Patent Examiners

Update to New Rule for Prioritized Examination

April 22, 2011

We previously reported a new rule issued by the United States Patent and Trademark Office (USPTO) regarding prioritized examination.  A copy of this blog posting can be found here.  Briefly, this new rule allows an applicant to have a patent application examined more quickly than would otherwise occur by submitting a $4,000 fee and following a number of other formalities.  On April 22, 2011, Director Kappos announced that this program is indefinitely postponed due to funding cuts.  Additional changes have also been specified by Director Kappos and can be found here. We will keep you updated on any progress related to these funding cuts.


USPTO Issues Final Rule to Implement Prioritized Examination

April 14, 2011

On April 4, 2011, the United States Patent and Trademark Office (USPTO) issued a final rule regarding prioritized examination (Track I).  The purpose of the rule is to provide a final disposition within twelve months of prioritized status being granted. 

 Track I of the prioritized examination will allow an applicant to request prioritized examination of an original utility or plant application under 37 CFR 1.102(e).  To qualify for this status, the application: (1) must be a new original utility or plant nonprovisional application filed on or after May 4, 2011, (2) must be complete under 37 CFR 1.51(b) including an oath or declaration under 37 CFR 1.63 and all required fees (i.e., filing fee, search fee, examination fee, any excess claims fees, and any application size fee), and it must be filed via the USPTO’s electronic filing system (EFS-Web) if it is a utility application, (3) must contain no more than 4 independent claims, no more than 30 total claims, and cannot contain any multiple dependent claims, (4) and must be filed in conjunction with a request for prioritized examination in compliance with 37 CFR 1.102(e) along with the prioritized examination fee, the processing fee, and the publication fee.  The prioritized examination fee is the same for large and small entities ($4000), although this fee may be increased to $4,800 for large entities and reduced to $2,400 for small entities if the patent reform legislation S. 23 (or similar legislation) is enacted into law. 

Additional details from the Federal Register notice point out that continuing applications are acceptable; however, these applications will not automatically be given prioritized examination status based on a request filed in the parent case.  As well, unlike the accelerated examination program under 37 CFR 1.102(d), the filing of an examination support document is not required for prioritized examination under 37 CFR 1.102(e).

The USPTO is limiting the number of qualifying applications to 10,000 during the remainder of 2011. 

 To read the final rule in the Federal Register, click here.


USPTO Provides Updated Examination Guidelines In View of KSR Decision

September 3, 2010

The United States Patent and Trademark Office (USPTO) recently published updated examination guidelines regarding obviousness rejections under 35 U.S.C. §103 in light of the United States Supreme Court’s 2007 decision in KSR Int’l Co. v. Teleflex Inc.  The updated examination guidelines provide additional examples to assist in obviousness analyses stemming from post-KSR case law.  The guidelines can be found clicking here.  Comments can be emailed to KSR_Guidance@uspatent.gov


USPTO Funding Bill Becomes Public Law

August 16, 2010

The United States Patent and Trademark Office (USPTO) was successful in its lobbying efforts to get an important funding bill (H.R. 5874) passed by Congress and signed by the President.    The legislation allows the USPTO to increase its spending authority by $129 million for its 2010 fiscal year.  According to USPTO Director Kappos, the increased spending authority will support innovation and spur job creation and economic growth.  More specifically, Director Kappos asserts that the bill will allow the USPTO to hire additional patent examiners, fund full overtime for patent examiners and support staff, accelerate patent examination process reengineering, continue to fully fund PCT contract work, and upgrade information technology systems to increase USPTO effectiveness.  In essence, the bill will return to the USPTO most of the funds it collects in excess of the amount originally appropriated.


Patent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?

June 30, 2010

Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage? 

The short answer is “yes”. But as you probably guessed, it requires a little more than a simple phone call to the examiner. Instead, the applicant will need to file a petition under 37 CFR 1.313(c) to have the patent application withdrawn from issue. This includes payment of the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why the withdrawal is necessary. 

While there are three distinct ways to accomplish a withdrawal under 37 CFR 1.313(c), there are advantages to proceeding under section (2) which involves filing a Request for Continued Examination (RCE) under § 1.114 (including payment of the separate RCE fee set forth in 37 CFR 1.17(e)). 

