• By
    Kevin E. Noonan —

    A
    generation ago, Jeremy Rifkin famously convinced the Cambridge city council to
    ban genetic engineering in that city, using the fear of "tinkering"
    with nature and producing a "superbug" that would hurt the public
    health and thereby (for a time) reduced progress in biological research at
    Harvard and elsewhere in the city environs.  Mr. Rifkin was not alone in his
    concern over potential problems from recombinant DNA; indeed, the scientist who
    first produced a recombinant plasmid, Paul Berg (Jackson et al.,
    1972, "Biochemical Method for Inserting New Genetic Information into DNA
    of Simian Virus 40: Circular SV40 DNA Molecules Containing Lambda Phage Genes
    and the Galactose Operon of Escherichia coli," Proc.
    Natl. Acad. Sci. U.S.A.
    69(10): 2904-09),
    was instrumental in organizing a conference in 1975 on the issue at Asilomar,
    California, which resulted in guidelines (both physical and biological) from
    the National Institutes of Health for the safe practice of the new technology (Guidelines
    for research involving recombinant DNA molecules," 41 Fed. Reg. 27911-43 (1976)).  But in
    the intervening decades, widespread distribution of laboratory-derived recombinant
    DNA introduced into the environment has not been reported as a threat to humans
    or the environment.

    CoverUntil
    now, that is.  In a report in the journal
    Environmental Science and Technology
    entitled "A Survey or Drug Resistance bla
    genes Originating from Synthetic Plasmid Vectors in Six Chinese Rivers
    ,"
    scientists from Sichuan University and the Chinese Institute of Health and
    Environmental Medicine report that drug resistance genes (specifically, the
    beta-lactamase (bla) gene that
    provides resistance to ampicillin) have been detected in the Pearl, Yangtze,
    Yellow, Hai He, Sunggari, and Huangpu rivers in mainland China (Chen et al., 2012, Environ. Sci. Technol. 46(24): 13448–54).  These rivers drain the majority of the
    Chinese mainland in all provinces and have the cities of Guangzhou, Nanjing, Ji'nan,
    Tianjin, Harbin, and Shanghai, respectively, along their banks.  The authors took samples from these rivers
    containing naturally occurring bacteria and assayed using polymerase chain
    reaction (PCR) and a variant, quantitative real-time PCR, to assess the
    frequency with which beta-lactamase DNA could be detected.  The assay was specific for the bla gene that comprises most recombinant
    plasmid strains, such as pBR322 (one of the oldest and most widespread plasmids
    used for molecular biological research) as well as pUC19.  PCR was performed using three pairs of "universal"
    primers for the bla gene as well as
    sequencing primers used for detecting exogenous DNA in cloning sites in the
    plasmid vectors.  In addition, the
    bacterial isolates obtained from the river samples were assayed for antibiotic
    resistance using assays recommended by the U.S. Clinical Laboratory Standards
    Institute.

    Plasmid-derived
    bla-encoding DNA was detected in all
    six rivers assayed, detected using both the "universal" primers as
    well as the plasmid sequencing primers (the latter results further supporting
    the conclusion that the samples were of laboratory origin).  The detection rate varied from 21.9% (in the
    Hai He River samples) to 36.4% (in the Yangtze River samples), and the total
    copy number of bla copies in the
    samples ranged from 6.7 +/- 5.0 x 101 copies/mL (in the Yellow River
    samples) to 4.6 +/- 0.6 x 103 copies/mL (in the Pearl River
    samples).  The Pearl and Hai He rivers
    showed the widest spectrum of cephalosporin resistance from the bla gene present in bacterial samples,
    extending to 3rd- and 4th-generation drugs like
    cefotaxime and cefoperazone, while the spectrum was narrower (e.g., cefalotin, cephazolin,
    cefmetazole, and cefoxitin) in samples from the other rivers tested.  Sequence analysis confirmed that sequences "neighboring"
    the bla sequences detected in the
    river samples "most frequently represented artificial or synthetic
    constructs, including cloning, expression, shuttle, gene-fusion, and gene trap
    vectors" derived from recombinant laboratory plasmid vectors, most
    strongly with pBR322.

    Es-2012-02760s_0006
    Abstract, Chen et al., 2012.

