USPTO Adjusts Examiner Count System to Address Growing RCE Backlog
Some notable pre-grant news this week. A Request for Continued Examination (RCE) is largely a procedural creature of pre-grant, patent application prosecution (patent reissue being the lone exception on the post grant side). Recently, the backlog of RCE filings has increased significantly. This is largely the result of the Office switching the priority of such filings on examiner dockets while reducing examiner credit for processing RCEs. This priority switch was designed to reduce the backlog of unexamined patent applications. Not surprisingly, as the unexamined application inventory went down, RCE inventory went up as illustrated in the above chart.
Starting on October 1st, the USPTO will recalibrate the Count System Initiative (CSI) to incentivize work on the RCE backlog. (Under the previous version of CSI, 1.75 credits were available for the first RCE, and 1.5 for the second and subsequent)
On October 1, 2013 examiners will receive a total of 2.0 counts for the 4th and all subsequent RCEs in which a first office action is done in the first quarter of the fiscal year, and 2.o counts for the 5th and all subsequent RCEs in which a first office action is done in each of the second, third, and fourth quarters of the fiscal year.
Also, examiners with higher RCE inventories will have more limited inventories of regular new applications available for action until their RCE inventories are reduced below predetermined thresholds.
Planned Silicon Valley Office in Limbo
Seems Congress is currently winning the never ending fee diversion battle with the USPTO. As a result, efforts to expand USPTO satellite office to Dallas, Denver and Silicon Valley have been significantly slowed. While permanenet office locations in Dallas and Denver have been identified, the search for a permanent Silicon Valley office was recently halted as a result of the sequestration of USPTO funds (you know, the ones they collect from the public in self supporting fees).
The Detroit office remains open.
It seems unlikely that the planned satellite office will be anything but ceremonial outposts in the near term. Indeed, absent consistent funding, one or more satellite offices could be shelved indefinitely.
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.
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 »