c)(10) until the actual date of issuance of the patent has been determined.  As such, the Office can not make a determination on the correctness of the patent term adjustment until the patent has issued.

Requesting reconsideration of the patent term adjustment to be indicated on the patent under 37 CFR 1.705(b) based on the initial determination of patent term adjustment and a projected issuance date of the patent (or even the filing date of the request for continued examination) is premature.  Accordingly, it is appropriate to dismiss as premature such a request.

Rather than file an application for patent term adjustment under 37 CFR 1.705(b) contesting the 37 CFR 1.702(b) calculation at the time of the mailing of the notice of allowance, applicant is advised that they may wait until the time of the issuance of the patent and file a request for reconsideration of the patent term adjustment pursuant to 37 CFR 1.705(d).  As the USPTO does not calculate the amount of time earned pursuant to 37 CFR 1702(b) until the time of the issuance of the patent, the Office will consider any request for reconsideration of the patent term adjustment due to an error in the calculation of 37 CFR 1.702(b) to be timely if the request for reconsideration is filed within two months of the issuance of the patent.  However, as to all other bases for contesting the initial determination of patent term adjustment received with the notice of allowance, applicant must timely file an application for patent term adjustment prior to the payment of the issue fee.

Even though filing an RCE effectively cuts off any additional patent term for failure to issue a patent within three years, the Patent Office's computers will not calculate delay under 37 C.F.R. § 1.702(b) (or 1.702(a)(4) or 1.704(c)(10)) until after the actual date of issuance has been determined.

The Office of Patent Legal Administration indicated that it plans to issue a statement regarding this matter.  In the meantime, a simple reading of the rules does not instill much confidence that a Request for Reconsideration of Patent Term Adjustment Determination when an RCE has been filed will not be considered untimely under 37 C.F.R. 1.705(d) if the Request is filed after the patent issues.  Section 1.705(d) states:

If there is a revision to the patent term adjustment indicated in the notice of allowance, the patent will indicate the revised patent term adjustment.  If the patent indicates or should have indicated a revised patent term adjustment, any request for reconsideration of the patent term adjustment indicated in the patent must be filed within two months of the date the patent issued and must comply with the requirements of paragraphs (b)(1) and (b)(2) of this section.  Any request for reconsideration under this section that raises issues that were raised, or could have been raised, in an application for patent term adjustment under paragraph (b) of this section shall be dismissed as untimely as to those issues.

Section 1.705(b) requires that the request be filed "no later than the payment of the issue fee."  As filing an RCE cuts off additional patent term, it seems that any request for additional patent term in the case of an RCE could be raised under 1.705(b).  Nevertheless, this dismissal indicates that the Patent Office's computers do not calculate any delay for failing to issue a patent within three years under 1.702(b) until the date of issuance of the patent has been determined.

In addition to a dismissal of the request as premature, note that another possible disadvantage of filing a request for additional patent term for failure to issue a patent within three years prior to the issuance of the patent is that the patent may issue later due to the time it takes the Patent Office to consider the request.  However, 37 C.F.R. § 1.704(e) indicates that filing a request for patent term adjustment under 1.705(b) "will not be considered a failure to engage in reasonable efforts to conclude prosecution."

Keeping $118 in Your Pocket

    By Christopher P. Singer --

"In these economic times" it seems that new USPTO Director David Kappos understands that people appreciate an opportunity to save money.  Patent Docs is happy to report that the Patent Office has announced on its website (interestingly, "buried" underneath a story about the Director's swearing in) that it will not require registered practitioners to pay the $118 annual practitioner maintenance fee for FY 2009.  According to the announcement, any overly-proactive practitioners who have voluntarily paid the $118 fee will receive a refund.  The USPTO will be considering whether to proceed with this fee requirement in FY 2010 in the coming months, and will provide ample notice in the event it decides to collect this fee.

Federal Circuit Grants Stay in Tafas v. Kappos

    By Donald Zuhn --

On July 24, the Department of Justice (DOJ) filed a joint motion with Plaintiffs-Appellees Dr. Triantafyllos Tafas and GlaxoSmithKline seeking to stay briefing and oral argument in Tafas v. Kappos (previously Tafas v. Doll) until 60 days after the U.S. Senate confirmed new Director David Kappos (see "Could the 'New Rules' Nightmare Finally Be Over?").  Director Kappos was confirmed on August 7 and sworn in on August 13.  The parties' joint motion was filed a little less than three weeks after the Court of Appeals for the Federal Circuit ordered en banc review of the appeal in Tafas v. Doll (see "Federal Circuit Grants En Banc Review in Tafas v. Doll").

