In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 (AFCP 2.0) as part of its ongoing efforts to “reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application.” The program is set to commence May 19, 2013 (yesterday!), and will run run through September 30, 2013. Continue reading this entry
The USPTO still is considering information gathered during its RCE Outreach program, but it has made some internal changes that should lead to more prompt examination after a Request for Examination (RCE) is filed. However, because that the backlog of RCEs awaiting examination has climbed to over 110,000, it could be some time before applicants notice an appreciable difference in RCE processing times.
While most stakeholders are focused on the first-inventor-to-file changes to U.S. patent law that take effect on March 16, 2013, some applicants could realize significant cost savings by taking certain actions by March 18, 2013, to avoid the new USPTO fees that take effect on March 19, 2013. Applicants in the process of preparing Appeal Briefs will be interested to know that the USPTO will waive the new appeal fee if an Appeal Brief and fee are filed before March 19, 2013.
In a Federal Register Notice published January, 13, 2013, the USPTO asks the public to consider potential best practices aimed at improving patent application quality ”in order to facilitate examination and bring more certainty to the scope of issued patents.” These practices are separate but related to initiatives being pursued via the USPTO’s partnership with the software community to enhance the quality of software-related patents. The USPTO will consider written comments received by March 15, 2013. Continue reading this entry
The USPTO and other patent offices around the world are studying the feasibility of the international harmonization of patent laws. As part of this initiative, the USPTO is soliciting stakeholders views on four key issues: (1) the grace period; (2) eighteen month publication; (3) the treatment of conflicting patent applications; and (4) prior user rights. As set forth in a recent Federal Register Notice, stakeholders can provide their views by answering an on-line questionnaire and by participating in a public hearing that will be held at the USPTO’s Alexandria, Virginia campus on March 21, 2013.
Next week (February 4, 2013) is the deadline for submitting comments in response to the USPTO’s request for feedback on Request for Continued Examination (RCE) practice. (This article provides more information on the request for feedback.) The USPTO’s treatment (or neglect) of RCEs will become even more frustrating after March 19, 2013, when the costs for filing RCEs will increase significantly. I urge stakeholders in the biotechnology and pharmaceutical industry–where RCEs are a normal step in the patent prosecution process–to make their voices heard and urge the USPTO to adopt policies and practices that ensure that Requests for Continued Examination are examined in a timely manner.Continue reading this entry
A number of Patent Term Adjustment (PTA) cases have been filed in the U.S. District Court for the Eastern District of Virginia since the November 1, 2012 decision in Exelixis, Inc. v. Kappos. While most have presented straight-forward fact patterns, one complaint caught my attention because it brings to mind how applicants could manipulate the patent prosecution process to ensure that they fall under Exelixis. The USPTO is likely to use examples like these in support of its Federal Circuit appeal.
The Exelixis Decision
As I explained in this article, the Exelixis decision relates to the interpretation of 35 USC § 154(b)(1)(B)(i) and the calculation of PTA when the USPTO took more than three years to grant the patent, and a Request for Continued Examination was filed during prosecution (i.e., the “RCE carve-out” of the “B delay” award). Under the district court’s interpretation of the statute, the carve-out only comes into play if a Request for Continued Examination (RCE) is filed within the three-year period from the application’s filing date. Otherwise, as stated by the court, “RCE’s have no impact on PTA if filed after the three year deadline has passed.”
The Hypermed Imaging Complaint
Hypermed Imaging, Inc. filed the Exelixis-based PTA case that caught my eye. According to the complaint, the patent application at issue was filed in March of 2007, the first RCE was filed in June 2010 (more than three years after the filing date), and the patent was issued in July of 2012 (more than five years after the filing date).
What makes this case interesting is that the application was “unintentionally abandoned” between April 2009 and July 2010. Indeed, the first RCE was filed with the Petition to Revive. If the application had not been unintentionally abandoned, it is likely that the first RCE would have been filed before the application had been pending for three years. Under those circumstances, the RCE would have impacted the B delay PTA calculation, even under Exelixis.
While the unintentional abandonment might permit Hypermed Imaging to accrue B delay under Exelixis, it also negatively impacts the total PTA award for the patent. This is because periods of unintentional abandonment constitute “Applicant delay” that is subtracted from USPTO delay when calculating the final PTA award. According to Hypermed Imaging’s complaint, the total days of USPTO delay exceeded the total days of Applicant delay, even with 452 days of Applicant delay during the period of abandonment.
