2009 October

On September 24, 2009, Thailand (TH) became the 142nd Contracting State of the PCT.  Thailand will become bound by the PCT on December 24, 2009, and all PCT applications filed on or after December 24 will automatically designate Thailand.

A new patent search tool offered by WIPO is available here.  The tool includes about 1.6 million PCT applications as well as the patent collections of ARIPO, Cuba, Israel, Mexico, South Korea, Singapore, South Africa and Vietnam.  Additional collections will be added in the near future.

The USPTO announced today that it will officially rescind its controversial claiming and continuations rules package next week.  The restrictive rules package sought to impose extensive limits on the way applicants could claim their inventions and on the number of continuation applications an applicant could file.  The rules package, which was challenged immediately upon issuance, was declared void by a district court as beyond the office’s rulemaking authority.  That decision was subsequently reversed by the Federal Circuit earlier this year.  At the time of the announcement, the rules package was set to be reviewed en banc by the Federal Circuit, but will be dismissed in light of the USPTO’s action. A link to the official USPTO press release can be found here.

The US Patent and Trademark Office (USPTO) announced yesterday that it is expanding its initial First Action Interview Pilot Program.  This program entitles an applicant to an interview with the patent examiner assigned to their case prior to the issuance of a first office action on the merits. The expansion will allow the program to reach additional technology areas for a set six-month period beginning on October 1, 2009.  For a list of the eligible art units, see the Enhanced First Action Interview Pilot Program.

The US Patent & Trademark Office (USPTO), via a press release on its web site, has announced that the USPTO Joint Labor-Management Task Force has issued a joint proposal for amending the Examiner Count System.  The task force comprised senior managers from the USPTO and leadership of the Patent Office Professional Association (POPA), which is the union that represents Patent Examiners.  These proposed changes to the count system are the most significant in the last 30 years.  This proposal, however, still needs to be ratified by POPA’s membership.

The Examiner Count System is one means the USPTO uses to evaluate examiner efficiency.  The count system was originally created around the mid 1960s and has not been dramatically revised since 1976.

The current nature of the present count system has a tendency to encourage Examiners to extend the length of prosecution for patent applications.  For example, under the current systems Examiners are incentivized to have applicants submit multiple Requests for Continued Examination (RCEs), which can be quite costly for applicants.  To see how the proposed count system will change the incentives for examiners, tables from the report comparing the current count system to the proposed count system have been reproduced below.  At first glance, it appears that the proposed changes will reduce the incentive for examiners to extend prosecution by requiring multiple RCEs.

A more detailed analysis of the proposed changes will follow shortly.