News & Updates

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.

Following up on a previous posting regarding the Patent Office’s request for comments on its Interim Guidelines for Patentable Subject Matter, the Patent Office has now extended the previous 11 day period in which to submit comments to 30 days from the publication date of the Notice.  The new deadline to submit comments is now October 17, 2009.

These interim guidelines are intended to aid Examiners in analyzing whether the claims in a patent application are directed to patentable subject matter.  Again, it should be emphasized that these are merely interim guidelines, and it is likely that these guidelines will change depending on the Supreme Court’s ruling in the Bilski case.

The US Patent & Trademark Office (USPTO) has issued a Notice to request comments on the Interim Examination Instructions for Evaluating Subject Matter Eligibility.  The Interim Guidelines are available at  Interim Instructions.  The link for the notice is here: Notice.  The deadline to submit comments in September 28, 2009.

The Interim Guidelines were developed in view of the Federal Circuit’s recent Bilski decision, which is currently being reviewed by the Supreme Court.  Please refer to our previous discussion of the Bilski decision at the following link: Bilski.  These Interim Guidelines were provided to the Examiners pending the final decision from the Supreme Court.  The Notice indicates that the USPTO will revise these guidelines once the Supreme Court’s decision in the Bilski case is issued.

David Kappos was sworn in August 13, 2009 as the new Director of the United States Patent and Trademark Office.  Mr. Kappos intends to focus on reducing the backlog of pending patent applications and appeals at the USPTO, as well as reviewing the count system currently in place for evaluating the performance of Examiners, among other things.  Mr. Kappos has previous experience as an engineer and an intellectual property attorney with IBM.  Many commentators speculate that Mr. Kappos will conduct a review of the Patent Office’s proposed rules being challenged in Tafas v. Doll and possibly alter the Patent Office’s course.  It will be interesting to see if and how the Patent Office’s position changes with respect to the proposed rules.

On July 6, the Federal Circuit granted rehearing en banc in Tafas v. Doll regarding the USPTO’s power to implement new rules on restrictions for continuations and claim limitations.  No comment concerning the underlying opinion was given beyond announcing its vacatur and reinstatement of the appeal.  The original appeal was taken from a summary judgment decision in favor of plaintiffs Tafas, SmithKline Beecham Corp. et al., and the Federal Circuit initially affirmed in part and vacated in part.  Plaintiffs petitioned for the rehearing that was granted.  The parties jointly filed a request to stay the en banc review until 60 days after the U.S. Senate confirms David Kappos as the new director of the Patent Office, giving the new director an opportunity review the rules at issue and make any changes to the Patent Office’s position with respect to the proposed rules.

Although it is still several months away, the EPO will dramatically changes its practice effective April 1, 2010 relating to divisional applications and European search reports.  A review of the changes is presented below:

• Limitation on Filing Divisional Applications
  In addition to tight substantive limitations on divisional applications, the EPO will temporally limit such applications.  As of the effective date, any divisional application must be filed within 24 months of the Examiner’s first communication or a unity-of-invention communication.  A six-month grace period is provided for filing of divisional applications based on parent applications filed before the effective date.

• Requirement to Respond to Search Report
  As of the effective date, a response must be filed with respect to each EP search report.  The deadline for the response is six months from the publication date of the search report, or two months in the case of an extended search report.

• Invitation to Respond to PCT Written Opinion
  The EPO will not conduct a new search in PCT applications for which it performed the international search.  In line with the response requirement for EP search reports, the EPO will issue a notice requiring a response to the PCT Written Opinion after entry into the European regional phase.  The response will be due one month after the EPO’s notification.

• Changes to Amendment Practice
  As of the effective date, no voluntary amendments are permitted except when filed with a response to a written opinion, and further amendments are subject to the examiner’s discretion.  Applicants will be required to provide basis for amendments in the application text, and a one-month deadline will be set by notification if such basis is not provided with the amendments.

• Searching Multiple Independent Claims
  Present EPO practice is to search the first of multiple independent claims, particularly where a lack of unity of invention exists.  The new practice will have the applicant elect which claim to have searched.

Please contact us if you have any questions regarding the upcoming changes to EPO practice or would like to discuss the effects of these changes in greater detail.

The U.S. Supreme Court has granted certiorari in the Bilski case, a challenge to the decision handed down by the Federal Circuit last October excluding pure business methods from patent protection. Additionally, the Bilski decision set some roadblocks in the way for obtaining software patents. In its decision, the Federal Circuit held that in order to be patent eligible under 35 U.S.C. § 101, a claimed process must either: (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. The Board of Patent Appeals and Interferences at the U.S. Patent Office has handed down a few decisions in the wake of Bilski, however potential patentees are still left with a great deal of uncertainty in the future of business method and software patents. The U.S. Supreme Court’s ruling in this case will be an important and significant decision affecting patentable subject matter under § 101.

Applicants of international PCT patent applications filed on or after January 1, 2009, can now view the file contents of their published applications online. Over the next couple of months, the service will begin including applications for which early publication has been requested. In addition, you may obtain an International Application Status Report containing the latest bibliographic data; important status dates; information about certain withdrawals; the title and abstract; and information on the international search report, preliminary examination report, and supplementary search report. The Status Report is intended for Applicants, designated/elected Offices, and third parties and is generated upon request. To view this information, access the _PATENTSCOPE_® search service at www.wipo.int/pctdb.