The Puget Patent Blog

Continuing Implementation of America Invents Act

Posted Thursday, September 13, 2012.

The President signed the Leahy-Smith America Invents Act of 2011 (the “AIA”) on September 16, 2011. The AIA patent reform act is widely billed as the most significant overhaul of the U.S. patent law in sixty years. Some provisions went into effect immediately, but others constitute such major change that they are being transitioned into place gradually. This is not unlike the change in the term for a utility patent instituted in the 1990s, when the length of a patent monopoly changed from 17 years from issuance to 20 years from filing, where some transitional rules needed to be implemented at the USPTO.

The final implementation date for the AIA is 18 months from signing of the bill, or March 16, 2013. That is the date when the “first-to-file” provision begins. An intermediate implementation date for certain rules is coming up in the next couple of days: September 16, 2012.

On that Sunday, for example, we will see the Board of Patent Appeals and Interferences become the Patent Trial and Appeal Board (the “PTAB”). “Interferences” is being dropped from the name, because once we are in a first-to-file regime, there will be no need for an interference proceeding. Currently, in an interference, two inventors come before the board to parry over which was the first to invent. In the first-to-file system, it no longer matters who was the first to invent as whoever was the first to file an application for a patent on a particular invention has priority. Hence, there’s no need for an interference.

The number and type proceedings which may be heard before the PTAB will increase, as a new post-grant review procedure is being instituted. For up to 9 months after issuance of a patent, a third party petitioner may ask the PTAB to invalidate the newly-issued patent on grounds of novelty or obviousness, among others. The petitioner must not have previously filed a lawsuit in any Article III court to petition for post-grant review. A petitioner will be required to submit a fee of $35,800 to the USPTO for the review. That makes it one of the more expensive USPTO fees, but in comparison to the cost of a patent litigation in a U.S. District Court, the post-grant review process may be a less expensive alternative. Any patent issued under the first-to-file rules, with limited exceptions, may be challenged under post-grant review.

Another rule taking effect on 9/16 is a change to the language required by the inventor’s oath and declaration submitted in new patent applications. Regarding this change, the USPTO has written, “An inventor must state in his/her oath/declaration that (i) he/she is an original inventor of the claimed invention; and (ii) he/she authorized the filing of the patent application for the claimed invention. An inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship.” The existing declaration had a penalties clause in which the inventor affirmed knowledge that misleading the USPTO was subject to penalties under law, but the AIA requires that the inventor now acknowledge the possible penalty includes “imprisonment of not more than 5 years.”

Those are some of the more significant changes occurring on September 16, 2012. Much of it constitutes setting the table for March 16, 2013, the date where the biggest change of all – first-to-file – takes effect.

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Timeframe for Final Office Action Response

Posted Saturday, August 18, 2012.

When the USPTO issues an Office Action (read more about Office Actions here), an Applicant must respond to the Office Action within a certain period of time. If the Applicant does not timely respond, the application “goes abandoned” and the USPTO will not give the application further consideration except in extreme circumstances.

For a Non-Final Office Action, the Applicant has three months to file a response without paying the USPTO any further fees. After the third month, the Applicant may still file a response by paying an “extension fee” up to the six month mark. (What constitutes a “month” in USPTO-time can be kind of unusual. Did you know that four months after August 31, 2011 is January 3, 2012? Click here to read more about what constitutes a month and about extension fees.)

For a Final Office Action (FOA), the timeframe for an Applicant’s response and extension fee structure are mostly the same. However, there is one major wrinkle with the timeframe for responding to a FOA that distinguishes it from a response to a Non-Final Office Action, which is embodied in Form Paragraph 7.41 in the USPTO Manual of Patent Examining Procedure (MPEP) section 706.07(b). A portion of that form paragraph reads as follows:

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.

What in the world does that mean?