    An
    interesting ancillary result reported in the paper was that tetracycline
    resistance-conferring DNA was also detected in samples from all six rivers, and
    some river samples also showed genes that provided resistance to other commonly
    used laboratory antibiotic selection markers such as gentamicin.  Detection of gene sequences encoding
    tetracycline resistance is consistent with detection of pBR322, which was
    engineered to contain a tetracycline resistance gene as well as the bla gene.  The authors also report that detection of
    high levels of laboratory plasmid-derived antibiotic resistance genes in the
    Pearl River was consistent with the levels of antibiotic pollution know to
    exist in that river from human and animal sources.

    This
    report raises serious questions, of course, over the consequences of widespread
    use of antibiotic resistance-encoding genetic elements.  It is particularly disturbing because genetic
    engineering is not limited to the lab anymore, being used in such technologies
    as biofuels, agriculture, and bioremediation.  The risk of antibiotic resistance gene contamination of the environment
    has been recognized previously and steps taken to minimize it; for example,
    Monsanto has developed vectors encoding other markers such as lacZY for use in its recombinant seed.  These efforts take on greater significance,
    and relevance for human and animal well-being, in view of this latest report.

  • By Donald
    Zuhn
    —

    USPTO SealLast week,
    the U.S. Patent and Trademark Office published a notice in the Federal Register
    (77 Fed. Reg. 75019)
    issuing the Office's final rule implementing the micro entity provision of § 10
    of the Leahy-Smith America Invents Act. 
    The notice concerns rules changes that provide procedures for claiming micro
    entity status, paying patent fees as a micro entity, notifying the Office of
    loss of micro entity status, and correcting fees paid erroneously in the micro
    entity amount.  According to the notice,
    the rules changes implementing the micro entity provision of the AIA will take
    effect on Tuesday, March 19, 2013 (the first-inventor-to-file provisions of AIA
    § 3 take effect on Saturday, March 16, 2013).

    With respect
    to the payment of fees as a micro entity, the notice indicates that "[c]ertain
    patent fees set or adjusted under the fee
    setting authority in the AIA
    will be reduced by seventy-five percent for
    micro entities" (emphasis added). 
    In other words, as the notice explains, "[t]he micro entity
    provisions of 35 U.S.C. 123 are currently in effect," but "no patent
    fee is currently eligible for the seventy-five percent micro entity reduction
    as no patent fee has yet been set or adjusted under section 10 of the
    Leahy-Smith America Invents Act."  Thus,
    under the AIA's fee setting authority provisions, micro entities would have to
    wait until 45 days after the Office issues its final rule on the fee schedule to
    obtain the benefit of a 75% reduction in fees. 
    Given the effective date for the rules changes implementing the micro
    entity provision of the AIA, a final rule on the new fee schedule is likely to
    be published prior to February 1, 2013.

    As for the
    rules changes, the notice indicates that a provision is being added to the
    rules that specifies the requirements to qualify as a micro entity, and that
    this provision tracks the statutory requirements for a micro entity set forth
    in § 10 of the AIA.  The notice also
    indicates that the provision also specifies procedures relating to micro entity
    status that largely track the regulatory requirements and procedures in 37 C.F.R.
    § 1.27 for small entity status.  In
    particular, applicants claiming micro entity status will be required to file a certification
    of entitlement to micro entity status (for which forms will be provided by the
    Office).  Such certification will only
    need to be filed once in an application — although an applicant must be
    entitled to such status on the date that any fee is paid.  Procedures for notifying the Office of loss
    of micro entity status and correcting payments of patent fees paid erroneously in
    the micro entity amount will track the corresponding small entity provisions
    for notifying the Office of loss of small entity status and correcting payments
    of patent fees paid erroneously in the small entity amount.

    While the
    notice states that "[t]he Office does not plan to provide advisory
    opinions on whether a particular entity is entitled to claim micro entity
    status," the notice provides some discussion of the requirements contained
    in 35 U.S.C. § 123 at pages 75021-22.  A
    discussion of the specific rules changes is provided next (at pages 75022-25),
    and is followed by comments submitted in response to the Office's notice of
    proposed rulemaking (see "USPTO
    Issues Proposed Rules for Implementing Micro Entity Status
    ")
    and the Office's responses to those comments.

