By Donald Zuhn —

Last week, the U.S. Patent and Trademark Office published a notice in the Federal Register (76 Fed. Reg. 22854) proposing a number of changes to ex parte and inter partes reexamination proceedings.  In addition, the USPTO announced that it was seeking public comment regarding the proposed changes and that the Office would be holding a public meeting on June 1, 2011 to discuss the proposed changes.

The notice indicates that the proposed changes are intended to streamline the procedures governing ex parte and inter partes reexamination proceedings, by seeking to achieve faster, more efficient resolution of the substantial new question of patentability (SNQ) for which reexamination is ordered.  While some of the proposed changes discussed in the notice impact both ex parte and inter partes reexamination proceedings, other changes are specific to either ex parte or inter partes reexamination proceedings.

Changes impacting both ex parte and inter partes reexamination proceedings include:

• Require requester to separately explain how each SNQ presented in the request is "new" relative to other examinations of the patent claims (rather than merely stating what the SNQ is believed to be).
• Require requester to explain how the references apply to every limitation of every claim for which reexamination is requested.
• Require requester to explain how multiple SNQs raised in the same request are non-cumulative of each other; cumulative SNQs will be deemed to constitute a single SNQ.
• Permit the examiner to select one or more representative rejections from among a group of adopted rejections.
• Limit requester's declaration and other evidence mainly to the request — new evidence may be submitted only to rebut point made in Office action or patent owner's response or statement.
• Limit patent owner's amendments and evidence mainly to the first action response — new amendments or evidence may be submitted in response to new ground of rejection.
• Prohibit entry of claim amendments unless accompanied by a statement explaining how the proposed new claim language renders the claims patentable in light of an SNQ.
• Clearly define petitions practice (see table listing examples of petitions filed in reexamination proceedings on page 22858 of the Office's notice).

Changes specific to ex parte reexamination proceedings include:

• Make permanent the pilot procedure allowing patent owner to optionally waive patent owner's statement — the notice indicates that only about 10% of patent owners file a statement under 35 U.S.C. § 304.
• Where the patent owner does not waive the statement, the order granting reexamination will include a provisional first Office action on the merits (FAOM), which may be made final in the next action.

Changes specific to inter partes reexamination proceedings include:

• Allow third party requester to dispute the examiner's designation that a rejection is "representative" of other rejections in the group.
• Final Office action will close prosecution and trigger appeal rights.
• Limit third party requester's appellant brief to appealing an examiner's decision that a claim is patentable; additional bases to cancel a rejected claim can only be argued in a respondent brief following patent owner's appellant brief.

A detailed description of each proposed change can be found in the Office's notice.  In addition, the notice provides a list of thirteen questions on page 22860 for which the Office seeks comments.

The public meeting to be held on June 1 is scheduled to begin at 1:30 pm (EST) and will be held in the South Auditorium of Madison West, 600 Dulany Street, Alexandria, VA.  Those interested in attending the meeting must register by 5:00 p.m. (EST) on May 25, 2011; those interested giving a presentation at the meeting must register by sending an e-mail to reexamimprovementcomments@uspto.gov by 5:00 p.m. (EST) on May 11, 2011.  Additional information regarding registration is provided in the notice (see page 22860 for information registrants should provide).

Written comments regarding the proposed changes to ex parte and inter partes reexamination proceedings must be submitted by June 29, 2011.  Written comments can be submitted by e-mail to reexamimprovementcomments@uspto.gov, or mail to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kenneth M. Schor.

By Donald Zuhn —

In a short, two-column notice published on Friday in the Federal Register (76 Fed. Reg. 23876), the U.S. Patent and Trademark Office reiterated that the effective date for implementation of the prioritized examination (or Track I) portion of the Enhanced Examination Timing Control Initiative has been delayed until further notice.  Under the Track I procedure, applicants can request prioritized examination at the time of filing of an application upon payment of appropriate fees ($4,000 in addition to standard filing fees) and compliance with certain requirements (as outlined in a final rule published on April 4, 2011).

