The USPTO has announced a new pilot program to permit Applicants to obtain consideration of certain Information Disclosure Statements (IDSs) after the Issue Fee has been paid without having to reopen prosecution. The “Quick Path Information Disclosure Statement (QPIDS) Pilot Program” takes effect May 16, 2012 and will run through September 30, 2012 unless it … Continue reading this entry
As announced in a recent Federal Register Notice, the USPTO is soliciting public comments on its information collection requirements, in accordance with the Paperwork Reduction Act. This is an important opportunity to highlight requirements that are unnecessarily burdensome and that may go beyond requirements authorized by statute. While my main paperwork concerns relate to the … Continue reading this entry
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 … Continue reading this entry
In 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 … Continue reading this entry
I know that the USPTO is busy studying the America Invents Act and drafting its implementing regulations, but it is disappointing that nothing has been done to address the inefficiencies of the current Information Disclosure Statement (IDS) rules. This inaction is even more egregious now that the Trilateral Patent Offices (EPO, JPO, USPTO) have launched … Continue reading this entry
The UPTO has announced a preliminary plan for the retrospective analysis of USPTO regulations it will undertake pursuant to Executive Order 13563 (“Improving Regulation and Regulatory Review”). The July 7, 2011 Federal Register Notice primarily refers to information on the Department of Commerce website, but includes an open invitation for public comments and suggestions. The … Continue reading this entry
As I noted last week, the USPTO is revisiting its guidance on the Duty of Disclosure in the wake of the Federal Circuit’s en banc decision in Therasense. While the USPTO is reviewing the substantive requirements of the Duty of Disclosure, I hope that it also takes this opportunity to ease the procedural burdens associated with … Continue reading this entry
The oracle told Julius Caesar to “beware the ides of March,” but patent practitioners have more cause for concern about the IDSs they will have to file in March. The McKesson Problem Federal Circuit decisions such as McKesson indicate that there can be a duty to disclose information from co-pendng U.S. applications, including Office Actions and cited … Continue reading this entry
As the USPTO begins the process of updating the Manual of Patent Examining Procedure (MPEP) and the Trademark Manual of Examining Procedure (TMEP), it is inviting public comment on specific sections through new "online discussion tools." I am encouraged by the USPTO's interest in public input on these guidance materials, and hope that members of the patent community take advantage of this opportunity to provide meaningful comments and suggestions on the procedural and substantive guidance they provide.
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In a recent post on his blog, Director Kappos discussed the progress the USTPO has made towards improving patent processes. He reports that in fiscal year 2010 the USPTO "[e]ntered more than 2.9 million documents." Now, he doesn't categorize these documents, but I wonder how many include Information Disclosure Statements that submit copies of references or Office Actions that the Patent Office already has in the electronic files of other patent applications. Yes, I am referring to the McKesson IDS problem again!
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This week the Federal Circuit heard oral arguments in its en banc rehearing of Therasense, Inc. v. Becton, Dickinson & Co. As reflected in the en banc order, the court took this case en banc in order to reconsider—and hopefully reform—the law of inequitable conduct. The court’s decision could solve the McKesson problem and rein … Continue reading this entry
David Kappos has wrapped up his first year as Director of the USPTO. As noted in his blog, he has implemented a number of new programs and rolled out several new initiatives. Perhaps most importantly, he has fostered an atmosphere of cooperation between the USPTO and the stakeholder community. With that in mind, I again urge the … Continue reading this entry
In “Ten Tips for Streamlining Patent Prosecution,” Director Kappos outlines ten steps that he would like practitioners to take in order to promote compact prosecution. While I agree with most of these steps in principle, often the realities of patent prosecution, business decisions and innovation itself get in the way. Here I discuss items 6-9 of his list. … Continue reading this entry
Federal Circuit decisions such as McKesson Information Solutions, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007), indicate that there can be a duty to disclose information from co-pendng U.S. applications, including Office Actions and cited references. However, the USPTO’s current IDS rules do not provide an efficient framework for citing information from a co-pending U.S. … Continue reading this entry