  • By Kevin E. Noonan —

    Last
    Friday, the White House released the names of the 2012 recipients of the
    National Medal of Science and the National Medal of Technology and
    Innovation.  In the press release, the
    President said he was "proud to honor these inspiring American innovators"
    and that:

    They represent the ingenuity and imagination
    that has long made this country great — and they remind us of the enormous
    impact a few good ideas can have when these creative qualities are unleashed in
    an entrepreneurial environment.

    The
    recipients and a brief note of their areas of study or achievements are as
    follows:


    National Medal of ScienceNational
    Medal of Science

    Allen Bard – chemistry, electrochemistry
    Sallie Chisholm – oceanography, study of Prochlorococcus
    Sidney Drell – theoretical physics, arms control
    Sandra Faber – astronomy and astrophysics, black
    holes
    Sylvester Gates – theoretical physics,
    supersymmetry
    Solomon Golomb – mathematics, electrical
    engineering, Tetris
    John Goodenough – solid state physics; mechanical
    engineering, lithium batteries
    Frederick Hawthorne – inorganic chemistry; boron
    hydrides
    Leroy Hood – molecular biologist; automated DNA
    sequencing, oligo synthesis
    Barry Mazur – mathematics, topology
    Lucy Shapiro – developmental biology, Caulobacter
    Anne Treisman – cognitive psychology, integration
    theory of attention


    National Medal of Technology and InnovationNational
    Medal of Technology and Innovation

    Frances Arnold – chemical engineering, directed
    protein evolution
    George Carruthers – physics, UV cameras for NASA
    lunar missions
    Robert Langer – engineer, polymeric and microscale
    drug delivery
    Norman McCombs – mechanical engineering, pressure
    swing absorption systems
    Gholam Peyman – retinal surgeon, LASIK eye surgery
    Art Rosenfeld – physicist, fluorescent lamps
    Jan Vilcek­ – physician, cytokines (TNF and
    interferon)

    Sadly,
    most of these men and women are unknown to most Americans.  Perhaps this honor will change that somewhat.

  • Holiday StarsThe authors and contributors of Patent Docs wish their readers and families a Happy Holidays.  Publication of Patent Docs will resume on December 26th.

  • By Jon Gowshall —

    Over
    the past few years the UK patents courts have moved closer to the approach of the
    European Patent Office (EPO) on inventive step.  In particular, the UK courts
    have started to acknowledge the importance of expectation of success when
    dealing with obviousness.  A recent
    decision (MedImmune Limited v Novatris
    Pharmaceuticals UK Limited
    ) reinforced this shift in approach.  It also showed how the court considered the
    effect of speculative prior art in an obviousness objection.

    The Case

    Medimmune #1MedImmune
    was the owner of a patent directed to the use of antibody phage displays to
    select antibody fragments and isolate their corresponding DNA.  The judge in the England and Wales High Court
    (Patents Court) decided that the patent lacked inventive step.  The England and Wales Court of Appeal upheld
    this decision.

    Professor
    Smith, the leader in the field, generated the two pertinent pieces of prior
    art.  The first was a paper published by
    Professor Smith and his greater history student, Steve Parmley.  This document disclosed a method of using a phage
    display to identify peptides of interest.  The authors expressed reservations over the ability of the display to be
    used for larger proteins.

    Subsequently
    Professor Smith gave a presentation at a conference.  During that presentation Professor Smith
    raised the idea that his phage display procedures might be used to screen
    antibody libraries.  He explained that he
    was intending to do this, and he was very hopeful that it he could make it
    work.

    The Judgement

    The
    Court of Appeal followed the High Court judge's reasoning on obviousness.

    Both
    courts agreed that the claimed invention was inventive over the earlier Smith
    and Parmley paper.  The courts looked at
    the expectation of success in using the disclosed phage display to identify
    antibodies.  The paper expressed concerns
    over possibly using the technology with larger proteins.  Antibodies are such larger proteins.  Therefore the court decided that the claimed
    technology was inventive over this paper, because the worker would have no
    reasonable expectation that the technology described in the paper could be used
    for antibodies.