Manipulating Patent Prosecution To Maximize PTA
Prosecution of the applications at issue in the cases being filed now were not manipulated to benefit from Exelixis, because they were prosecuted under the USPTO’s interpretation of 35 USC § 154(b)(1)(B)(i), under which the USPTO did not award any PTA for B delay once an RCE was filed. But the fact pattern in this case and others filed in the wake of the Exelixis decision bring to mind how patent prosecution could be manipulated to increase the likelihood that a first RCE will not be filed until after the application has been pending for at least three years, to ensure that the patent can accrue B delay under Exelixis.
Of course, an applicant could not purposefully “unintentionally abandon” an application in order to extend the time to a first RCE, but applicants can extend response periods to prolong prosecution. Any such strategies could backfire, however, if the total number of days of B delay is not greater than the total number of days of Applicant delay required to prolong the filing of the first RCE. Still, for an application that is not close to allowance and/or where the RCE is likely to languish on the USPTO examiner’s docket, the delay tally may be more likely to end up in the applicant’s favor. (Please see this article for a discussion of the USPTO’s latest efforts to address RCE backlog problem.)
The USPTO has published the new patent fee structure that it is implementing pursuant to its fee-setting authority under the Leahy-Smith America Invents Act (AIA). While some patent prosecution fees are decreasing, most large entities will see their total patent prosecution fees increase. The majority of the new USPTO patent fees will take effect on March 19, 2013, but some will not take effect until January 14, 2014. Continue reading this entry
The USPTO promotes the Patent Prosecution Highway (PPH) as a way to “fast-track” a U.S. patent application when a corresponding foreign application has been allowed, or when a corresponding PCT application has received a favorable Written Opinion from a Searching Authority that participates in the PPH program. While a USPTO Examiner still will conduct an independent search and examination of the application, USPTO statistics indicate that PPH applications do enjoy a more compact patent prosecution process and a higher allowance rate. Applicants considering the PPH program for a pharmaceutical patent application should be aware of one pothole that could lead to an improper (in my view) denial of a Request to participate in the PPH. Continue reading this entry
The USPTO has published final rules governing the new Micro Entity status that will permit certain patent applicants to pay certain patent fees at a 75% reduced rate. The rules set forth three independent ways to qualify for Micro Entity status: (i) based on the income of each applicant, (ii) based on each applicant’s employer being an “institution of higher education,” and (iii) based on each applicant having assigned or licensed the application to an “institution of higher education” (or being obligated to do so). This article focuses on (ii) and (iii). Although the rules technically take effect on March 19, 2013, applicants will not be able to pay fees at the Micro Entity rate until the USPTO implements its own fee-setting authority, which it expects to do in “Spring 2013.” When it takes effect, Micro Entity status will offer a cost savings of at least $750 per application, and at least $3000 over the life of a patent. This savings could add up quickly across a university’s portfolio, and may justify the costs of both aligning internal practices to qualify for Micro Entity status and taking the steps to claim Micro Entity status.Continue reading this entry
The USPTO has published “Tips for Filing a Compliant Supplemental Examination Request” on its AIA Implementation web page. According to the notice, the USPTO has received six requests for Supplemental Examination, but apparently not all of them complied with the USPTO’s rules. Luckily for patent owners, requests for Supplemental Examination are not made public unless and until they have been found to satisfy the filing date requirements. Thus, patent owners who file non-compliant requests have an opportunity to cure them before they are made public. The “tips” in the notice underscore the importance of following the rules to a “T,” and making it easy for the USPTO to determine why the “information” is being submitted and whether it is “relevant to the patent.”Continue reading this entry
The USPTO has a number of roundtables, information sessions, and seminars scheduled for January 2013. You might want to put these events on your new calendar. (Please see the USPTO Event Calendar for registration information.)Continue reading this entry
The U.S. House of Representatives passed an amended version of HR 6621 that does not includes the provisions that could have effectively eliminated the term of any pending patent applications that were filed before June 7, 1995 (“pre-GATT applications”). Instead, the bill requires the USPTO to submit a “report” on pre-GATT applications. (The bill still includes the troubling Patent Term Adjustment provisions that I wrote about in this article.)