Today, the Federal Circuit issued an order granting the parties' joint motion for a stay of en banc proceedings.  The order states that "the appellants' additional en banc brief is due within 60 days of the date of filing of this order [i.e., October 5, 2009]."  The order also requires the parties to file copies of their original briefs by October 5.

Tafas v. Kappos (Fed. Cir. 2009) -- Order

New Director to Be Sworn in on Thursday

    By Donald Zuhn --

The U.S. Patent and Trademark Office has announced that on Thursday at 12:30 pm (EST), U.S. Secretary of Commerce Gary Locke will administer the oath of office to David Kappos (at right), the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO.  The new USPTO Director was confirmed by the U.S. Senate last Friday.  According to the USPTO announcement, the ceremony, which will take place at USPTO headquarters in Alexandria, VA, "will highlight Mr. Kappos' leadership role and recognize the vital role that the USPTO plays in promoting American innovation."

USPTO Office of PCT Legal Administration Mailing List

    By Mark Chael --

For the benefit of our readers, we would like to remind you that the Office of PCT Legal Administration at the U.S. Patent and Trademark Office maintains a mailing list "to notify PCT customers, via e-mail, of updates to the forms and other information on [its] pages."  In order to be placed on the mailing list, all you need to do is send an email to "pctupdates-request@uspto.gov" (without the quotes) asking to be added to the list.

Also, according to a member of the PCT Issues Committee at the American Intellectual Property Law Association (AIPLA), even if you signed up for this list in the past (that is, if you have received notices from the Office of PCT Legal Administration regarding updates), you should sign up again, perhaps indicating in your request that you signed up previously.

Fish & Richardson Catches Error in Patent Office's PTA Calculation

    By Sydney Kokjohn --

Fish & Richardson and its pharmaceutical client Japan Tobacco Inc. recently discovered another error in the U.S. Patent and Trademark Office's method of calculating patent term adjustment ("PTA").  On January 8, 2009, Fish & Richardson filed an Application for Patent Term Adjustment under 37 C.F.R. § 1.705(d) (see Application).  In addition to arguing that additional patent term was due in light of Wyeth v. Dudas, 580 F. Supp. 2d 138 (D.D.C. 2008) (see Patent Docs post), Fish & Richardson argued that the Patent Office was incorrectly calculating "B-delay" (delay for failure to issue a patent within three years of the actual filing date of the application) for U.S. national stage applications.  The Patent Office was using the date on which an international applications fulfilled the requirements of 35 U.S.C. § 371 as the filing date for calculation of B-delay.  But 37 C.F.R. § 1.702(b) states that "the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application."  Section 371(b) states that subject to § 371(f), "the national stage shall commence with the expiration of the applicable time limit under article 22 (1) or (2), or under article 39 (1)(a) of the [PCT]."  Fish & Richardson pointed out that the time at which the national stage is commenced under section 371(b) and PCT Articles 22(1), 22(2), and 39(1)(a), and thus the "actual filing date" for purposes of calculating B-delay, is thirty months from the priority date of the international application.

While Fish was not successful with its Wyeth argument, the Patent Office did grant Japan Tobacco additional patent term for B-delay, indicating that B-delay should be calculated based on the date on which the national stage commenced, not the date on which the requirements of § 371 were fulfilled as it had previously determined (see Decision).  But the PTO's new PTA calculation method is not always beneficial for the applicant.  Fish & Richardson has indicated on its website that applicants may also be granted too much patent term adjustment if they fulfill the § 371 requirements, but do not expressly request early processing of the national stage application under § 371(f) (see Correct Method for Measuring "B Delay" for 371 National Stage Applications).  Under this section, an applicant may expressly request that the national stage be commenced as long as the requirements of § 371(c) have been met.  If the applicant does not expressly request commencement of the national stage, § 371(b)'s thirty month date will be the date used in B-delay calculations even if the applicant met the requirements of § 371(c) prior to that date.  In this situation, the applicant will be granted less patent term under the new calculation.