In brief, when proceeding under 1.313(c)(2), the newly-discovered reference will be included in an Information Disclosure Statement (IDS) which will qualify as the RCE submission. Once the RCE and petition are filed (preferably electronically), it is advisable to call the Office of Petitions to notify them of the filing. 

Calling the Office of Petitions is a key step since you want to verify immediately that the petition was received and that, if the petition can be granted, it will be granted before the patent issue date. As MPEP §1308 warns, “… while a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.” 

As mentioned previously, there are two other ways to accomplish a withdrawal under 37 CFR 1.313(c). Under section (1), the applicant can provide an “unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable.” While one can envision circumstances under which this approach might be appropriate, making such statements is typically not recommended. 

Still a further alternative is section (3) which involves filing a continuing application under 37 CFR 1.53(b) and then expressly abandoning the earlier application. The usual “RCE vs. CON” factors will come into play when evaluating this option. However, for a host of reasons—expense being a major one—starting over with an entirely-new application is often undesirable. 

Not only is filing a continuation application more expensive than an RCE, but importantly, if the applicant withdraws the application under 1.313(c)(2) by filing an RCE and the application is again found allowable, it is possible to “reapply” the previously-paid issue fee toward the subsequent issue fee. See MPEP § 1306. Conversely, if the applicant expressly abandons the earlier application in conjunction with 1.313(c)(3), the previously-paid issue fee is lost. 

Please contact us if you would like to discuss this topic in greater detail or would like additional information.


Restriction Practice Now Under Scrutiny

June 23, 2010

For all those who have been confused and/or down right frustrated by a restriction requirement or two … (Haven’t we all?) … the United States Patent and Trademark Office will be accepting written public comments on restriction practice until August 13, 2010. Click  here to access the Federal Register Notice announcing the request.

Interestingly, the Notice is titled “Request for Comments on Proposed Changes to Restriction Practice in Patent Applications.” However, upon further review, it is clear that that the PTO is not proposing any actual rule changes at this time — just floating some ideas.

Here is a summary of the 6 areas the Office outlined for discussion:

1. What should be included in an Office action that sets forth a restriction requirement?

• Examiners may be required to set forth actual reasons why the inventions are independent or distinct and why there would be a serious burden in the absence of a restriction.

• Support for a “serious burden” might also come from an examination burden (and thus could be supported by non-prior art issues, e.g., under §101 and/or §112, first paragraph).

2. How might the process for traversing or requesting reconsideration of a restriction requirement be improved?

3. What exactly is necessary in order to restrict between related product inventions or related process inventions?

• For such restrictions not otherwise addressed in MPEP §§ 806 through 806.05(j), a restriction would require two-way distinctness (see MPEP § 802.01) and a serious burden on the examiner.

• Where claims define the same essential characteristics of a single invention, e.g., the claims vary only in breadth (ranging from broad to narrow), the examiner could not require restriction between such claims.

4. How could the Office modify Markush practice?

• If an elected species is found allowable, the examination of the Markush-type claim would be extended to the extent necessary to determine the patentability of the claim, i.e., to determine whether any nonelected species is unpatentable for any reason (35 U.S.C. 101, 102, 103, or 112, or nonstatutory double patenting). If a nonelected species is determined to be unpatentable, the Markush-type claim would be rejected, and the search and examination would not be extended to cover all nonelected species.

• For amended Markush-type claims, whether an Office action may be made final would be determined by whether the conditions in MPEP § 706.07 for making a second or subsequent Office action final are met and would not be dependent upon whether the examiner previously required a provisional election of species.

• The Office is exploring situations where restriction would be proper between a subcombination and a combination when a subcombination sets forth a Markush grouping of alternatives.

5. How might the process for determining which claimed inventions are eligible for rejoinder be simplified?

6. What other areas of restriction practice are in need of improvement?

So if you’ve ever wanted to give your 2 cents on how restriction practice can be improved, please remember to submit your written comments to the Patent Office by August 13, 2010. All indications are that rule changes are on the way. We will keep you posted on any developments in this area.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about restriction practice or any other aspect of intellectual property law.


Patentability Search – Why Bother?

June 17, 2010

When discussing the fundamentals of patent law with potential clients, we are often asked whether it is necessary, and whether it is a good idea, to conduct a patentability search.

