Patents Post Grant Blog

After Final USPTO Initiative Retooled

Some pre- grant news of note this week. Last Friday the USPTO announced the After Final Consideration Pilot Program 2.0 (Federal Register Notice here). The revised pilot program modifies the initial concept by introducing a patent examiner feedback component.

Recall that the USPTO launched version 1.0 as the  “After Final Consideration Pilot” (AFCP) to foster compact prosecution and to slow the growing RCE backlog. The pilot program allotted additional productivity time to patent examiners in exchange for their consideration of after final amendments that might result in allowance of the application. Prior to the pilot program even amendments requiring nominal further consideration were routinely denied under 37 C.F.R. § 1.116.

Under the terms of the first version of the pilot, examiners decided whether the after final amendment could be fully considered, including any additional search required, within the three hour time limit provided for by the program. (i.e., fully considered and allowed). There was no need to file any special request in the previous version of the program.

Recognizing that some examiners were treating such submissions inconsistently, and that unsuccessful amendments proceeded along the normal course without any additional added value (e.g., acknowledgment/feedback from the examiner), the USPTO has provided for examiner further communication in version 2.0. Read the rest of this entry »

Popular Daily Email Service Now Includes PTAB Ruling & Filings

 Docket Navigator is well known to practitioners for its highly popular daily Docket Report. This subscription report is emailed out every morning and includes not only the new complaints/actions filed in the district courts and ITC, but also all notable decisions and Orders. Recognizing the emerging importance of the USPTO’s Patent Trial & Appeal Board (PTAB), the Docket Report now includes information on new PTAB filings and noteworthy decisions as they occur. 

The expanded Docket Report will be of great value to PTAB practitioners by providing every new and noteworthy filing/order within a day of filing/issuance. The new PTAB petitions will be reported along with notable orders, each being accompanied by a short, explanatory synopsis of the facts and result.  

Post Grant Specialist Joins Oblon Post Grant Team

I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new partner, Mr. Kevin Laurence to the Oblon Post Grant Patent Practice Group. Kevin is well known in post grant circles as co-chair of the IPO U.S. Post-Grant Patent Office Practice committee, frequent lecturer and author on post grant topics, and the founding partner of an IP branch office of the Stoel Rives firm.

Kevin joins chemical/bio post grant partners Vince Shier Ph.D and Kirsten Grunenberg Ph.D.

Welcome Kevin!

Comprehensive Coverage of Old & New Post Grant Practices

Several former USPTO administrative patent judges now in private practice, including my collegaue Lee Barret, have collaborated to publish the new book Post Grant Patent Practice (BNA). The book is very well done and comprehensively covers the broad range of topics that have defined post grant patent practice for decades, as well as those that are reshaping the future of this rapidly emerging practice specialty. From patent owner mechanisms such as patent reissue practice and certificates of correction to the new patentability trials of the AIA, derivation, supplemental examination, and more, the perspective  of these former insiders will serve as an invaluable reference. 

In recent months there has been much discussion of the USPTO’s decision to open satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley. The Detroit office opened in July 2012 and hosts about fifty examiners and ten administrative patent judges (APJs). A location has been selected for the Dallas-Fort Worth office and the site selection process is underway for the Silicon Valley Office.

As currently managed, the satellite offices are designed to process patent applications, i.e., ex parte prosecution and appeals therefrom. Post grant patent proceedings, save perhaps some patent reissue proceedings, will remain at the USPTO main campus in Alexandria Virginia. That is, the new patentability trials of the America Invents Act (AIA), patent reexamination, supplemental examination and derivation proceedings will be processed at the main campus in Alexandria. Patent reexamination and supplemental examination proceedings are handled at the Central Reexamination Unit (CRU) and the Trial Section of the Patent Trial & Appeal Board (PTAB) handle contested proceedings of the AIA.  There do not appear to be any current plans to migrate Contested Proceedings or CRU functionality to satellite offices.

