On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry
Category Archives: USPTO Proposed Rule Changes
A First Look At The Proposed Rules For The New USPTO Patent Trial Proceedings
Posted in Patent Reform; USPTO Proposed Rule ChangesAs I wrote previously, the USPTO has released its proposed rules for the new patent trial proceedings that will be conducted by the Patent Trial and Appeal Board in accordance with the America Invents Act (AIA). The proposed rules will be published in seven separate Federal Register Notices that are due out later this week:
- Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012
- Practice Guide for Proposed Trial Rules—public comments due April 9,
- Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012
- Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012
- Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012
- Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012
- Changes to Implement Derivation Proceedings—public comments due April 10, 2012
Several of my colleagues at Foley & Lardner LLP and I spent the day reviewing the proposed rules and preparing a Legal News Alert that outlines some of the key provisions in these rules packages. Here, I note a few of my first impressions.
USPTO Publishes Proposed Rules For New Patent Challenges And Outlines New Patent Fees
Posted in Patent Reform; USPTO Proposed Rule ChangesThe USPTO has published non-final versions of its proposed rules for the new “contested cases” created by the America Invents Act (Inter Partes Review, Post Grant Review and Derivation proceedings) on its AIA Implementation website. According to the USPTO, the official Federal Register Notices will be published later this week, on February 9 and 10. Written comments will be due by April 9 or April 10, depending on the exact publication date of the proposed rule at issue.
The USPTO also has published its proposed patent fee schedule for the fees it plans to charge under its new fee-setting authority. The USPTO is holding PPAC Fee Setting Hearings on February 15 (at the UPSTO’s Alexandria campus) and February 23 (in Sunnyvale, California).Continue reading this entry
More On Supplemental Examination: The USPTO’s Cost and Volume Estimates
Posted in Patent Reform; USPTO Proposed Rule ChangesEarlier this week I provided a summary of the USPTO’s proposed rules to implement the Supplemental Examination provisions of the America Invents Act. The Federal Register Notice also includes a discussion of the USPTO’s estimate of how much a Request for Supplemental Examination will cost to prepare, and its estimate of how many Requests will be filed on an annual basis. Members of the public may submit written comments on these estimates by March 26, 2012.
Continue reading this entry
Supplemental Examination: Airing Your Dirty Laundry?
Posted in Inequitable Conduct; Patent Reform; USPTO Proposed Rule ChangesAs I was reviewing the USPTO’s proposed rules to implement the Supplemental Examination provisions of the America Invents Act, one issue that crossed my mind is the problems that could arise if a patent holder’s initial Request for Supplemental Examination is not granted. In this article, I discuss that potential problem and some possible solutions.Continue reading this entry
Proposed AIA Implementation Rules: Supplemental Examination
Posted in Patent Reform; USPTO Proposed Rule ChangesThe USPTO has issued its proposed rules to implement the Supplemental Examination provisions of the America Invents Act. As I noted last week, the same rules package sets a new fee for ex parte reexamination at $17,750. Now that the shock of that amount has worn off, I am ready to take a look at the proposed Supplemental Examination rules. The USPTO will consider written comments received by March 26, 2012.Continue reading this entry
Proposed AIA Implementation Rules: Preissuance Submissions In Pending Applications
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 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.
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
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
USPTO Considers Requiring More Information On Patent Ownership
Posted in USPTO Proposed Rule ChangesIn a Federal Register Notice issued November 23, 2011, the USPTO announced that it is considering collecting more information on patent ownership. Although the Notice is titled “Request for Comments on Eliciting More Complete Assignment Information,” the intent appears to be to require applicants to update the USPTO on any changes in ownership at specific stages of prosecution and with maintenance fee payments. The USPTO believes that having complete and current patent ownership information will offer several public benefits, but seems to acknowledge that it may not have the authority to require applicants to provide this information. It seeks public input on this and other issues by January 23, 2011.Continue reading this entry
USPTO Tweaks Patent Term Adjustment Rules To Accomodate McKesson-Type IDS Submissions
Posted in Patent Term Adjustment; USPTO Proposed Rule ChangesIn a Federal Register Notice issued December 1, 2011, the USPTO issued a final rule that tweaks the patent term adjustment rules to permit applicants to promptly file McKesson-type Information Disclosure Statements (IDSs) without incurring a patent term adjustment deduction. The rule change took effect on December 1, 2011.