While the USPTO's April 4 notice indicated that the Patent Office would begin accepting Track I applications on May 4, 2011, USPTO Director David Kappos sent a message to Patent Office employees, notifying them that "[t]he Track One expedited patent examination program, scheduled to go into effect on May 4, 2011, is postponed until further notice" (see "USPTO News Briefs," April 21, 2011).  Since that notice, the Director has addressed the postponement on his blog and the USPTO has issued a press release regarding the postponement (see "USPTO News Briefs," April 27, 2011).

The Office's latest notice states that "[t]he effective date for the amendments to 37 CFR 1.17 and 1.102 published at 76 FR 18399, April 4, 2011 (the Track I final rule) is delayed until further notice."  The notice indicates that a new effective date will be published in the Federal Register (at some future, unspecified date).  Most importantly, the notice states that "[n]o request for prioritized examination will be accepted until further notice."  With regard to the reason for delaying the program, the Office explains that it:

[H]as found it necessary to revise its patent examiner hiring plan due to funding limitations.  The revised hiring plan does not permit the Office to hire new examiners.  With the current level of resources, the Office will not be able to meet the twelve-month pendency goal in prioritized examination applications without impacting the non-prioritized examination applications at this time.

With respect to the new effective date, the Office further explains that "[w]hen the funding limitations are resolved, the Office will issue a subsequent notice identifying a revised effective date and applicability date on which the final rule shall apply."

    By Donald Zuhn —

USPTO Announces Postponement of Track 1 Examination (Again)

On April 21, USPTO Director David Kappos sent a message to Patent Office employees, notifying them that "[t]he Track One expedited patent examination program, scheduled to go into effect on May 4, 2011, is postponed until further notice."  Last Friday, the Intellectual Property Owners Association (IPO) made the text of that message available.  Director Kappos also addressed the postponement of the Track One (or prioritized examination) program on his Director's Forum blog on Friday.  Today, the USPTO issued a press release again announcing that the Track One program has been postponed.  According to the release, the program, which was scheduled to go into effect on May 4, has been postponed "until further notice due to reduced spending authority in the Full-Year Continuing Appropriations Act, 2011."  The Office noted that "[w]ithout the resources to hire a sufficient number of examiners to implement Track One, we must postpone the effective date of the program until we are in a position to implement it successfully while ensuring there will be no adverse impact on non-prioritized examination applications."  The release states that a new start date for the program will be announced "as soon as circumstances permit," and that the Office will provide the new date "via a Federal Register notice."

USPTO Extends Patent Prosecution Highway Pilot Program with DPMA

Last week, USPTO Director David Kappos authorized an extension of the Patent Prosecution Highway (PPH) pilot program with the German Patent and Trade Mark Office (DPMA) that was begun on April 27, 2009 (see "USPTO Begins Pilot Program with the German Patent Office").  The PPH pilot permits an applicant having an application whose claims have been allowed in the DPMA to fast track the examination of an application in the USPTO, or vice versa, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from the USPTO (or the DPMA) that at least one claim in an application is patentable may request that the DPMA (or USPTO) fast track the examination of corresponding claims in the corresponding application in that office.  According to a notice regarding the extension of the USPTO-DPMA PPH, both offices have agreed to continue the pilot program for an additional two years to April 26, 2013, at which time it will be determined whether and how the program should be fully implemented.

The USPTO has established PPH programs with fifteen Offices.  Currently the USPTO has PPH programs (full or pilot) in place with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), IP Australia (IP AU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Intellectual Property Office of Singapore (IPOS), the German Patent and Trade Mark Office (DPMA), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Patent Office (HPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), and the Mexican Institute of Industrial Property (IMPI).