Functional Claim Drafting Practices Considered by USPTO

Despite public misconceptions to the contrary, software is not patentable. Of course, aspects of software, or “software related” patents exist in which an otherwise statutory apparatus or product is claimed that includes computer implemented functionality. In an effort to enhance the “quality” of these software related patents, the USPTO issued a notice last Thursday in the Federal Register entitled: Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software Related Patents.

The Notice “sets forth several topics to begin the Software Partnership discussion. The first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.”

Reading through the tea leaves, the USPTO appears quite interested in exploring means-plus-function claiming with the software community. Since this style of claiming directly links the disclosed structure of the patent specification (algorithmic in the case of computer implemented features), it may be that the Office is proposing to rein in the scope of software claims by requiring the more narrow claim type. Thus, the “enhancement in quality” may result in future software related patents becoming more difficult to assert based on their narrower scope. To this end, the USPTO proposed the following talking points for the upcoming roundtable: Read the rest of this entry »

H.R. 6621 Clear All Congressional Hurdles

Late last week, the Senate passed H.R. 6621 with amendment (passed days earlier by the House). The Senate amendment removed the provision requiring a USPTO report on the remaining pre-Gatt patent applications (i.e., “submarine patents”). The pre-Gatt provision was the only one that drew any opposition in the House. As such, the amended bill was accepted by the House without objection (late last night) and will now be enacted into law by the President.

As a reminder, the main benefit of the technical amendment is the elimination of the post grant dead zone.

Business-to-Business Initiative Drives Government Interest

Small technology companies and start-ups face a daunting task in enforcing their intellectual property due to the cost prohibitive nature of patent litigation. In year’s past academics and major bar associations would often brain storm as to how these market participants (as opposed to NPEs) might be able to cost effectively get a fair shake in the U.S. patent system. Back in 1989, an idea was floated that perhaps the government could help out by establishing a small claims court of sorts to allow such small players an opportunity to prove their case.

For example, where relatively small amounts of licensing revenue/damages are at stake, (e.g., 3 million or less)  it is frustrating for small organizations to be faced with a legal bill of equal value to the potential recovery. Although these goals are far from clear in this week’s Federal Register Notice (here), the USPTO  is soliciting commentary on the concept of creating a small claims court that would be voluntary in nature, likely exclude NPEs, and focus on small (a few million or less) business-to-business disputes Read the rest of this entry »

Technical Amendment Passes First Hurdle

Yesterday, the House considered H.R. 6621, a bill to correct and improve certain provisions of the America Invents Act, under a suspension of the rules requiring a two-thirds majority vote for passage. The bill was passed 308-89.

Rep. Rohrabacher spoke out against the GATT study aspect of the Bill (requiring information on the remaining “submarine patents” pending at the USPTO), which might explain the surprising opposition to such an otherwise politically insignificant legislative initiative. Seems Rep. Rohrabacher was concerned about the study revealing information on these otherwise “secret” applications.

In any event, the Bill now heads to the Senate, greatly increasing the odds that it will be passed and enacted in the near term.

USPTO Reports Early Popularity….But Will it Last?

The America Invents Act (AIA) provides patent challengers with the most robust mechanisms ever offerred to challenge a U.S. patent at the USPTO. Yet, these challenges come at significant cost. A far lesser known provision of the AIA permits challengers to submit prior art materials to the USPTO before the patent even issues…in some cases, anonymously, and for free.

As of September 16th, for any pending application, 37 C.F.R. § 1.290 provides that a third party may submit written prior art, together with an explanation of relevance, to the USPTO. The submission must contain (1) a concise description of relevance, in some cases, a $180 fee, and (2) a statement affirming compliance with the necessary statute (35 U.S.C. 122). As to timing, the submission must be filed before a notice of allowance, or if not allowed, before six months after publication or rejection of any claim, whichever is later. Thereafter, the examiner should consider the submitted art in the usual manner.

In essence, Rule 290 is designed to improve and replace the old Rule, 37 C.F.R. § 1.99 submissions. Rule 290 provides a larger submission window, and, perhaps more importantly, an explanation of relevance is permitted. When considering that a party’s first submission is free, and may be filed anonymously, the option appears quite attractive. However, early adopters of this new mechanism may find that, as always, ”you get what you pay for.”   Read the rest of this entry »