To understand that paragraph, it helps to know the options for responding to a Final Office Action. You can read about some of them here. In brief, a “Final Office Action” isn’t really final, in that under 37 CFR 1.136, an Applicant may file a response that puts patent claims in condition for allowance without paying a further fee (if the Examiner agrees the amended claims are in condition for allowance, anyway).

The examiner may not review such a response right away, however, which means the time from when the FOA was issued is still accumulating. That might push the Applicant further into the extension period and require a higher extension fee. Filing the response to the FOA within two months effectively stops the clock, so any extension fee required by a further filing (not the 37 CFR 1.136 filing) may be lower than it would be if the after-final filing came after the two month period.

An example would probably help. Let’s say the Examiner issued an FOA on April 1. The Applicant reviews the rejections and is content with proposing claim amendments that narrow the scope of the claimed invention but overcome the rejections. Believing the amendments put the claims in condition for allowance, the Applicant chooses to submit these as an “Amendment After Final” pursuant to 37 CFR 1.136 and pays no fee at the time of filing the amendment.

Then let’s say the Examiner does not agree that the amendments put the claims in condition for allowance. This news would come in the form of an “Advisory Action,” in which the Examiner explains the reasons the claim amendments won’t be considered. (Say the Examiner issued the Advisory Action on July 15, which is 3.5 months after the FOA was issued.)

What happens next? For the Applicant to continue the prosecution, filing either an RCE or an appeal would move things along. This is where the excerpt of Form Paragraph 706.07(b) from above comes in.

If the Applicant understood that language and wanted to derive the benefit from it, the Applicant would have filed the amendment after final by June 1, which is two months after the FOA was issued. By doing so, that “tolled” the running (stopped the clock) of the applicant’s extension time for a response. When the Advisory Action was mailed on July 15, that means the Applicant can file an RCE or appeal on July 15 without paying any extension fee, or up to August 15 by paying only a one-month extension fee.

Now, however, let’s say the Applicant didn’t submit the amendment after final until July 1, which is three months after the FOA was issued. The time for the extension period continues to run. If we get an Advisory Action on July 15, we are already in the one-month extension period, and if we wait until August 15 to file an RCE or an appeal, we now owe a two-month extension fee. The difference can be hundreds of dollars in extension fees.

The upshot of all of the above is that it is generally best to reply to a Final Office Action within two months, where possible. Doing so leaves the chance of getting an after-final amendment considered without as much damage to the pocketbook for extension fees if the amendment is unsuccessful.

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Progress on a Unified European Patent

Posted Monday, July 2, 2012.

For those interested in protecting an invention internationally through patent applications in foreign countries, the process for Europe has been a bit convoluted compared with other countries.

Patent prosecution in Europe is currently conducted in a unified fashion by the European Patent Office (EPO). A successful applicant at the EPO will receive a “European Patent.” However, for the European Patent to be enforceable in any individual country within Europe, the applicant must nationalize the European patent by presenting it to an intellectual property office in each country and paying a fee. A translation of the patent may be necessary (usually incurring another expense). Then, a suit is brought in a court in the country where the patentee wishes to assert the patent rights (i.e. sue an infringer).

There has been a long felt need for a European patent that truly provided international coverage within Europe, without the additional steps to nationalize the patent or requiring a patentee to bring suit for infringement in various European national courts. But the EU has recently reached agreement on some terms that will permit a true European Patent to issue.

The most important aspect of the agreement is that a Unified Patent Court, with branches in London, Munich and Paris, will have jurisdiction to hear patent suits for all participating countries in the EU. (Italy and Spain are opting out for now.) The courts have technical arts for particular cases assigned to them. So, for example, if one had a drug patent a suit might be brought in London, where a mechanical patent would require suit to be brought in Munich.

A second aspect of the new agreement is that patent applications in the EPO will require English, French and German translations. Previously, one only needed a translation if nationalization in a particular country was planned where the translated language was the national language.

Details are still being worked out, but the agreement regarding the Unified Patent Court is a very significant step towards establishing a true European Patent. Ultimately, for those interested in international patents, the result should be a lower overall cost to acquire and litigate the patent.

