On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to preissuance submissions of publications in a pending patent application. The proposed rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The USPTO will consider written comments received by March 5, 2012.Continue reading this entry
Will You Pay $17,750 For Ex Parte Reexamination?
Posted in Patent Reform; USPTO Proposed Rule ChangesToday’s Federal Register includes the USPTO’s proposed rules to implement the Supplemental Examination provisions of The America Invents Act. I am in London for the C5 Biosimilars Forum, so I have not been able to read the 70 page notice, but the proposed new ex parte reexamination fee caught my eye as I skimmed through: $17,750.
USPTO Weighs In On Copyright Issues
Posted in Patent Office Practice; UncategorizedLast week was a big week in U.S. copyright law. On Wednesday, the Supreme Court issued its decision in Golan v. Holder, upholding § 514 of the Uruguay Round Agreements Act, which in effect gave copyright protection to certain preexisting works of Berne member countries that are protected in their country of origin, but not protected in the United States (e.g., were in the public domain in the United States). Coincidentally (?), on the same day, a number of popular websites “went dark” to protest the Stop On-line Piracy Act (SOPA) bill pending before Congress. (Proponents of SOPA say that it is necessary to protect intellectual property rights in the internet age, while opponents say that it would promote censorship and stifle the “free market” of the worldwide web.) Not to be left out, on Thursday, the USPTO issued a position paper on the “Fair Use of Copies of [Non-Patent Literature]” in the patent examination process. Continue reading this entry
Companies May Be Disappointed By USPTO’s Proposed Rules For Inventor Oath/Declaration
Posted in Patent Reform; USPTO Proposed Rule ChangesThe USPTO has published proposed rules to implement changes to the inventor oath/declaration requirements contained in the America Invents Act. The proposed rules recognize the changes to 35 USC §§ 115 and 118, but also reflect 35 §§ 111(a) and 371, which were not amended. Companies who were hoping for significant changes to the inventor oath/declaration requirements or looking for the ability to file applications without the need to obtain inventor declarations may be disappointed by the proposed rules. They and others can submit written comments to the USPTO by March 6, 2012.Continue reading this entry
Proposed AIA Implementation Rules: Estoppel Against Ex Parte Reexamination
Posted in Patent Reform; USPTO Proposed Rule ChangesOn January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent. While I wrote about those changes previously, the same rules package includes proposed changes to the ex parte reexamination rules that I write about here. The USPTO will consider written comments received by March 5, 2012. Continue reading this entry
Proposed AIA Implementation Rules: Citation Of Prior Art And Written Statements
Posted in Patent Reform; USPTO Proposed Rule ChangesOn January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent. The USPTO will consider written comments received by March 5, 2012. (The same Federal Register Notice also sets forth proposed rules to implement some of the estoppel provisions of the new inter partes review and post-grant review proceedings that I will address in a separate article.) Continue reading this entry
Supreme Court Hears Oral Arguments In Section 145 Case (Kappos v. Hyatt)
Posted in Supreme Court DecisionsOn January 9, 2012, the Supreme Court heard oral arguments in Kappos v. Hyatt. The issues before the Court relate to the scope of new evidence that a patent applicant can introduce against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) and the degree of deference the reviewing court must give to the USPTO’s decision not to grant a patent. Continue reading this entry
USPTO Issues First Batch Of Proposed AIA Implementation Rules
Posted in Patent Reform; USPTO Proposed Rule ChangesLast week the USPTO issued four Federal Register Notices with proposed rules to implement different aspects of the American Invents Act. Each proposed rule making has a 60 day comment period that expires in early March. As announced on the USPTO’s Leahy-Smith America Invents Act Implementation webpage, the USPTO will be carrying out an “AIA Roadshow” during this time period to discuss these and other forthcoming proposed rules with interested members of the public.Continue reading this entry
USPTO Proposes To Close Post-Notice Of Appeal Gap In Patent Term Adjustment Rules
Posted in Patent Term Adjustment; USPTO Proposed Rule ChangesIn a Federal Register Notice issued December 28, 2011, the USPTO announced that it is considering changes to the Patent Term Adjustment (PTA) rules relating to “appellate review by the Board.” I have written previously about the post-Notice of Appeal gap left by the current PTA rules, and believe that these new proposed changes would go far to close that gap, although they will not benefit all applications on appeal. The USPTO will accept written comments on these proposed rule changes through January 27, 2012. Continue reading this entry
WIPO To Publish Information On PCT Applications Available For Licensing
Posted in International Patent PracticeAs of January 1, 2012, PCT applicants can request that the International Bureau (IB) publish information indicating that their applications are available for licensing. WIPO will make the information available on its PATENTSCOPE website, but it will not be published with the PCT application itself. According to the announcement in the December 2011 PCT Newsletter, the new program is designed to promote licensing. Continue reading this entry