 The bottom line is that there is no requirement to conduct a patentability search before filing a U.S. patent application.  However, in most cases, it is a very good idea to do so.

Depending on the technology, a basic patentability search will typically cost $750-$2,000.  We use the term “basic” because this type of search does not cover all documents in all languages throughout the world.  Instead, it is a cost-minded approach intended to give the client “the biggest bang for their buck.”   

 A basic patentability search will typically include a search of issued U.S. patents, published U.S. patent applications and PCT publications — and sometimes a quick Google search to uncover products not disclosed in patent literature and products for which a corresponding patent applications has not yet published.  (Occasionally, for certain technologies, there is a need to search academic publications and other types of non-patent literature.)

 While a basic search is not guaranteed to uncover every document that could weigh in on the question of patentability, if carried out by a qualified firm or practitioner, it will undoubtedly provide you with valuable insight about the patent landscape surrounding your new invention and your chances of obtaining a patent.  (We emphasize the word “qualified” because some searchers are better than others.  Before hiring a firm to conduct your patentability search, be sure to understand their search methodology.  Most qualified firms, like us, use the WEST system which accesses the same database used by US examiners to examine your patent application.)

There are many good reasons to perform a basic patentability search, but in our experience, there are at least two primary reasons to do so:

1.         A basic patentability search can save you a lot of time and money (and heartache) down the road.  Everyone knows that filing a patent application, and seeing that application through to issuance, are expensive propositions.  So ask yourself …would you rather find out now — or later — that you’ve made a good investment?  That is, do you want your answer after you’ve spent $1,500, for example, on a patentability search, or after you’ve spent $10,000 … $20,000 … or more on a patent application and its ensuing prosecution?

2.         If, after obtaining the results of the patentability search, you decide to file a patent application, you can rest assured that the quality of the application will be better as a result of the search — that is, assuming (a) the person drafting the application conducted the search or has access to the search results; and (b) the search was conducted by a competent firm or practitioner.  Armed with general knowledge about the prior art, and often a specific understanding of one or more significant prior art references, the drafter will have a much better idea of what to include in the application — and just as importantly, what not to include in the application — to give the best possible chance of success.

Thus, while there is no requirement to conduct a patentability search before filing an application, we believe it is a very good idea to do so in the vast majority of cases if you consider the overall expense of drafting, filing and prosecuting an application.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice.  Please contact one of our attorneys to learn more about patentability searches or any other aspect of intellectual property law.


Patent Examiner, Will You Please Ignore My Recent Issue Fee Payment Until After You’ve Considered This New Reference?

June 10, 2010

Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage?

The short answer is “yes”.  But as you probably guessed, it requires a little more than a simple phone call to the examiner.  Instead, the applicant will need to file a petition under 37 CFR 1.313(c) to have the patent application withdrawn from issue.  This includes payment of the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why the withdrawal is necessary.

While there are three distinct ways to accomplish a withdrawal under 37 CFR 1.313(c), in our experience, it is usually preferable to proceed under section (2) which involves filing a Request for Continued Examination (RCE) under § 1.114 (including payment of the separate RCE fee set forth in 37 CFR 1.17(e)).

In brief, when proceeding under 1.313(c)(2), the newly-discovered reference will be included in an Information Disclosure Statement (IDS) which will qualify as the RCE submission.  Once the RCE and petition are filed (preferably electronically), it is advisable to call the Office of Petitions to notify them of the filing.  (In some cases, it might even be a good idea to call them before filing the petition to make sure you are doing everything correctly.)

Calling the Office of Petitions is a key step since you want to verify immediately that the petition was received and that, if the petition can be granted, it will be granted before the patent issue date.  As MPEP §1308 warns, “… while a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.”

As mentioned previously, there are two other ways to accomplish a withdrawal under 37 CFR 1.313(c).  Under section (1), the applicant can provide an “unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable.”  While we can envision circumstances under which this approach might be appropriate, we would generally avoid it since making such statements can open a Pandora ’s Box of issues including alleged inequitable conduct.