USPTO Updates Registration Exam

Earlier this month, the USPTO announced that it would be updating its registration examination as of April 12, 2011.  The updated exam will be based on the Manual of Patent Examining Procedure (M.P.E.P.) Edition 8, Revision 8, as well as the following materials:

• Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex (75 Fed. Reg. 53643)
(see "USPTO Updates Obviousness Examination Guidelines")

• New Interim Patent Subject Matter Eligibility Examination Instructions (August 24, 2009 Memorandum)

• Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (75 Fed. Reg. 43922)

• Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (July 27, 2010 Memorandum)

• Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications (76 Fed. Reg. 7162)
(see "USPTO Promulgates Guidelines for Applying 35 U.S.C. § 112, 2nd Paragraph").

By Donald Zuhn —

On Friday, USPTO Director David Kappos addressed the impact of budgetary constraints on some of the Patent Office's plans for the coming year.  He did so on his Director's Forum blog, where the Director (at right) noted that following enactment of the budget for FY 2011 on April 15, the Office's total spending authority through the end of the fiscal year (i.e., September 30, 2011) had "been limited to $2.09 billion."  "Given this level of spending authority," he explained that the Office would "have to make significant reductions for the current fiscal year."  Stating that the USPTO had "not come by these decisions lightly," and that he "recognize[d] that these measures will create new challenges for our ability to carry out our agency’s mission," Director Kappos listed a number of USPTO initiatives and policies that would be postponed, suspended, or reduced "[e]ffective immediately and until further notice."

As we noted last week, one of the programs that will be postponed is the Track 1 (or prioritized examination) portion of the Enhanced Examination Timing Control Initiative (see "USPTO News Briefs," April 21, 2011).  The opening of the USPTO satellite office in Detroit is also being postponed, "as well as consideration of other possible satellite office locations."  Office personnel will certainly feel the impact of the FY 2011 budget, with all hiring being frozen, employee training being reduced, all overtime being suspended, and "all other non-compensation-related expenses, including travel, conferences and contracts" being reduced.  In addition, the Director noted that IT projects will be "scaled back," and that funding for Patent Cooperation Treaty (PCT) outsourcing will be "substantially reduced."

The Director's post was preceded by a somewhat more detailed e-mail message the Director sent to USPTO employees.  The Intellectual Property Owners Association (IPO) made the text of that message available on Friday.  In the e-mail, the Director notes that the Office's $2.09 billion spending limit means that the Office "will be unable to expend the additional $85-100 million in fees that we will be collecting during this fiscal year — funds that we had anticipated being able to use to fund operations this year."

It appears that only patent operations are to be affected, as the trademark side of the Office will be "unaffected and will maintain normal operations."

In view of the budget problems highlighted in the Director's e-mail and blog post, it certainly is a case of what a difference a week — or in this case two weeks — makes.  On the heels of the December 2010 announcement of the Detroit satellite office (see "USPTO News Briefs," December 21, 2010), and the Office's indication that it was looking at other locations for satellite offices (as well as provisions in the America Invents Act that would provide for the establishment of three or more satellite offices; see "'Reform' at the U.S. Patent and Trademark Office"), several groups had begun lobbying for satellite offices in their "backyards."  On April 6, the Austin American-Statesman reported that House Judiciary Chairman Lamar Smith (R-TX) and Reps. Lloyd Doggett (D-TX), John Carter (R-TX), and Michael McCaul (R-TX) had written to Secretary of Commerce Gary Locke and Director Kappos formally asking them to consider Austin for a regional office.  The article noted that Silicon Valley had also begun a lobbying effort to secure a satellite office, and that Denver and Atlanta were considered to be contenders.  A Law360 article (subscription required) on April 14 noted that the Silicon Valley effort was in full swing, with Director Kappos meeting with IP insiders in a town hall event to discuss plans for modernizing the Patent Office.  The USPTO has posted a draft of the Director's address on its website.  While the draft does not mention satellite offices, the Law360 report notes that attendees indicated that the Director had said that Silicon Valley met several of the Office's key considerations.  However, with the spending limits imposed on he Office by the FY 2011 budget, satellite office lobbying — like satellite office consideration — is now on hold.