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New USPTO Satellite Office Locations Announced

Posted Monday, July 2, 2012.

Today, the USPTO announced additional satellite locations to be opened in 2013. A first satellite office is already slated to open later this month in Detroit. The new offices, which many believe will open in 2013, are planned for Denver, Dallas and San Jose.

The patent office had previously solicited suggestions for new locations, and at that time I nominated Seattle or Bellevue. The Seattle/Bellevue region accounts for a significant number of new patent applications, and either city would seem like an excellent fit for a satellite patent office. Unfortunately, we didn’t get one here, but perhaps in the future the patent office will consider Seattle for a satellite office.

It is anticipated that the new offices will help the USPTO fulfill its staffing goals. The patent office is hiring new examiners to help cope with the backlog of pending applications. Among the benefits the patent office provides to examiners is a telework program, where examiners only need to be physically present in the office periodically and can work from home the rest of the time.

The new offices should permit the USPTO to hire from existing pools of technical experts in Dallas, Denver and San Jose. A new patent examiner working from home in Napa, for example, would only have to trek into the San Jose office once every couple of weeks. That’s a much more doable proposition than commuting out to Alexandria, VA.

For applicants and patent attorneys in Seattle, Redmond, Bellevue and other parts of our region, there might eventually be a slight benefit where a patent examiner happens to be in the same time zone. And in instances where an Examiner’s Interview would be better conducted in person between the patent attorney/agent and the examiner, the new offices may more easily facilitate such a meeting.

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Final Office Actions

Posted Tuesday, June 19, 2012.

A few weeks ago, I wrote briefly about Office Actions. When a patent examiner is reviewing an application for patentability, the examiner will communicate findings to an Applicant in an Office Action. 89% of the time, a first Office Action contains a rejection of the patent claims. This is normal, and is an opportunity to refine the precise language of the patent claims. Alternatively, an Applicant can argue with the examiner about the findings.

You can read more about first Office Actions here, but I wanted to discuss Final Office Actions. The scenario is, an Applicant (or the Applicant’s representative before the PTO) files an application, an examiner reviews it and rejects the claims in a first Office Action, the Applicant prepares and files a response to the Office Action, and the examiner reviews the application a second time but is not persuaded by the response. What happens next? The examiner will issue another Office Action, and in many instances it is likely to be a Final Office Action.

Is a “Final Office Action” really final? No, it’s not. There are ways to continue prosecuting the application, which might include:

1) Submit a response with a Request for Continued Examination (RCE). There is a patent office fee for this, but basically with an RCE prosecution is reopened and you keep refining claims or arguing with the examiner for patentability. You get another two rounds of consideration (non-final and final). I know of instances where a case was finally allowed following two RCE’s (in other words, six rounds of prosecution) before allowance. I have read about cases where it has taken even more.

2) Appeal the rejections to the Board of Patent Appeals and Interferences (BPAI). There is also a fee for this, but you’re appealing the examiner’s rejections to a trial court within the PTO. These appeals can succeed, but the outcomes are varied. It may be that the board orders the examiner to grant the patent, but it may also be that the board tells the examiner to continue prosecution, and the examiner can find new grounds of rejection. The other thing to know about appeals is that sometimes it can be years before the appeal is heard, although occasionally just by appealing, the examiner re-opens prosecution independently because they’d rather do that than write an appeal brief for the board.

3) Persuade the examiner to give further consideration under a pilot running at the PTO right now where if they can get to an allowance in 3 hours (without serious further searching), they will. The finally-rejected claims need to be pretty close to an allowance for this.

The main point is that a “Final Office Action” isn’t necessarily the last word on patentability of the application. Ultimately the Applicant is trying to reach consensus with the patent office on the scope of a patent, and like any negotiation it might take more than one round of discussions. The basic filing fee gets an Applicant at least two opportunities (the initial application and a response to the first Office Action) to reach agreement with an examiner. Beyond that, further discussions with the PTO usually require additional fees.

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