Still a further alternative is section (3) which involves filing a continuing application under 37 CFR 1.53(b) and then expressly abandoning the earlier application.  The usual “RCE vs. CON” factors will come into play when evaluating this option.  However, for a host of reasons—expense being a major one—starting over with an entirely-new application is often undesirable.

Not only is filing a continuation application more expensive than an RCE, but importantly, if the applicant withdraws the application under 1.313(c)(2) by filing an RCE and the application is again found allowable, it is possible to “reapply” the previously-paid issue fee toward the subsequent issue fee.  See MPEP § 1306.  Conversely, if the applicant expressly abandons the earlier application in conjunction with 1.313(c)(3), the previously-paid issue fee is lost.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice.  Please contact one of our attorneys to learn more about this or any other aspect of intellectual property law.


Director Kappos Comments on Written Description Requirement

May 12, 2010

The Court of Appeals for the Federal Circuit (CAFC) recently issued on en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., essentially leaving the written description requirement intact.  In that case, Ariad filed a patent application relating to NF-kB and its involvement in activating gene expression underlying the body’s immune response to infection.  Once issued, Ariad and others sued Lilly for infringement, and the district court found that Lilly did indeed infringe some of the claims.  The district court also determined that the patent was not invalid for anticipation, lack of enablement or lack of written description.  On appeal, the CAFC reversed this decision, holding the Ariad patent invalid for lack of written description.  Ariad then petitioned for en banc review, which the CAFC granted.  Relying on the language in the statute, Supreme Court precedent and policy considerations, the en banc court ruled that the written description requirement was indeed separate and independent from the enablement requirement and affirmed that the Ariad patent is invalid for lack of written description. 

In his public blog, Director Kappos provided comments in response to this decision.  He suggests that some of the principles noted by the majority when analyzing whether or not the written description is met were also discussed in the USPTO’s 2001 Written Description Guidelines and exemplified in the 2008 Revised Written Description Training Materials.  He states that one of these principles involves considering “whether the specification discloses a representative number of species, sufficient structure, and/or a sufficient correlation of function to structure.”  Director Kappos suggests that although the written description requirement may not be used in a vast majority of cases, it is nevertheless an important tool for Examiner’s to use when a patentee is attempting to claim more than what he/she has invented.  He specifically mentions the usefulness of written description as it is applied to claims reciting functional language, for example, when a genus claim uses functional language to define what species are encompassed by the claim.

 The Ariad case demonstrates a common problem in the chemical and biotechnology arts.  Typically, an invention is discovered at an early stage, at which point a patent application is filed.  If the invention shows promise, further research is performed, and additional information that may not have been disclosed in the initial patent application is now trying to be claimed.  As noted by Director Kappos, this can occur where a compound is disclosed but a claim directed to a broad genus encompassing the compound is pursued.  Such a claim may be rejected for lack of written description.  To the extent possible, it is generally good practice to include any relevant experimental information showing multiple species in the context of the invention at the time of initial filing of a patent application.


USPTO Announces Ombudsman Pilot Program

April 21, 2010

The USPTO recently announced its new Ombudsman Pilot Program. The Ombudsman Pilot Program is designed to enhance the experience applicants and their representatives have in dealing with issues that arise during patent application prosecution.  To do so, the USPTO is providing personnel to help applicants identify, understand and overcome organizational roadblocks and act as an intermediary between the USPTO and applicants when problems arise.  In the context of this Pilot Program, the “Ombudsman” is meant to ensure that an applicant, attorney, or agent gets the assistance they need when the normal channels have not yielded that assistance.  More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program is designed to provide a method for getting the process back on track quickly.

The Ombudsman Pilot Program does not supplant normal communication between applicants and the USPTO examiner assigned to the case. For example, when an applicant has a question about a specific application in prosecution and is unable to find the correct person to assist them or they are unable to obtain assistance from the examiner to whom the application is assigned, then the Ombudsman Pilot Program is the venue to use. 

In addition to resolving problems, the Ombudsman program will accept confidential complaints for issues which arise during prosecution and attempt to track their occurrence rate over time.  The Ombudsman Program Director will periodically review reports of the confidential complaints looking for trends or groups of complaints regarding the same or similar issues and will take action based on the trend or group of complaints without revealing the particulars of any individual complaints. 

To view the USPTO’s FAQs on the Ombudsman Pilot Program, click here.

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