    However,
    both courts agreed that the claims were obvious in the light of the paper and Professor
    Smith's subsequent conference presentation. 
    The courts acknowledged that Professor Smith had not carried out any of
    the work.  However, they both decided
    that it was a sufficient spur that he, a leader in the field, had suggested the
    application of the technology to antibodies, and was positive about the
    eventual outcome.  The courts also took
    into consideration that the surrounding technology had moved on between the
    publication of the paper and the conference giving the skilled person more
    confidence about using the technology as suggested by Professor Smith in his
    presentation.

    Conclusions

    The
    UK courts continue to adapt their approach on obviousness, to more closely
    follow that of the Boards of Appeal of the EPO. 
    In particular, when they consider inventive step, the UK courts will
    look at the expectation of successfully moving from the prior art to the
    invention.

    This
    case also shows that some prior art can be devastating, even if it is merely
    speculative, as long as it makes the link between the prior art and invention
    with enough authority.

    This article was reprinted with permission from Forresters.

  • By Sherri Oslick —

    Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

    Bayer Pharma
    AG et al. v. Watson Pharmaceuticals Inc. et al.

    1:12-cv-01726;
    filed December 18, 2012 in the District Court of Delaware

    • Plaintiffs: 
    Bayer Pharma AG; Bayer Intellectual Property GMBH; Bayer HealthCare
    Pharmaceuticals Inc.
    • Defendants: 
    Watson Pharmaceuticals Inc.; Watson Laboratories Inc.

    Infringement
    of U.S. Patent No. 8,071,577 ("Multi-phase Contraceptive Preparation Based
    On a Natural Estrogen," issued December 6, 2011) following a Paragraph IV
    certification as part of Watson's filing of an ANDA to manufacture a generic
    version of Bayer's Natazia® (estradiol valerate and estradiol
    valerate/dienogest, used as oral contraception).  View the complaint here.


    Life
    Technologies Corp. et al. v. Promega Corp.

    3:12-cv-02992;
    filed December 17, 2012 in the Southern District of California

    • Plaintiffs: 
    Life Technologies Corp.; Applied Biosystems, LLC
    • Defendant: 
    Promega Corp.

    Declaratory
    judgment of non-infringement of U.S. Patent Nos. 5,843,660 ("Multiplex
    Amplification of Short Tandem Repeat Loci, issued December 1, 1998), 6,221,598
    (same title, issued April 24, 2001), 6,479,235 (same title, issued November 12,
    2002), and 7,008,771 (same title, issued March 7, 2006) based on Plaintiff's
    anticipated launch of its Authentifiler PCR analysis products.  View the complaint here.


    Merz
    Pharmaceuticals LLC v. Par Pharmaceutical Inc. et al.

    1:12-cv-01723;
    filed December 17, 2012 in the District Court of Delaware

    • Plaintiff: 
    Merz Pharmaceuticals LLC
    • Defendants: 
    Par Pharmaceutical Inc.; Par Pharmaceutical Companies Inc.

    Infringement
    of U.S. Patent Nos. 7,638,552 ("Method for Increasing the Bioavailability
    of Glycopyrrolate," issued December 19, 2009) and 7,816,396 (same title,
    issued October 19, 2010) following a Paragraph IV certification as part of Par's  filing of an ANDA to manufacture a generic
    version of Merz's Cubposa® (glycopyrrolate oral solution, used to reduce
    chronic severe drooling in patients aged 3 to 16 years with neurologic
    conditions associated with problem drooling (e.g. cerebral palsy)).  View the complaint here.


    University of
    Iowa Research Foundation et al. v. Kappos et al.

    1:12-cv-01444;
    filed December 14, 2012 in the Eastern District of Virginia

    • Plaintiffs: 
    University of Iowa Research Foundation; Coley Pharmaceutical GmbH; Ottawa
    Hospital Research Institute; Pfizer Inc.
    • Defendants: 
    David J. Kappos; Office of General Counsel

    Review and
    correction of the patent term adjustment calculation made by the U.S. Patent
    and Trademark Office for U.S. Patent No. 8,202,688 ("Use of Nucleic Acids
    Containing Unmethylated CPG Dinucleotide as an Adjuvant," issued June 19,
    2012).  View the complaint here.


    Genetic
    Technologies Ltd. v. Genelex Corp.