The USPTO is seeking public comments on Request for Continued Examination (RCE) practice. In particular, the USPTO is “soliciting public feedback in an effort to better understand the full spectrum of factors that impact the decision to file an RCE.” The USPTO tends to have a negative view of RCEs, so this is an important opportunity to explain how and why RCEs can be a legitimate step in the patent examination process, and how certain USPTO examination practices can contribute to the need for an RCE. The USPTO will consider written comments received by February 4, 2013.Continue reading this entry
HR 6621 (introduced by Representative Lamar Smith on November 30, 2012) proposes several changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act,” but also includes provisions that would effectively eliminate the term of any pending patent applications that were filed before June 7, 1995 (“pre-GATT applications”). While pre-GATT applications present serious problems, the solution offered in HR 6621 raises its own issues. Rather than eviscerating the terms of pre-GATT patents, Congress should consider less drastic measures, such as compulsory publication and accelerated examination. Continue reading this entry
In a decision issued November 1, 2012 in Exelixis, Inc. v. Kappos, the U.S. District Court for the Eastern District of Virginia has found that the USPTO’s interpretation and application of the “RCE carve-out” provision of the Patent Term Adjustment (PTA) statute is contrary to law. Although I wrote about some “RCE carve-out” challenges just last week, the decision here reaches an even broader interpretation of the statute.
Under the district court’s interpretation, 35 USC § 154(b)(1)(B)(i) only comes into play if a Request for Continued Examination (RCE) is filed within the three-year period from the application’s filing date. Under this interpretation, a significantly greater number of patents may be entitled to significantly greater PTA awards. It is too early to know whether the USPTO will appeal this decision. In the meantime, patent holders with affected patents may wish to consider pursuing additional PTA in a Request for Reconsideration filed with the USPTO or in a district court proceeding, if the deadline for pursuing such an action has not passed.Continue reading this entry
As of September 16, 2012, third parties have been able to make “Preissuance Submissions” of printed publications in pending patent applications. To date, the USPTO has received just over 100 Preissuance Submissions. This article provides some tips and strategies for both applicants and third parties. Continue reading this entry
In a Federal Register Notice published October 18, 2012, the USPTO announced proposed changes to its rules of professional responsibility that would replace the current rules with rules based on the ABA Model Rules of Professional Conduct, with some modifications. While most of the proposed rules are familiar, a few appear to elevate the duty of disclosure over client confidentiality obligations in ways that may conflict with some state bar rules of professional responsibility. The USPTO will consider written comments received by December 17, 2012.Continue reading this entry
Since inter partes review proceedings became available on September 16, 2012, thirteen petitions for inter partes review have been filed. Of these, three were filed against patents examined in Group 1600: U.S. Patent 7,790,869, U.S. Patent 7,713,698, and U.S. Patent 6,258,540.Continue reading this entry
Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.Continue reading this entry
On Tuesday, September 18, 2012, at 2:00 pm eastern, I will be speaking on the IPO IP Chat Channel webinar on “Supplemental Examination: Rules & Strategy.” My distinguished co-panelists are Robert Bahr, Senior Patent Counsel in the USPTO’s Office of Patent Examination Policy, and Kurtis MacFerrin, Patent Counsel at Google Inc.
We will be reviewing the statute and rules governing supplemental examination, which is a new post-grant procedure by which patent owners can ask the USPTO to consider, reconsider, or correct information believed to be relevant to a patent, and immunize the patent from being held unenforceable based on conduct relating to that information. We also will discuss strategies and factors to consider when balancing the possible risks and benefits of this new option for patent holders.
For more information or to register, please visit the IPO IP Chat Channel webpage.
The next wave of U.S. patent reform changes embodied in the Leahy-Smith America Invents Act takes effect on Sunday, September 16, 2012. The following is a list of some of the things that will be different when we come to work on Monday. Because of the different effective date provisions, some of these changes will impact granted patents and/or pending patent applications, as well as new U.S. patent applications filed on or after September 16, 2012.Continue reading this entry
Although I am used to seeing patent litigation stories in The Washington Post, I was surprised when Sunday’s business section included an article on examiner interviews. Over the past few years, examiner interviews have become a more and more significant part of my patent practice. In a complex case, they can offer an invaluable opportunity to discuss the state of the art, explain the technology of the invention, or even review a specific point of patent law. While interviews do not always result in an agreement as to patentable subject matter, they do always advance prosecution–at the very least we come away with a better understanding of the examiner’s concerns and an indication of how we might be able to move forward. Continue reading this entry
The USPTO is developing a new electronic filing and case management system for the new patent trial proceedings that become available on September 16, 2012. According to new 37 CFR § 1.46(b) which takes effect on September 16, 2012, unless “otherwise authorized,” all submissions to the Board “are to be made . . . electronically via the Internet according to the parameters established by the Board.” The new system, called the Patent Review Processing System (PRPS), embodies the new parameters.Continue reading this entry