(The Federal Register Notice indicates that previously proposed changes to the calculation of patent term adjustment when the USPTO reopens prosecution after a Notice of Appeal are being revised and will be published for comment separately.) Continue reading this entry
USPTO Issues New Guidance On New Rejections On Appeal
Posted in Patent Office Practice; USPTO Proposed Rule ChangesThe USPTO’s final Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals includes new rules relating to new grounds of rejection on appeal, and new guidance on what constitutes a “new” ground of rejection in an Examiner’s Answer. Although the new rules only apply to cases in which a Notice of Appeal is filed on or after January 23, 2012, the guidance is based on older Federal Circuit and CCPA decisions (and in accord with the recent Federal Circuit decisions in In Re Leithem, In Re Stepan Co. and cases cited therein) and so should be applicable now.
(See this article for an overview of other aspects of the new rules.)Continue reading this entry
USPTO Rules Simplify Ex Parte Appeal Practice
Posted in Patent Office Practice; USPTO Proposed Rule ChangesOn November 22, 2011, the USPTO issued its final changes to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals. The new rules will apply to all cases in which a Notice of Appeal is filed on or after January 23, 2012. Here, I review some of the key changes embodied in the new rules.Continue reading this entry
USPTO Adapts To Therasense
Posted in USPTO Proposed Rule ChangesThe USPTO announced on July 21, 2011, that it plans to “revise the standard for materiality” for the duty of disclosure in view of the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co. In particular, the USPTO plans to “match” the materiality standard the court announced in the context of its inequitable conduct decision. The USPTO acknowledges that the Supreme Court may take up Therasense for review, but has decided to move forward for the time being. The USPTO will accept written comments on its proposal until September 19, 2011.
Proposed Changes to Patent Term Adjustment Rules–Looking a Gift Horse In The Mouth
Posted in Patent Term Adjustment; USPTO Proposed Rule ChangesOn April 6, 2011, the USPTO announced proposed changes to the Patent Term Adjustment (PTA) rules that would award PTA for USPTO delay when an examiner reopens prosecution after a notice of appeal has been filed. While I have written previously about the gap left by the USPTO’s current PTA rules, I am afraid that the new proposal raises more problems than it solves.
Revising U.S. Patent Regulations
Posted in USPTO Proposed Rule ChangesIf Director Kappos would grant you three wishes to revise the USPTO’s regulations (37 CFR), what would they be? This is not a fairy tale. Last week, the USPTO announced its “preliminary plan to review its existing significant regulations in response to the President’s Executive Order 13563 on Improving Regulation and Regulatory Review.” The USPTO is soliciting public input on how it should undertake this process and specific rules that should be reviewed, and will accept written comments received before April 21, 2011.
Fee-Based Fast-Track Examination On The Horizon?
Posted in USPTO Proposed Rule ChangesThe USPTO has issued a proposed rulemaking supporting its plans to implement “Track I” of the three track examination program announced last year. According to the announcement, the USPTO is still considering public comments on other aspects of the program, but wants to move forward with Track I because “the vast majority of public input was supportive.”Continue reading this entry
USPTO Proposes To Simplify Patent Appeal Practice
Posted in USPTO Proposed Rule ChangesThe USPTO has published proposed changes to the rules governing practice before the Board of Patent Appeals and Interferences. While the proposed changes salvage a few elements from the 2008 "Final Rules" that never took effect, the USPTO plans to rescind that rules package. In its place, the USPTO has proposed a rules package that appears to strike a reasonable balance between facilitating Board review and simplifying the appeals process for applicants.
Can Rapid Reexamination Incentivize Humanitarian Technologies?
Posted in USPTO Proposed Rule ChangesOn September 20, 2010, the USPTO issued a “Request for Comments on Incentivizing Humanitarian Technologies and Licensing Through the Intellectual Property System.” The proposal under consideration would offer a “fast-track ex parte reexamination voucher” designed to incentivize technologies “that address humanitarian needs.” At times like these I wish I had more “inside” information so I could understand the forces behind this proposal, but perhaps some of my readers can enlighten me.
Patent Stakeholders Speak Out On Enhanced Examination Timing Control Initiative
Posted in USPTO Proposed Rule ChangesOn July 20, 2010, the USPTO hosted a public meeting on the proposed Enhanced Examination Timing Control Initiative, which would offer three tracks for examination while delaying examination of foreign-based applications. (Other blog articles discuss some drawbacks of this proposal and its particular impact on foreign-based applications.) The program began with opening remarks from Director Kappos, which were followed by brief presentations from representatives of Microsoft, AIPLA, AIPR, IPO, 3M, BIO and UIA. The speakers generally were receptive to the idea of giving applicants more options and control over the timing of examination, although each raised concerns about specific aspects of the proposed program.