    2:12-cv-02190;
    filed December 14, 2012 in the Western District of Washington

    Infringement
    of U.S. Patent No. 5,612,179 ("Intron Sequence Analysis Method for
    Detection of Adjacent Locus Alleles as Haplotypes," issued March 18, 1997)
    based on Genelex's manufacture, use, sale, and offer for sale of DNA testing
    services, including paternity, forensics, and phramacogenetic testing.  View the complaint here.

  • Calendar

    January 2-5, 2013 – National CLE Conference (Law Education Institute, Inc.) – Snowmass, Colorado

    January 10, 2013 – China's Patent Regime and its Quest to Become an
    Innovation Economy
    (The George Washington
    University Law School and Fordham University School of Law) – Washington, DC

    January 22, 2013 – Top Patent Law Stories of 2012 (McDonnell
    Boehnen Hulbert & Berghoff LLP) – 10:00 to
    11:15 am (CT)

    January 22, 2013 – Patent Term Adjustments and Extensions: Recent Developments —
    Leveraging Exelixis, Other Court
    Decisions and Recent USPTO Rule Changes to Maximize PTAs and PTEs
    (Strafford) – 1:00 – 2:30 pm (EST)

    January 23-24, 2013 – The Comprehensive Guide to Patent Reform*** (American Conference
    Institute) – New York, NY

    January 29, 2013 – Combined Customer Partnership Meeting
    of TC3700 and TC1600
    (U.S. Patent and Trademark Office) – Alexandria, VA

    January
    29-30, 2013 – Biotech & Pharma Patent Litigation*** (C5) – Amsterdam, Netherlands

    February 20-22, 2013 – Intensive Patent Law Seminar (Chisum Patent Academy) – New York, NY

    February 27-28, 2013 – Life Sciences
    Collaborative Agreements and Acquisitions
    *** (American Conference
    Institute) – New
    York, NY

    ***Patent Docs is a media partner of this conference or CLE

  • New York #2American Conference
    Institute (ACI) will be holding its 17th Advanced Forum on Life Sciences
    Collaborative Agreements and Acquisitions from February 27-28, 2013 in New
    York, NY.  The conference will allow
    attendees to:

    • Incorporate the
    right takeaways from recent deals into your business development strategies;
    • Minimize risks
    with effective due diligence systems and effective partner selection;
    • Structure deals
    that are able meet both parties' goals;
    • Draft termination
    provisions to effectively avoid problems with deals that do not work out;
    • Utilize contract
    research organizations and other entities to limit R&D expenditures;
    • Evaluate and
    execute milestone based compensation structures;
    • Resolve issues in
    collaboration with universities; and
    • Negotiate
    acquisitions that satisfy your business objectives.

    BrochureIn particular, ACI's
    faculty will offer presentations on the following topics:

    • Analyzing recent trends in deal-making and
    deciphering their implications for your next collaborative agreement;
    • Coping with tectonic shifts: Understand how
    the America Invents Act and recent case law impact deal-making for life
    sciences companies;
    • Utilizing well-crafted agreements that develop
    fruitful collaborations and produce maximum benefit;
    • Employing a smart risk-limiting strategy that
    satisfies all parties;
    • Seeking and acquiring new sources of research
    funding in leaner times;
    • Overcoming defects in IP that have the
    potential to derail life sciences transactions;
    • Mitigating antitrust risks associated with
    life sciences alliances and agreements;
    • Integrating M&A metrics into your
    business development strategy;
    • Effective alliance management: Avoiding
    missteps and producing workable solutions for the inherent challenges of life
    sciences collaborations;
    • Entering into collaborative research
    agreements with academic institutions;
    • Knowing when to leave: Drafting critical
    termination provisions; and
    • Winning strategies for collaborating with
    contract research organizations that deliver superior results.

    In addition, an
    interactive working group session, entitled "An In-Depth Review of
    Collaborative Agreements for Alliance Management Professionals and Attorneys,"
    will be offered from 9:00 am to 12:00 pm on March 1, 2013, and a master class,
    entitled "Conducting Thorough and
    Effective Due Diligence Analysis for Life Sciences M&A and Strategic
    Alliances," will be offered from 2:00 to 5:00 pm on March 1, 2013.