Note also that "A-delay" for failure to mail a notification under 35 U.S.C. § 132 or a notice of allowance under 35 U.S.C. § 151 is still calculated from the date of fulfillment of the requirements of § 371 (see 35 U.S.C. § 154(b)(1)(A)(i)(II) and 37 C.F.R. § 1.702(a)(1)).  Interestingly, however, A-delay is not affected by late submission of a fee and/or oath in a filing under 35 U.S.C. § 111(a).  37 C.F.R. § 1.702(a)(1) states that "the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to . . . [m]ail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 in an international application."  The filing date for purposes of § 111(a) and A-delay is "the date on which the specification and any required drawing are received in the [Patent Office]" (see 35 U.S.C. § 111(a)(4)).  An applicant may lose patent term if he fails to respond to the notice of missing parts within three months, but the late filing of an oath or fee in an application filed under § 111(a) does not affect that calculation of A-delay for failure to issue an action or notice of allowance within fourteen months.  The late filing of any of the requirements under § 371(c), however, does affect the calculation of A-delay.  Thus, a discrepancy remains between the calculation of A-delay for applications under § 111(a) and the calculation for U.S. national stage applications.

Patent practitioners should remember that under 37 C.F.R. § 1.704(b), "an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request."  The three-month period applies to replies to all notices and actions, including those in which the shortened statutory period is less than three months, such as restriction requirements and notices of missing parts.

In sum, this decision provides another reason for patent practitioners to request additional patent term for many U.S. national stage filings and suggests that such petitions are likely to be more successful than petitions filed pursuant to the Wyeth decision.  In addition, patent practitioners should carefully analyze all rules regarding patent term adjustment in order to maximize patent term.

Patent Docs thanks Fish & Richardson for alerting the patent community to this issue.

Senate Judiciary Committee Hears from Director Nominee

    By Donald Zuhn --

Today, the Senate Judiciary Committee heard testimony from David Kappos (at right), the Obama Administration's nominee for Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.  While the hearing was mostly uneventful, Senator Arlen Specter (D-PA) provided an interesting line of questioning when he asked Mr. Kappos to explain how he would balance his new obligations as Director with his old loyalties to IBM.  When Mr. Kappos responded by saying that he would recuse himself from matters that specifically involved IBM, Sen. Specter inquired about global decisions Mr. Kappos might make as Director that could ultimately benefit IBM while disadvantaging other applicants.  Sen. Specter noted that the Federal Circuit had recently granted a request for an en banc hearing in Tafas v. Dudas, and that the parties had jointly sought a stay "to see what attitude [Mr. Kappos] might have."  Depending on Mr. Kappos' "attitude" regarding the case, Sen. Specter (at left) contended that "IBM would be benefitted one way and other companies would be benefitted the other way," and asked Mr. Kappos how he would handle this "more subtle and sophisticated issue."  Mr. Kappos responded by saying his role, if confirmed as Director, would be to "do[] the right thing for the American people and the United States of America," and like other individuals who had left the private sector for a governmental position, he would "put my previous role behind me and focus on doing the right thing for the United States of America -- in the Tafas case and the Bilski case and everything else on a policy level."

The questioning from other Senators was less challenging.  Senate Judiciary Chairman Patrick Leahy (D-VT) (at right) asked Mr. Kappos whether he would work with Congress to advance patent reform.  Mr. Kappos replied that securing passage of a patent reform bill was a top priority (albeit one of many "top" priorities).  Senator Orrin Hatch (R-UT) provided a nice endorsement of Mr. Kappos' nomination, saying that the nominee was the type of person who could "keep us at the forefront of innovation."  Sen. Hatch also told the nominee that he was "very impressed that you're willing to do this."

Senator Jeff Sessions (R-AL) asked Mr. Kappos whether the application backlog and pendency could be reduced with the annual threat of fee diversion.  Mr. Kappos informed the Committee that he was opposed to fee diversion, and noted that while the USPTO was "one of the few places where a user community will readily step up and say we don't mind paying whatever it costs," the user community's response will be quite different if fees are diverted (as Patent Docs has reported before, fee diversion has not been a problem for the past few years).  Senator Amy Klobuchar (D-MN) told Mr. Kappos that the Committee "believe[s] your nomination is a good thing for this country," and asked him how efficiency and morale could be improved in the USPTO.  Mr. Kappos proposed to raise morale by completely remaking the count system, which he said "needs to be fixed."  Mr. Kappos stated that "as I understand it, the examining corps hates the count system the way it is," and "the applicant community . . . hates the count system the way it is because it results in dysfunctional behavior."  He informed the Committee that Secretary of Commerce Gary Locke had specifically asked him to fix the count system.

All told, Mr. Kappos listed four priorities during the hearing, including advancing the Senate patent reform bill (S. 515), reducing the application backlog, creating a "sustainable, long-term funding model" for the USPTO (which would require passage of S. 515 and its provisions to end fee diversion and allow the Director to set fees), and remaking the count system.

Chairman Leahy concluded the hearing by noting that the record would be held open for one week to allow Committee members to submit additional questions.

A webcast of the hearing can be viewed here, a copy of Mr. Kappos' written testimony can be found here, and Chairman Leahy's statement regarding the hearing can be found here.

Senate Judiciary Committee to Consider Kappos Nomination on Wednesday

    By Donald Zuhn --

On Wednesday, the Senate Judiciary Committee will hold a hearing on several nominations, including that of David Kappos for Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.  The Committee, which is scheduled to begin the hearing at 10:00 am (EST), will also be considering nominees for the Eleventh Circuit and the South Dakota District Court.  A webcast of the hearing can be accessed here.

In preparation for the hearing, the Committee has made available three letters it received in connection with Mr. Kappos' (at left) nomination.  The letters were sent by the American Intellectual Property Law Association (AILPA), the Intellectual Property Owners Association (IPO), and Henry Nothhaft, the President and CEO of Tessera.  In its letter, the AIPLA states that:

Mr. Kappos has been a member of AIPLA for nearly 20 years and has served as a member of the AIPLA Board of Directors for the last three years.  Based on our own experience with him over this period, we know Mr. Kappos to have a rich and varied experience in intellectual property law and policy, and we believe him to be well qualified to serve in the position to which he has been nominated.

The AIPLA also noted that it had previously advised the Obama Administration that "a new USPTO Director must be an individual of the highest caliber who is experienced and is a highly respected leader in whom Congress and the community of intellectual property owners, businesses, and international communities can place their full confidence," and that it "believe[s] that Mr. Kappos' experience more than meets this standard."

The letter sent by the IPO also provides an endorsement of Mr. Kappos, stating that:

Mr. Kappos has an exceptional record in intellectual property law and significant experience in industry as a manager.  He has worked within IPO and other associations to improve IP practice and communications with the USPTO.  He meets all the qualifications that IPO set out recently in letters to the Obama Administration for the position for which he has been nominated.

Finally, in the letter sent by Mr. Nothhaft, the Tessera CEO notes that while "the [USPTO] is underfunded, overburdened, and faces huge hurdles in hiring and retention," Tessera supports the nomination and is "hopeful that Mr. Kappos can quickly address these issues to further strengthen the USPTO."  Mr. Nothhaft also offers the Committee a list of recommendations for improving the USPTO, including adopting rules that prevent fee diversion and incentivize the issuance of quality patents, revising the fee structure to take into account the increasing complexity of many patent applications and perhaps charge higher fees for quicker prosecution outcomes, being more proactive in conducting interviews, and attracting and retaining a high-quality quality workforce (perhaps by creating virtual regional offices).

In addition to the letters in support of Mr. Kappos' nomination, the Committee has made available the nominee's responses to the Committee's background questionnaire, as well as links to the publications and other documents listed on the questionnaire.

Could the "New Rules" Nightmare Finally Be Over?

    By Kevin E. Noonan --

Hal Wegner has shared with Patent Docs papers filed by the Department of Justice (DOJ) on Friday, asking the Federal Circuit to defer proceedings on its en banc review of the panel decision in Tafas v. Doll.  The basis for this request is to give Under Secretary-designate David Kappos the opportunity to consider what action should be taken in the case.  The motion was filed as a joint motion of the DOJ and plaintiffs Dr. Triantafyllos Tafas and GlaxoSmithKline.

Appellants' brief is currently scheduled to be due on August 5th, with appellees' brief due 20 days thereafter and Appellants' reply 7 days after that date.  Oral argument is scheduled for October 7th.  The joint motion asks that "briefing and oral argument" be stayed until 60 days after the Senate confirms the Kappos appointment as Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.  In the event that the Office wishes to continue with en banc review, the motion asks for 30 days from the end of this 60 day term for the Appellants' brief to be due, with the same relative timing for following briefs as are now scheduled.

The brief in support of the joint motion states that the stay is requested to "give the new Director, if confirmed, an opportunity to examine the rules at issue in this case and determine what course the USPTO should take in the future with respect to those rules, including whether to rescind the rules."  While rescission of this rules package is a hopeful prospect, it should not be forgotten that the panel decision was in the main favorable to the Office, holding that three out of the four challenged rules were within the Office's procedural rulemaking authority (see Patent Docs post).

Assuming the new Kappos regime in the Patent Office is committed to working with, rather than against, its customers and their representatives in the patent bar, this action may be the first step towards restoring the historical amity between the Office and its constituents.