    The agenda for the Life
    Sciences Collaborative Agreements and Acquisitions conference can be found here,
    and an agenda for the post-conference workshops can be found here.  A complete brochure for this conference,
    including an agenda, detailed descriptions of conference sessions, list of
    speakers, and registration form can be obtained here.

    ACI - American Conference InstituteThe registration
    fee for the conference is $2,295 (conference alone), $2,895 (conference and one
    post-conference workshop), or $3,495 (conference and both post-conference
    workshops).  Those registering by January
    11, 2013 will receive a $300 discount, and those registering by February 8,
    2013 will receive a $200 discount.  Patent
    Docs
    readers who reference the discount code "PD
    200" will receive $200 off the current price tier when registering.  Those
    interested in registering for the conference can do so here,
    by e-mailing CustomerService@AmericanConference.com, by calling 1-888-224-2480,
    or by faxing a registration form to 1-877-927-1563.

    Patent Docs is a media partner of ACI's Life Sciences Collaborative Agreements
    and Acquisitions conference.

  • By Kevin E. Noonan —

    Rohrabacher, DanaRep.
    Dana Rohrabacher (R-CA46) has written regarding our discussion of his remarks
    regarding H.R. 6621 (see "Congressional Misunderstandings (Apparently) Motivate H.R. 6621").  In his own
    words (as sent to us by his Communications Director, Ms. Tara Olivia Setmayer):

    Mr. Rohrabacher would like the opportunity to
    respond to your blog posting today criticizing his opposition to H.R.
    6621.

    "The information in patent
    applications has always been held confidential unless the applicant takes
    action to make it public.

    "Pre-GATT applicants expected the information
    in their applications would remain confidential until a patent was
    granted.  It is my understanding that the PTO has never released any
    identifying information on any pre-GATT patent application in our nation's
    history.  H.R. 6621 will require the PTO to release identifying
    information from these applications.

    "Current law, under the compromise agreement
    of the American Inventors Protection Act of 1999, which I supported,
    establishes that applications "shall be kept in confidence by the Patent
    and Trademark Office and no information concerning any such application shall
    be given without authority of the applicant or owner unless necessary to carry
    out the provisions of an Act of Congress or in such special circumstances as
    may be determined by the Director."  That legislation then detailed
    other circumstances under which an applicant can allow the publishing of patent
    application information, such as in the case of an inventor wishing to file
    internationally.

    "Perhaps I was guilty of a
    rhetorical flourish or two on the House floor, and maybe I used a
    generalization when I should have been precise, but I believe these facts
    support my contention that information in patent applications is, and has
    always been, held confidential unless the applicant takes action to make it
    public."

    We
    thank the Congressman for contacting us, and admit that Rep. Rohrabacher is
    correct:  "pre-GATT" applications were filed at a time when the U.S.
    Patent and Trademark Office kept pending U.S. patent applications secret, and
    publishing information about them will detract from their confidentiality
    interests, with the deleterious consequences mentioned by the Congressman.

    However,
    it is more than a quibble that the vast majority of applications filed after
    enactment of the American Inventors' Protection Act (AIPA) are published, and not only that the entire prosecution history is
    made public post-publication.  The
    Congressman is wrong in asserting that "information in patent applications
    is, and has always been, held confidential unless the applicant takes action to
    make it public."  Since passage of
    the AIPA, patent information is public
    ~18 months after the earliest priority date unless
    the applicant "take action" to keep it private.  That is a policy decision made long ago, in
    keeping with the belief that harmonizing U.S. and rest-of-the-world patent practice would be
    generally beneficial and that there was an advantage to encouraging applicants
    to speed their applications to allowance in light of the disclosure by
    publication 18 months after filing.

    Rep.
    Rohrabacher obviously understands more about patent law than many of his
    colleagues, especially those like Rep. Smith who believe applicant culpability
    is the cause of these delayed patents.

  • By Donald Zuhn —

    USPTO to Hold Roundtable on
    Recordation of Real-Part-in-Interest Information

    USPTO Building FacadeLast month, the U.S. Patent
    and Trademark Office published a notice in the Federal Register (77 Fed. Reg.
    70385
    )
    indicating that the Office will be holding a roundtable from 8:30 am to 12:00
    pm (EDT) on January 11, 2013 to obtain public input regarding
    changes to the Office's rules of practice for collecting and providing patent and application
    ownership information and making such information publicly available.  The roundtable will be held in the Madison
    Auditorium on the USPTO campus (600 Dulany Street, Alexandria, Virginia 22314).

    Those wishing to
    participate in the roundtable must submit requests by Friday, December 21, 2012.  Requests can be submitted by e-mail to
    saurabh.vishnubhakat@uspto.gov, and should include the name of the person wishing
    to participate, the person's contact information (telephone number and e-mail
    address), and the organizations that the person represents.  The notice indicates that the roundtable will
    be webcast, and that information regarding accessing the webcast will be made available
    prior to the roundtable.

    The Office is also seeking
    written comments on the issue.  Written
    comments, which must be submitted by January 25, 2013, can be sent by e-mail to
    saurabh.vishnubhakat@uspto.gov or SMEpatenting@uspto.gov, or by regular mail
    to:  Saurabh Vishnubhakat, Expert
    Advisor, Office of Chief Economist, United States Patent and Trademark Office,
    Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313–1450.

    The Office is seeking
    comment regarding whether the definition of real-party-in-interest (RPI) information
    should be broad (RPIs would correspond to those entities having the legal right
    to enforce the patent and would likely require the disclosure of exclusive
    licensees) or limited (RPIs restricted to legal title holders and
    "ultimate parent entities"), and the timing of and mechanism for
    collecting such information.


    USPTO Requests Comments on
    Grace Period Study

    USPTO SealLast week, the U.S. Patent
    and Trademark Office published a notice in the Federal Register (77 Fed. Reg.
    73452
    ) inviting
    the public and other Federal agencies to submit comments regarding the Office's
    grace period study.  The notice states
    that:

    The United States' grace period, which
    permits exceptions to absolute novelty, figures centrally in the international
    discourse on patent law harmonization.  The
    grace period allows individuals to improve upon their ideas by sharing them
    with the research and business communities without jeopardizing their intellectual
    property interests.  Many European
    countries, however, lack adequate grace periods.  The consequences of this are not fully
    understood.  Few studies in the past ten
    years have dealt with the grace period, and none of them have quantified the
    effects of premature disclosure on researchers’ failure to apply for or receive
    patents.

    To examine this issue, the
    Office will be conducting a study "to estimate the commercial
    opportunities lost as a result of the lack of grace periods."  As part of the study, the Office will survey
    scientific researchers affiliated with certain European universities who have
    published journal articles disclosing potentially patentable materials during a
    five-year period.

    Written comments regarding
    the collection of information with respect to the grace period study, which
    must be submitted by February 8, 2013, can be sent by e-mail to InformationCollection@uspto.gov
    (those submitting comments by e-mail should include "0651–00xx Grace
    Period Study comment" in the subject line of the message); by regular mail
    to:  Susan K. Fawcett, Records Officer,
    Office of the Chief Information Officer, United States Patent and Trademark
    Office, P.O. Box 1450, Alexandria, VA 22313–1450; or using the Federal
    Rulemaking Portal
    . 
    Additional information, including the specific topics for which the
    Office has invited comment, can be found in the Federal Register notice.


    USPTO Seeks Comments on
    Patent Small Claims Proceedings

    On Tuesday, the U.S. Patent
    and Trademark Office published a notice in the Federal Register (77 Fed. Reg.
    74830
    ) seeking comments
    as to whether a small claims proceeding for patent enforcement should be
    developed.  The Office is particularly
    interested in obtaining comments regarding whether there is a need and desire
    for this type of proceeding, the circumstances for which such proceedings would
    be needed, and the features such proceedings should have.  The Office is also interested in collecting comments
    regarding the characteristics of such proceedings, including subject matter
    jurisdiction, venue, case management, appellate review, available remedies, and
    conformity with the U.S. constitutional framework.  The Office's notice provides a list of
    additional topics and questions for which the Office is seeking comments.

    Written comments regarding
    patent small claims proceedings, which must be submitted by March 18, 2013, can
    be sent by e-mail to ip.policy@uspto.gov, or by regular mail to:  Mail Stop OPEA, P.O. Box 1450, Alexandria, VA
    22313–1450, ATTN: Elizabeth Shaw.